What are Intellectual properties?

Can foreign nationals benefit from our intellectual property

rights as indicated in our intellectual property code?
 Intellectual properties are intangible assets resulting
from the creative work of an individual or entity. Yes, under sec. 3, RA 8293 - International Conventions and
 Really refers to the creation of the mind. Reciprocity. - Any person who is a national or who is domiciled or
 These are inventions, literary works, symbols, names, has a real and effective industrial establishment in a country which
logos etc. which are typically used in commerce or is a party to any convention, treaty or agreement relating to
business. intellectual property rights or the repression of unfair competition,
to which the Philippines is also a party, or extends reciprocal rights
What are Intellectual property rights? to nationals of the Philippines by law, shall be entitled to benefits
to the extent necessary to give effect to any provision of such
RA 8293 SECTION 2. Declaration of State Policy. - The State
convention, treaty or reciprocal law, in addition to the rights to
recognizes that an effective intellectual and industrial property
which any owner of an intellectual property right is otherwise
system is vital to the development of domestic and creative activity,
entitled by this Act.
facilitates transfer of technology, attracts foreign investments, and
ensures market access for our products. It shall protect and secure What if a foreign national who is not part of any treaty or
the exclusive rights of scientists, inventors, artists and other gifted convention to which the Philippines is also a signatory can
citizens to their intellectual property and creations, particularly there be any protection provided to such foreign national?
when beneficial to the people, for such periods as provided in this
Act. Yes, as provided under sec. 3 (Principle of Reciprocity)- a
foreign national by which its home country provides a benefit to a
Art. 14, Section 13 (1987 Constitution)- The State shall protect Filipino by their local law that country does not need to be a party
and secure the exclusive rights of scientists, inventors, artists, and to a convention or treaty as long as their own country provides it
other gifted citizens to their intellectual property and creations, by their local law. So, if their country provides benefits for Filipinos
particularly when beneficial to the people, for such period as may not necessarily that that country is a member of a treaty then such
be provided by law. nationals of that country can also benefit from the provisions of
our intellectual property code.
Art. 712 (Civil Code). Ownership is acquired by occupation and
by intellectual creation. Ownership and other real rights over “or extends reciprocal rights to nationals of the Philippines by law,
property are acquired and transmitted by  law, by donation, by shall be entitled to benefits to the extent necessary to give effect to
estate and intestate succession, and in consequence of certain any provision of such convention, treaty or reciprocal law, in
contracts, by tradition. addition to the rights to which any owner of an intellectual
property right is otherwise entitled by this Act.”
 This is an incorporeal property right as opposed to
tangible properties. Principle of Reverse Reciprocity-> provided under SECTION
 Rights given by the government to persons over their 231.
creation of the minds.
 Creators are given the exclusive use to his invention or Reverse Reciprocity of Foreign Laws - Any condition,
creations but only for a certain period of time. restriction, limitation, diminution, requirement, penalty or any
 Ownership thereof is acquired through intellectual similar burden imposed by the law of a foreign country on a
creations of the mind and once you have acquired Philippine national seeking protection of intellectual property
ownership, you will have title over the property. rights in that country, shall reciprocally be enforceable upon
nationals of said country, within Philippine jurisdiction.
What is the primary source or legal basis for intellectual
property rights? *If my country gives you a benefit, burden or limitation the same
goes to the other countries.
 Intellectual property code.
NOTE: Anyone claiming any right being a signatory to which the
Why do we need to protect our intellectual property rights? Philippines is also a signatory need not allege such fact and
whatever case they may file here in the Philippines because that
Sec. 2 , RA 8293- “Vital to the development of domestic and
is already judicial notice.
creative activity, facilitates transfer of technology, attracts foreign
investments, and ensures market access for our products.” What do Intellectual property rights include? - Sec. 4
What if there are no legal basis for intellectual property
rights in economic point of view? The term “intellectual property rights” consists of:

 It would not lead to an advance development to our a) Copyright and Related Rights;
economy.

Ex. A Filipino was able to create or invent something but it was b) Trademarks and Service Marks;
not patented or registered then another individual by chance saw
it or discovered it and brought such invention to another country c) Geographic Indications -> Indications which identify a good
then used for their advantage. It will be detrimental on our part as originating in the territory of a Member of the Agreement, or a
because it is supposed to be for our economic advantage. region or locality in that territory, where a given quality,
reputation or other characteristic of the good is essentially
NOTE: We have these intellectual property rights because this is attributable to its geographical origin.
for the incentive for our scientists, creators etc. without these
incentives then who would create new things. Ex. Wine you can attribute it to Italy.
 discontinue the use of the trademark “Poster Ads,” as
d) Industrial Designs- > sec. 112 - “Any composition of lines or well as the payment of compensatory damages.
colors or any three-dimensional form, whether or not associated
with lines or colors, provided that such composition or form gives a Claiming that both SMI and NEMI failed to meet all its
special appearance to and can serve as pattern for an industrial demands, PDI filed this instant case for infringement
product or handicraft. It must be new or ornamental” of trademark and copyright, unfair competition and
damages.
e) Patents; SMI maintained that it independently developed its
poster panels using commonly known techniques
f) Layout-Designs (Topographies) of Integrated Circuits -> and available technology, without notice of or
synonymous with 'Topography' and means the three- reference to PDI’s copyright. SMI noted that the
dimensional disposition, however expressed, of the elements, at registration of the mark “Poster Ads” was only for
least one of which is an active element, and of some or all of the stationeries such as letterheads, envelopes, and the
interconnections of an integrated circuit, or such a three- like. Besides, according to SMI, the word “Poster Ads”
dimensional disposition prepared for an integrated circuit is a generic term which cannot be appropriated as a
intended for manufacture. trademark, and, as such, registration of such mark is
invalid. On this basis, SMI, aside from praying for the
g) Protection of Undisclosed Information -> protection of dismissal of the case, also counterclaimed for moral,
information lawfully held from being disclosed to, acquired by, or actual and exemplary damages and for the
used by others without their consent in a manner contrary to cancellation of PDI’s Certification of Copyright
honest commercial practices so long as such information: Registration, and Certificate of Trademark
Registration.
1. is secret in the sense that it is not, as a body or in the
precise configuration and assembly of its components, The RTC of Makati City decided in favour of PDI,
generally known among or readily accessible to persons finding SMI and NEMI jointly and severally liable for
within the circles that normally deal with the kind of infringement of copyright and infringement of
information in question; trademark
2. has commercial value because it is secret; and On appeal, however, the Court of Appeals reversed
3. has been subject to reasonable steps under the the trial court.
circumstances, by the person lawfully in control of the
information, to keep it secret. ISSUES:
Whether the the light box depicted in such
Trade secrets are of a privileged nature. The protection of engineering drawings ipso facto also protected by
industrial property encourages investments in new ideas and such copyright.
inventions and stimulates creative efforts for the satisfaction of Whether there was a patent infringement.
human needs. It speeds up transfer of technology and Whether the owner of a registered trademark legally
industrialization, and thereby bring about social and economic prevent others from using such trademark if it is a
progress. Verily, the protection of industrial secrets is mere abbreviation of a term descriptive of his goods,
inextricably linked to the advancement of our economy and services or business?
fosters healthy competition in trade.
RULING: ON THE ISSUE OF COPYRIGHT
PEARL DEAN VS SHOEMART INFRINGEMENT – NONE because the light boxes does
G.R. No. 148222|August 15, 2003 not fit in the description in the law of those which are
FACTS: Pearl and Dean (Phil.), Inc. (PDI) is engaged subject to copy right because the court said that what
in the manufacture of advertising display units Pearl and Dean should have obtained was a patent
simply referred to as light boxes. PDI was able to because it is not a literary or artistic work.
secure a Certificate of Copyright Registration, the
advertising light boxes were marketed under the The Court of Appeals correctly held that the
trademark “Poster Ads”. copyright was limited to the drawings alone and not
to the light box itself.
In 1985, PDI negotiated with defendant-appellant Although petitioner’s copyright certificate was
Shoemart, Inc. (SMI) for the lease and installation of entitled “Advertising Display Units” (which depicted
the light boxes in certain SM Makati and SM Cubao. the box-type electrical devices), its claim of copyright
PDI submitted for signature the contracts covering infringement cannot be sustained.
both stores, but only the contract for SM Makati,
however, was returned signed. Eventually, SMI’s Copyright, in the strict sense of the term, is
informed PDI that it was rescinding the contract for purely a statutory right. Accordingly, it can cover
SM Makati due to non-performance of the terms only the works falling within the statutory
thereof. enumeration or description.

Years later, PDI found out that exact copies of its light Even as we find that P & D indeed owned a valid
boxes were installed at different SM stores. It was copyright, the same could have referred only to the
further discovered that SMI’s sister company North technical drawings within the category of “pictorial
Edsa Marketing Inc. (NEMI), sells advertising space illustrations.” It could not have possibly stretched out
in lighted display units located in SMI’s different to include the underlying light box. The light box was
branches. not a literary or artistic piece which could be
copyrighted under the copyright law.
PDI sent a letter to both SMI and NEMI enjoining
them to cease using the subject light boxes, remove Meanwhile, the scope of a copyright is confined to
the same from SMI’s establishments and to literary and artistic works which are original
intellectual creations in the literary and artistic The petition is DENIED
domain protected from the moment of their
creation. Patentable inventions, on the other hand, What is the difference between Patents,
refer to any technical solution of a problem in any Trademarks and copyrights in this case?
field of human activity which is new, involves an
inventive step and is industrially applicable. The remedy or protection afforded in one cannot be
used to protect the other and the court cited the case
ON THE ISSUE OF PATENT INFRINGEMENT of Ko vs CA.

Petitioner never secured a patent for the light What is the purpose of Patents?
boxes. It therefore acquired no patent rights which
and could not legally prevent anyone from 1. Foster and reward inventions.
manufacturing or commercially using the 2. Incentives innovation
contraption. To be able to effectively and legally 3. Benefit the public for such inventions or
preclude others from copying and profiting from the innovations.
invention, a patent is a primordial requirement. No
patent, no protection. What is the difference between a Patent and a Patentable
invention?
ON THE ISSUE OF TRADEMARK INFRINGEMENT -
NONE, because poster ads are too general to be  Patentable invention – sec, 21. Any technical solution
registered in the name of one enterprise. Pearl and of a problem in any field of human activity which is new,
Dean does not engage in the business of selling poster involves an inventive step and is industrially applicable
ads instead sells those light boxes and not poster ads. shall be patentable. It may be, or may relate to, a
Pearl and Dean also does not have any trademark product, or process, or an improvement of any of the
registration. foregoing.
 The subject of that right.
On the issue of trademark infringement, the
petitioner’s president said “Poster Ads” was a INTELLECTUAL DEFINITION
contraction of “poster advertising.” P & D was able to PROPERTIES
secure a trademark certificate for it, but one where Any visible sign capable of
the goods specified were “stationeries such as distinguishing the goods
letterheads, envelopes, calling cards and (trademark) or services (service
newsletters.”Petitioner admitted it did not Trademark mark) of an enterprise and shall
commercially engage in or market these goods. On include a stamped or marked
the contrary, it dealt in electrically operated backlit container of goods.
advertising units which, however, were not at all
specified in the trademark certificate. DISCUSSION: Trademark is
everywhere, we have Mcdo,
Assuming arguendo that “Poster Ads” could validly Jollibee logos etc.
qualify as a trademark, the failure of P & D to secure The name or designation
a trademark registration for specific use on the light Tradename identifying or distinguishing an
boxes meant that there could not have been any enterprise.
trademark infringement since registration was an DISCUSSION: the names Mcdo
essential element thereof. and Jollibee can be registered as
trademarks as well.
ON THE ISSUE OF UNFAIR COMPETITION Literary and artistic works
which are original intellectual
There was no evidence that P & D’s use of “Poster creations in the literary and
Ads” was distinctive or well-known. As noted by the Copyright artistic domain protected from
Court of Appeals, petitioner’s expert witnesses the moment of their creation.
himself had testified that ” ‘Poster Ads’ was too DISCUSSION: this is only when
generic a name. So it was difficult to identify it with registration not needed because
any company, honestly speaking.”This crucial these are already protected the
admission that “Poster Ads” could not be associated moment of creation.
with P & D showed that, in the mind of the public, the Any technical solution of a
goods and services carrying the trademark “Poster problem in any field of human
Ads” could not be distinguished from the goods and Patentable activity which is new, involves
services of other entities. Inventions an inventive step and is
industrially applicable. (Kho v.
“Poster Ads” was generic and incapable of being used CA, G.R. No. 115758, Mar. 11,
as a trademark because it was used in the field of 2002).
poster advertising, the very business engaged in by
petitioner. “Secondary meaning” means that a word DISCUSSION: you have to
or phrase originally incapable of exclusive register this.
appropriation with reference to an article in the  Patent – right granted to the person who made such
market might nevertheless have been used for so
innovation or invention.
long and so exclusively by one producer with
reference to his article that, in the trade and to that  Term of patents are from 20 years from the date of
branch of the purchasing public, the word or phrase filing for the application of patent and not the grant
has come to mean that the article was his property. of registration.
Elements of Patentability: NOTE: The burden of proving want of novelty of an invention is
on the person who avers it and the burden is a heavy one
1. Novelty (originality) – the invention is new. (sec. 23) which is met only by clear and satisfactory proof which
2. Inventive Step- the discovery must not be obvious to the overcomes every reasonable doubt (Manzano v. CA, G.R. No.
person skilled in the art (sec. 26)
113388, Sept. 5, 1997).
3. Industrially Applicable – an invention that can be
produced and used in any industry meets the industrial
application requirement of patent registrability. This means an
invention is not merely theoretical, but also has a practical
purpose. If the invention is a product, it should be able to produce
a product and if the invention is a process, it should be able to lay
out a process

SECTION 23. Novelty. - An invention shall not be considered new if

it forms part of a prior art.

SECTION 26. Inventive Step. - 26.1. An invention involves an

inventive step if, having regard to prior art, it is not obvious to a
person skilled in the art at the time of the filing date or priority
date of the application claiming the invention.

Prior Art

a. 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; and
VARGAS VS CHUA
b. The whole contents of an earlier published Philippine G.R. No. L-36650 |January 27, 1933
application or application with
FACTS: The defendants Petronila Chua, Coo Pao and
Coo Teng Hee, appeal from the judgment of the Court
Person skilled in the art of First Instance of Manila, which held in favor of
Vargas and against Chua - to henceforth abstain from
A person skilled in the art is a person with ordinary skills in a making, manufacturing, selling or offering for a sale
certain art or field, who is aware of what is a common general plows of the type of those manufactured by the
knowledge in the field at the time of the application. “He is plaintiff, - Angel Vargas, the plaintiff herein, brought
presumed to have knowledge of all references that are this action to restrain the appellants (CHUA) and the
sufficiently related to one another and to the pertinent art and to other defendant entity, Cham Samco & Sons, their
have knowledge of all arts reasonably pertinent to the particular agents and mandatories, from continuing the
problems with which the inventor was involved. He is presumed manufacture and sale of plows similar to his plow
also to have had at his disposal the normal means and capacity described in his patent No. 1,507,530 issued by the
for routine work and experimentation” (Revised IRR for R.A. No. United States Patent Office on September 2, 1924;
8293, Rule 207). and to compel all of said defendants, after rendering
an accounting of the profits obtained by them from
NOTE: They need not be experts in the field as long as they are the sale of said plows from September 2, 1924, to pay
well-informed in that particular filed then they can be considered him damages equivalent to double the amount of
as an ordinary person skilled in the said art. such profits.

That the plaintiff (VARGAS) is the registered owner

and possessor of United States Patent No. 1,507,530
on certain plow improvements, issued by the United
States Patent Office on September 2, 1924, a certified
Test of Non-Obviousness copy of which was registered in the Bureau of
If any person possessing ordinary skill in the art was able to draw Commerce and industry of the Government of the
the inferences and he constructs that the supposed inventor Philippine Islands on October 17, 1924.
drew from prior art, then the latter did not really invent it.
A certified copy of said patent is attached to this
26.2. In the case of drugs and medicines, there is no inventive stipulation of facts as Exhibit A. the parties agree that
step if the invention results from the mere discovery of a new the defendant Coo Teng Hee, doing business under
form or new property of a known substance which does not the name of Coo Kun & Sons Hardware Co., has been
result in the enhancement of the known efficacy of that selling to his customers in his store on J. Ma. Basa
substance, or the mere discovery of any new property or new use Street in Iloilo, plows of the kind, type and design
for a known substance, or the mere use of a process unless such represented by Exhibits B, B1 and B-2, having bought
known process results in a new product that employs at least one said plows from his codefendant, Petronila Chua,
new reactant. who manufactures them in her factory on Iznart
Street, Iloilo. , the plaintiff herein, through his
Ex. A vaccine for covid 19 is not an inventive step because ,it is attorneys Paredes, Buencamino & Yulo, sent by
merely new in purpose and not entirely new in substance. registered mail to the herein defendant, Coo Kun &
Sons Hardware Co., at Iloilo, the original of the letter
Exhibit E, which was received by it on September 28, Patent Office an action for the cancellation of Letters
1927, according to the receipt marked Exhibit E-1 Patent for a gas burner registered in the name of
attached hereto. private respondent Madolaria who subsequently
assigned the same to private respondent United
That the plows manufactured by the plaintiff in Foundry. Petitioner alleged that the utility model
accordance with his patent, Exhibit A, are commonly covered by the letters patent was not inventive, new,
known to the trade in Iloilo, as well as in other parts or useful, the specification did not comply with the
of the Philippines, as "Arados Vargas", and that the requirements of R.A. No. 165, that respondent was
plaintiff is the sole manufacturer of said plows. A not the original, true, and actual inventor nor did she
sample of these plows is presented as Exhibit F. derive her rights from the same, and that respondent
was guilty of fraud or misrepresentation in applying
HELD: the plow upon which the appellee's for the letters patent.
contention is based, does not constitute an invention
and, consequently, the privilege invoked by him is Petitioner also alleged that the utility model in
untenable and the patent acquired by him should be question had already been in use and on sale
declared ineffective. (petitioner herself being a distributor/seller of the
The judgment appealed from is hereby reversed and said gas burners) in the Philippines for more than
the appellants are absolved from the complaint, with one year before the respondent filed for the
costs of this instance against the appellee. So application. Petitioner presented two undated
ordered. brochures of two different Gas companies (Manila
Gas Corp. & Esso Gasul) which allegedly depicts an
ISSUE: Whether the plow, Exhibit F, constitutes a identical gas burner as the one covered in
real invention or an improvement for which a patent respondent’s letters patent. Respondent presented
may be obtained, or if, on the contrary, it is her husband as lone witness to testify that
substantially the same plow represented by Exhibit respondent, thru complaints of customers, devised a
3-Chua the patent for which was declared null and way to solve the defects in the gas burners, and
void in the aforementioned case of Vargas vs. F. M. respondent’s innovation is now the subject of the
Yaptico & Co., supra. letters patent.

We have carefully examined all the plows presented The Director of Patents denied the petition for
as exhibits as well as the designs of those covered by cancellation, which was affirmed by the CA, on the
the patent, and we are convinced that NO ground that petitioner was not able to convincingly
SUBSTANTIAL DIFFERENCE EXISTS BETWEEN THE establish that the patented utility model was not
PLOW, Exhibit F, and the plow, Exhibit 3-Chua which novel. Petitioner failed to overcome her burden and
was originally patented by the appellee, Vargas. overturn the presumption of legality of the issuance
of letters patent and that respondent withheld
The only difference noted by us is the suppression of material facts with intent to deceive which, if
the bolt and the three holes on the metal strap disclosed, would have resulted in the refusal by the
attached to the handle bar. PPO to issue the letters patent. Hence, this appeal.

These holes and bolt with its nut were suppressed in ISSUE: WON the CA erred in upholding the decision
Exhibit F in which the beam is movable as in the of the Director of Patents.
original plow.
RULING: NO. In issuing Letters Patent to respondent
The members of this court, with the plows in view, Madolaria for an LPG Burner, the PPO found her
arrived at the conclusion that not only is there no invention novel and patentable. The issuance of such
fundamental difference between the two plows but patent creates a presumption which yields only to
no improvement whatever has been made on the clear and cogent evidence that the patentee was the
latest model, for the same working and movement of original and first inventor. The burden of proving
the beam existed in the original model with the want of novelty is on him who avers it and the
advantage, perhaps, that its graduation could be burden is a heavy one which is met only by clear and
carried through with more certainty by the use of the satisfactory proof which overcomes every reasonable
bolt which as has already been stated, was adjustable doubt.
and movable.
As found by the Director of Patents, the standard of
The appellee is not entitled to the protection he evidence sufficient to overcome the presumption of
seeks for the simple reason that his plow, Exhibit F, legality of the issuance of letters patent to
does not constitute an invention in the legal sense, respondent Madolaria was not legally met by
and because, according to the evidence, the same petitioner in her action for the cancellation of the
type of plows had been manufactured in this country patent. The findings and conclusions of the Director
and had been in use in many parts of the Philippine of Patent were reiterated and affirmed by the Court
Archipelago, especially in the Province of Iloilo, long of Appeals. The rule is settled that the findings of fact
before he obtained his last patent. of the Director of Patents, especially when affirmed
by the Court of Appeals, are conclusive on this Court
when supported by substantial evidence.

MANZANO VS CA The validity of the patent issued by the PPO in favor

G.R. No. 113388 | September 5, 1997 of private respondent and the question over the
inventiveness, novelty and usefulness of the
FACTS: Petitioner Manzano filed with Philippine improved model of the LPG burner are matters
 which are better determined by the PPO. The inventor of “ an alleged new and useful improvement
technical staff of the Philippine Patent Office in the process of making pre-cast tiles.” Indeed,
composed of experts in their field has by the issuance section 7, Republic Act No. 165, as amended
of the patent in question accepted private provides: “ Any invention of a new and useful
respondents model of gas burner as a discovery. machine, manufactured product or substance,
There is a presumption that the Office has correctly process, or an improvement of the foregoing, shall be
determined the patentability of the model and such patentable.”
action must not be interfered with in the absence of
competent evidence to the contrary

DISCUSSION: An inventive improvement can be entitled to a

Are all disclosures a bar to the filing of a patent application? patent. So, you do not need to be the inventor of the first
invention as long as you are able to upgrade or create an
No, the exception is under sec. 25. Non-Prejudicial Disclosure. - inventive step so it can be subject to a patent
25.1. The disclosure of information contained in the application
during the twelve (12) months preceding the filing date or the What are non-patentable inventions?
priority date of the application shall not prejudice the applicant on
the ground of lack of novelty if such disclosure was made by:
SECTION 22. Non-Patentable Inventions. - The following shall
1. disclosed by the inventor himself. be excluded from patent protection:

2. A patent officer and the information was contained (a) in 22.1. Discoveries, scientific theories and mathematical methods,
another publication filed by the inventor and should not have been and in the case of drugs and medicines, the mere discovery of a new
disclosed by the office, or (b) in an application filed, without the form or new property of a known substance which does not result
knowledge or consent of the inventor, by a third party who in the enhancement of the known efficacy of that substance, or the
obtained the information directly or indirectly from the inventor; mere discovery of any new property or new use for a known
or substance, or the mere use of a known process unless such known
process results in a new product that employs at least one new
3.A third party who obtained the information directly or indirectly reactant.
from the inventor. (IPC, Sec. 25)
Ex. Mathematical methods (Pythagorean theorem)
AGUAS VS DE LEON
G.R. No. L-32160 | January 30, 1982
22.2. Schemes, rules and methods of performing mental acts,
FACTS: On April 14, 1962, respondent Conrado de
playing games or doing business, and programs for computers;
Leon filed in the CFI of Rizal at Quezon City a
complaint for infringement of patent against
petitioner Domiciano Aguas and F.H. Aquino and 22.3. Methods for treatment of the human or animal body by
Sons alleging among others that being the original surgery or therapy and diagnostic methods practiced on the
first and sole inventor of certain new and useful human or animal body. This provision shall not apply to products
improvements in the process of making mosaic pre- and composition for use in any of these methods;
cast tiles, and thereafter lawfully acquired from the
Philippine Patent Office, Patent No. 658, the latter 22.4. Plant varieties or animal breeds or essentially biological
infringed the same by making, using and selling tiles process for the production of plants or animals. This provision shall
embodying said patent invention. A writ of not apply to micro-organisms and non-biological and
Preliminary Injuction was subsequently issued. microbiological processes.

Petitioner Aguas, in his answer, denied the

Provisions under this subsection shall not preclude Congress to
allegations and instead averred inter alia that
consider the enactment of a law providing sui generis protection of
respondent De Leon is neither the original first nor
plant varieties and animal breeds and a system of community
sole inventor of the improvements in the process of
intellectual rights protection:
making mosaic pre-cast tiles, the same having been
used by several tile-making factories both here and
abroad years before the alleged invention by De 22.5. Aesthetic creations; and
Leon; hence, it is not patentable.
Note: these are covered under copyright and not by patents.
 The trial court and the Court of Appeals, upon appeal
rendered judgment in favor of respondent de Leon.
22.6. Anything which is contrary to public order or morality.
Thus, this petition.

ISSUE: Whether or not the alleged invention or Ex. Unlawful drugs

discovery of respondent is patentable.
Who has a right to a patent?
HELD: Yes. x x x It should be noted that the private
respondent does not claim to be the discoverer or
Persons entitled to a patent
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 1. Inventor, his heirs, or assigns (IPC, Sec 28)
the Philippine Patent Office to the private respondent
Conrado G. De Leon, to protect his rights as the 2. Joint invention – Jointly by the inventors (IPC, Sec. 28)
3. Two or more persons invented separately and application that you have earlier filed within the 12
independently of each other - To the person who filed an months.
application
 This right of priority follows the principle of reciprocity
4. Two or more applications are filed – the applicant who has under sec. 3. Under this priority system the inventor
the earliest filing date or, the earliest priority date. First to file may within 12 months of the application, disclosing an
rule (IPC, Sec. 29). invention and a member country of a Paris convention
can apply for the same invention in another country
with the same filing date as the prior foreign
application.
FIRST-TO-FILE RULE (sec.29)
 This 12-month period is known as the priority period.
1. If two (2) or more persons have made the invention The subsequent filing of application within 12-month
separately and independently of each other, the right to priority period will enjoy the same filing date known as
the patent shall belong to the person who filed an the priority date.
application for such invention, or
2. Where two or more applications are filed for the same  The withdrawal or abandonment, revocation or
invention, to the applicant which has the earliest filing rejection of first application will not affect the priority
date. status here in the Philippines in the subsequent
application. Why is this important? Because we have the
first to file rule.

What are the grounds for cancellation of patent?

What are inventions created pursuant to a commission?
1. The invention is Not new or patentable;
 If someone commissions the work he owns the patent. 2. The patent does not Disclose the invention in a manner
Unless, there is a stipulation in the contract that the sufficiently clear and complete for it to be carried out by any
ownership of the patent will be the person who is person skilled in the art; or
working on the patent. 3. Contrary to public order or morality.(Sec. 61.1, IPC)
4. Patent is found Invalid in an action for infringement
GENERAL RULE: The person who commissioned the work shall
own the work but the copyright thereto shall remain with the Can only parts of the patent be cancelled or should it be in
creator – In cases of work pursuant to commission, unless there whole? Part only. (sec. 61.2)
is a written stipulation to the contrary. (Sec. 178.4, IPC)
61.2. Where the grounds for cancellation relate to some of the
The employee will own the patented work if it is done not inline claims or parts of the claim, cancellation may be effected to such
with the regular duties of his work even if he uses the facilities of extent only.
the company.

It is owned by the employer if the employee is working on the

invention in relation to his duties unless otherwise stipulated. In case of a petition for cancellation of patent, who has the
burden of proof?
What is right of priority?
 The one who filed (petitioner) because of the
SECTION 31. Right of Priority. - An application for patent filed presumption of validity once the patent has been issued
by any person who has previously applied for the same invention in in favor of someone.
another country which by treaty, convention, or law affords similar
privileges to Filipino citizens, shall be considered as filed as of the What is the remedy of a true inventor?
date of filing the foreign application: Provided, That:
 He may only ask the court to substitute him as a
(a) the local application expressly claims priority; patentee or to cancel the patent and ask for damages
when the application of the false inventor is granted. He
(b) it is filed within twelve (12) months from the date the earliest may not the IPO of processing the false application.
foreign application was filed; and
SECTION 68. Remedies of the True and Actual Inventor. - If a
(c) a certified copy of the foreign application together with an person, who was deprived of the patent without his consent or
English translation is filed within six (6) months from the date of through fraud is declared by final court order or decision to be the
filing in the Philippines. (Sec. 15, R.A. No. 165a) true and actual inventor, the court shall order for his substitution
as patentee, or at the option of the true inventor, cancel the patent,
Supposed you filed a patent application in China, does it and award actual and other damages in his favor if warranted by
mean a local application in the Philippines is also filed? No. the circumstances.

 There is no automatic filing of application. It does not Why do we have this remedy?
mean that when you filed an application abroad it
means you already filed here in the Philippines and it Because there are inventors who were not able to register their
also does not follow that when you filed abroad and inventions and was not aware that his invention was already
here in the Philippines that you will have that priority patented.
date. It must particularly state in your application that
you are claiming priority based on the foreign NOTE: The burden of proof is with the plaintiff or the one who is
deprived of such right because there is presumption that the
patent holder is the original inventor of the machine. This is an 72.4. In the case of drugs and medicines, where the act
exception to the first to file rule. includes testing, using, making or selling the invention
including any data related thereto, solely for purposes
What are the rights conferred by a patent? reasonably related to the development and submission of
information and issuance of approvals by government
1. Subject matter is a product – Right to restrain, regulatory agencies required under any law of the Philippines
prohibit and prevent any unauthorized person or or of another country that regulates the manufacture,
entity from making, using, offering for sale, selling or construction, use or sale of any product:
importing the product.
Provided, That, in order to protect the data submitted by the
2. Subject matter is a process – Right to restrain original patent holder from unfair commercial use provided in
prohibit and prevent any unauthorized person or Article 39.3 of the Agreement on Trade-Related Aspects of
entity from manufacturing, dealing in, using, offering for Intellectual Property Rights (TRIPS Agreement), the Intellectual
sale, selling or importing any product obtained directly Property Office, in consultation with the appropriate government
or indirectly from such process (Sec. 71, IPC). agencies, shall issue the appropriate rules and regulations
necessary therein not later than one hundred twenty (120) days
3. Right to assign the patent, to transfer by succession, after the enactment of this law;
and to conclude licensing contracts. (Sec. 71.2, IPC)
72.5. Where the act consists of the preparation for individual
SECTION 71. Rights Conferred by Patent. - 71.1. A patent shall cases, in a pharmacy or by a medical professional, of a
confer on its owner the following exclusive rights: medicine in accordance with a medical prescription or acts
concerning the medicine so prepared; and
(a) Where the subject matter of a patent is a product, to restrain,
prohibit and prevent any unauthorized person or entity from 72.6. Where the invention is used in any ship, vessel, aircraft,
making, using, offering for sale, selling or importing that product; or land vehicle of any other country entering the territory of
the Philippines temporarily or accidentally:
(b) Where the subject matter of a patent is a process, to restrain,
prevent or prohibit any unauthorized person or entity from using Provided, That such invention is used exclusively for the needs of
the process, and from manufacturing, dealing in, using, selling or the ship, vessel, aircraft, or land vehicle and not used for the
offering for sale, or importing any product obtained directly or manufacturing of anything to be sold within the Philippines. 
indirectly from such process.
Ex. I am a patent holder of a certain invention, supposed I
71.2. Patent owners shall also have the right to assign, or transfer gave away my invention to A who has already sold it to
by succession the patent, and to conclude licensing contracts for another person etc. and then later I decided to withdraw me
the same. (Sec. 37, R.A. No. 165a) giving away my invention, who has the better right to my
invention? Has my right been limited already?
What are the exceptions to the rights conferred by a patent?
 Once a patent holder puts out in the market his
patented product his exclusive right to prevent anyone
SECTION 72. Limitations of Patent Rights. - The owner of a from using it automatically limited his right. Remember
patent has no right to prevent third parties from performing, the right is separated from the object of the right.
without his authorization, the acts referred to in Section 71 hereof
in the following circumstances:  Once I sold the product or gave it away etc. then my
right is automatically limited. I cannot say that I
72.1. Using a patented product which has been put on the changed my mind or withdraw what I have already
market in the Philippines by the owner of the product, or entered into. Because what if the invention has already
with his express consent, insofar as such use is performed been sold to a hundred people and for value it would be
after that product has been so put on the said market: unfair. Hence, you cannot claim that you have exclusive
right from using the invention because in the first place
Provided, That, with regard to drugs and medicines, the limitation it was already given away with your consent.
on patent rights shall apply after a drug or medicine has been
introduced in the Philippines or anywhere else in the world by the
patent owner, or by any party authorized to use the invention:

Provided, further, That the right to import the drugs and

medicines contemplated in this section shall be available to any
government agency or any private third party;

72.2. Where the act is done privately and on a non-commercial

scale or for a non-commercial purpose: Provided, That it does
not significantly prejudice the economic interests of the owner of ROMA DRUG VS RTC
the patent; G.R. No. 149907 April 16, 2009

72.3. Where the act consists of making or using exclusively for FACTS: The petitioner Roma Drug was among the 6
experimental use of the invention for scientific purposes or local drugstores in Pampanga raided by the joint NBI
educational purposes and such other activities directly and BFAD inspectors where various medicines were
related to such scientific or educational experimental use; found and seized on the strength of a search warrant
issued by the RTC of Pampanga and upon the request
of Glaxo Smithkline, a registered corporation and the the subject that intention must be given effect.
authorized Philippine distributor of the medicines When a subsequent enactment covering a field of
seized from said drugstores. The NBI proceeded in operation co-terminus with a prior statute cannot by
filing a complaint against petitioner for violation of any reasonable construction be given effect while the
Section 4 (in relation to Sections 3 and 5) of Republic prior law remains in operative existence because of
Act No. 8203, also known as the Special Law on irreconcilable conflict between the two acts, the
Counterfeit Drugs (SLCD), with the Office of the latest legislative expression prevails and the prior
Provincial Prosecutor in San Fernando, Pampanga. law yields to the extent of the conflict. Irreconcilable
The law prohibits the sale of counterfeit drugs, which inconsistency between two laws embracing the same
include an "unregistered imported drug product". subject may exist when the later law nullifies the
The term "unregistered" signifies lack of registration reason or purpose of the earlier act, so that the latter
with the Bureau of Patent, Trademark and loses all meaning and function. Legis posteriors
Technology Transfer of a trademark of a drug in the priores contrarias abrogant.
name of a natural or juridical person. The seized
drugs are identical in content with their Philippine- For the reasons above-stated, the prosecution of
registered counterparts. No claim was made that the petitioner is no longer warranted and the quested
drugs were adulterated in any way or mislabeled at writ of prohibition should accordingly be issued.
the least. Their classification as "counterfeit" is based
solely on the fact that they were imported from
abroad and not purchased from Philippine-registered What are the limitations of rights for drug medicines?
owner of the patent or trademark of the drugs.
 It is allowed for a 3rd party to use such patented
Petitioner Roma Drug challenged the invention if it is only for testing, making or development
constitutionality of the SLCD during the preliminary purposes this will not violate the patent rights of an
investigation but the provincial prosecutors issued a owner.
resolution recommending that Rodriguez, the owner
of Roma Drug, be charged with violation of Section 4 What about the importation of the drugs?
of the SLCD.
 Third parties may import because in this case there was
Thus, Roma Drug filed a Petition for Prohibition already a prior introduction of the drug to its local
before the Supreme Court questing the RTC-Guagua subsidiaries or companies.
Pampanga and the Provincial Prosecutor to desist
from further prosecuting Rodriguez, and that Is it the ruling the same if it involves non-medical or drug
Sections 3(b)(3), 4 and 5 of the SLCD be declared patented products? (sec. 72.1)
unconstitutional.

The Court issued a temporary restraining order  With regard to non-medical or drug patented products
enjoining the RTC from proceeding with the trial it must first be put out in the Philippines first before
against Rodriguez, and the BFAD, the NBI and Glaxo your right is limited. As opposed to drugs and medicines
Smithkline from prosecuting the petitioners. it can be anywhere it is not territorial.

Glaxo Smithkline and the Office of the Solicitor What is a prior user?
General (OSG) have opposed the petition. On the
constitutional issue, Glaxo Smithkline asserts the rule  Person other than the applicant, who in good faith,
that the SLCD is presumed constitutional. The OSG started using the invention in the Philippines, or
invokes the presumption of constitutionality of undertaken serious preparations to use the same,
statutes and asserts that there is no clear and before the filing date or priority date of the application
unequivocal breach of the Constitution presented by shall have the right to continue the use thereof, but this
the SLCD. right shall only be transferred or assigned further with
his enterprise or business. (Sec. 73, IPC)
ISSUE: WON RA 9502 impliedly abrogates the
provisions of RA 8203 (SLCD) with which the
petitioner is criminally charged? Yes SECTION 73. Prior User. - 73.1. Notwithstanding Section 72
hereof, any prior user, who, in good faith was using the invention
HELD: (petition granted, writ of prohibition or has undertaken serious preparations to use the invention in his
issued, TRO made permanent) enterprise or business, before the filing date or priority date of the
application on which a patent is granted, shall have the right to
It may be that Rep. Act No. 9502 (Universally continue the use thereof as envisaged in such preparations within
Accessible Cheaper and Quality Medicines Act of the territory where the patent produces its effect.
2008) did not expressly repeal any provision of the
SLCD. However, it is clear that the SLCD's 73.2. The right of the prior user may only be transferred or
classification of "unregistered imported drugs" as assigned together with his enterprise or business, or with that part
"counterfeit drugs," and of corresponding criminal of his enterprise or business in which the use or preparations for
penalties therefore are irreconcilably in the use have been made. 
imposition conflict with Rep. Act No. 9502 since the
latter indubitably grants private third persons the Ex. A was already using an invention in good faith and he
unqualified right to import or otherwise use such subsequently filed a patent, B is not prevented to use such
drugs. Where a statute of later date, such as Rep. invention .
Act No. 9502, clearly reveals an intention on the
part of the legislature to abrogate a prior act on
What if an inventor created this invention for personal use (e) Such use shall be non-exclusive;
and then I gave to my relatives and then subsequently a
patent holder was granted of the same invention with the (f) The right holder shall be paid adequate remuneration in the
same functions discovers this. Can I claim to be a prior user? circumstances of each case, taking into account the economic value
of the authorization; and
 No, the law provides that it must be undertaken in a
serious manner hence, if it is only for personal use then (g) The existence of a national emergency or other circumstances
prior user will not be applied. of extreme urgency, referred to under Section 74.1 (c), shall be
 For developed countries, the reality is that it is not subject to the determination of the President of the Philippines for
possible to attempt to patent every piece technology the purpose of determining the need for such use or other
which may be patentable. exploitation, which shall be immediately executory.
 It is only applicable for commercially used or serious
application of a patented invention.
74.3. All cases arising from the implementation of this provision
shall be cognizable by courts with appropriate jurisdiction
What is the limitation of use by the Government? provided by law.

SECTION 74. Use of Invention by Government. - 74.1. A No court, except the Supreme Court of the Philippines, shall issue
Government agency or third person authorized by the Government any temporary restraining order or preliminary injunction or such
may exploit the invention even without agreement of the patent other provisional remedies that will prevent its immediate
owner where: execution.

(a) The public interest, in particular, national security, nutrition, 74.4. The Intellectual Property Office (IPO), in consultation with
health or the development of other sectors, as determined by the the appropriate government agencies, shall issue the appropriate
appropriate agency of the government, so requires; or implementing rules and regulations for the use or exploitation of
patented inventions as contemplated in this section within one
(b) A judicial or administrative body has determined that the hundred twenty (120) days after the effectivity of this law.
manner of exploitation, by the owner of the patent or his licensee is
anti-competitive; or

(c) In the case of drugs and medicines, there is a national

emergency or other circumstance of extreme urgency requiring the
use of the invention; or

(d) In the case of drugs and medicines, there is public non-

commercial use of the patent by the patentee, without satisfactory Why do we have these provisions on the limitations of use by
reason; or the government?

(e) In the case of drugs and medicines, the demand for the patented  To prevent the government from exploiting the
article in the Philippines is not being met to an adequate extent invention without the consent of the patent holder.
and on reasonable terms, as determined by the Secretary of the
Department of Health. Are these provisions unconstitutional?

74.2. Unless otherwise provided herein, the use by the Government,  No, because it is pursuant to the police power of the
or third person authorized by the Government shall be subject, government particularly power of eminent domain and
where applicable, to the following provisions: because these are pursuant to some public interest.

(a) In situations of national emergency or other circumstances of What constitutes infringement of patent?
extreme urgency as provided under Section 74.1(c), the right
holder shall be notified as soon as reasonably practicable; 1. Making, using, offering for sale, selling or importing a
patented product or a product obtained directly or indirectly
(b) In the case of public non-commercial use of the patent by the from a patented process; or
patentee, without satisfactory reason, as provided under Section 2. Use of a patented process without authorization of the
74.1 (d), the right holder shall be informed promptly: Provided, owner of the patent (Sec. 76, IPC)
That, the Government or third person authorized by the
Government, without making a patent search, knows or has
demonstrable ground to know that a valid patent is or will be used
by or for the Government; Who may bring an action for a patent infringement?

(c) If the demand for the patented article in the Philippines is not SECTION 76. Civil Action for Infringement. - 76.1. The making,
being met to an adequate extent and on reasonable terms as using, offering for sale, selling, or importing a patented product
provided under Section 74.1 (e), the right holder shall be informed or a product obtained directly or indirectly from a patented
promptly; process, or the use of a patented process without the
authorization of the patentee constitutes patent infringement:
(d) The scope and duration of such use shall be limited to the Provided, That, this shall not apply to instances covered by
purpose for which it was authorized; Sections 72.1 and 72.4 (Limitations of Patent Rights); Section 74
(Use of Invention by Government); Section 93.6 (Compulsory
Licensing); and Section 93-A (Procedures on Issuance of a Special infringed, may bring a civil action before a court of competent
Compulsory License under the TRIPS Agreement) of this Code. jurisdiction, to recover from the infringer such damages
sustained thereby, plus attorney’s fees and other expenses of
76.2. Any patentee, or anyone possessing any right, title or litigation, and to secure an injunction for the protection of his
interest in and to the patented invention, whose rights have been rights.

There can be no infringement of a patent until a

CRESSER PRECISION SYSTEM VS FLORO patent has been issued, since whatever right one has
INTERNATIONAL to  the invention covered by the patent arises alone
FACTS: Private respondent Floro is a domestic from the grant of patent. In short, a person or entity
corporation engaged in the manufacture, production, who has not been granted letters patent over an
distribution and sale of military armaments, invention and has not acquired any light or title
munitions, airmunitions and other similar materials. thereto either as assignee or as licensee, has no cause
On Jan. 23, 1990, private respondent Floro was of action for infringement because the right to
granted by the Bureau of Patents, Trademarks and maintain an infringement suit depends on the
Technology Transfer a Letters Patent covering an existence of the patent.
aerial fuze.
Petitioner admits it has no patent over its aerial fuze.
However, Floro’s President, Mr. Gregory Floro Therefore, it has no legal basis or cause of action to
discovered that petitioner Creser submitted samples institute the petition for injunction and damages
of its patented aerial fuze to the Armed Forces of the arising from the alleged infringement by private
Philippines (AFP) for testing and that petitioner is respondent. While petitioner claims to be the first
claiming the aerial fuze as its own and planning to inventor of the aerial fuze, still it has no right of
bid and manufacture it commercially. property over the same upon which it can maintain a
suit unless it obtains a patent therefor.
Petitioner Creser contends that it is the first, true and
actual inventor of an aerial fuze denominated as
which it developed as early as December 1981 under In patent infringement cases what is the first thing that you
the Self-Reliance Defense Posture Program (SRDP) of should look for?
the AFP; that sometime in 1986, petitioner began
supplying the AFP with the said aerial fuze; that  Look if there is a patent issued for such invention
private respondent's aerial fuze is identical in every because if there is no patent right there can be no patent
respect to the petitioner's fuze; and that the only infringement.
difference between the two fuzes are miniscule and
merely cosmetic in nature.
What is the remedy if there is a patent already issued?
Petitioner prayed that a temporary restraining order
and/or writ of preliminary injunction be issued  Filing of a petition to cancel patent.
enjoining private respondent including any and all
persons acting on its behalf from manufacturing, GODINES VS CA
marketing and/or profiting therefrom, and/or from G.R. No. 97343 September 13, 1993
performing any other act in connection therewith or Facts:Respondent SV-Agro Industries acquired a
tending to prejudice and deprive it of any rights, letter patent issued to one Magdalena Villaruz which
privileges and benefits to which it is duly entitled as covers a utility model for hand tractor or power tiller
the first, true and actual inventor of the aerial fuze. by virtue of a deed of assignment executed by the
latter in its favor. Respondent after suffering a
RTC issued a TRO and later on granted the decline in sales of the patented power tillers,
preliminary injunction filed by plaintiff against investigated and discovered that petitioner Godines
private respondent. While CA reversed the RTC’s was manufacturing the same power tillers as they
decision and dismissed the complaint filed by have.
petitioner.

ISSUE: Whether Petitioner can file an action for Petitioner maintains the defenses which he raised
infringement not as a patentee but as an entity in before the trial and appellate courts, to wit: that he
possession of a right, title or interest in and to the was not engaged in the manufacture and sale of the
patented invention? power tillers as he made them only upon the special
order of his customers who gave their own
RULING: NO. Section 42 of R.A. 165, otherwise specifications; hence, he could not be liable for
known as the Patent Law, explicitly provides: infringement of patent and unfair competition; and
Sec. 42. Civil action for infringement. — Any that those made by him were different from those
patentee, or anyone possessing any right, title or being manufactured and sold by private respondent.
interest in and to the patented invention, whose Respondent thus filed a complaint for patent
rights have been infringed, may bring a civil action infringement and unfair competition against
before the proper Court of First Instance (now petitioner Godines. The trial court held petitioner
Regional Trial court), to recover from the infringer liable for infringement. CA affirmed.
damages sustained by reason of the infringement
and to secure an injunction for the protection of his
right. . . . Issue:Whether or not petitioner’s products infringe
upon the patent of respondent SV-Agro. established by the courts despite petitioner's claims
to the contrary.
Tests have been established to determine
Ruling: YES. infringement. These are (a) literal infringement; and
(b) the doctrine of equivalents. In using literal
Tests have been established to determine infringement as a test, ". . . resort must be had, in the
infringement. These are (a) literal infringement; and first instance, to the words of the claim. If accused
(b) the doctrine of equivalents. matter clearly falls within the claim, infringement is
made out and that is the end of it." 

In using literal infringement as a test, “. . . resort must To determine whether the particular item falls
be had, in the first instance, to the words of the claim. within the literal meaning of the patent claims, the
If accused matter clearly falls within the claim, Court must juxtapose the claims of the patent and the
infringement is made out and that is the end of it.” To accused product within the overall context of the
determine whether the particular item falls within claims and specifications, to determine whether
the literal meaning of the patent claims, the court there is exact identity of all material elements.
must juxtapose the claims of the patent and the
accused product within the overall context of the Samples of the defendant's Goating power tiller have
claims and specifications, to determine whether been produced and inspected by the court and
there is exact identity of all material elements. compared with that of the turtle power tiller of the
plaintiff. In appearance and form, both the Goating
power tillers of the defendant and the turtle power
It appears from the observation of the trial court that tiller of the plaintiff are virtually the same. Viewed
these claims of the patent and the features of the from any perspective or angle, the power tiller of the
patented utility model were copied by petitioner: In defendant is identical and similar to that of the turtle
appearance and form, both the floating power tillers power tiller of plaintiff in form, configuration, design
of the defendant and the turtle power tiller of the and appearance. The parts or components thereof
plaintiff are virtually the same. Viewed from any are virtually the same.
perspective or angle, the power tiller of the defendant
is identical and similar to that of the turtle power In operation, the floating power tiller of the
tiller of plaintiff in form, configuration, design and defendant operates also in similar manner as the
appearance. The parts or components thereof are turtle power tiller of plaintiff. This was admitted by
virtually the same. In operation, the floating power the defendant himself in court that they are
tiller of the defendant operates also in similar manner operating on the same principles.
as the turtle power tiller of plaintiff.
Moreover, it also observed that petitioner also called
his power tiller as a floating power tiller. The patent
Petitioner’s argument that his power tillers were
issued by the Patent Office referred to a "farm
different from private respondent’s is that of a
implement but more particularly to a turtle hand
drowning man clutching at straws.
tractor having a vacuumatic housing float on which
the engine drive is held in place, the operating
Recognizing that the logical fallback position of one handle, the harrow housing with its operating handle
in the place of defendant is to aver that his product is and the paddy wheel protective covering." It appears
different from the patented one, courts have adopted from the foregoing observation of the trial court that
the doctrine of equivalents. these claims of the patent and the features of the
patented utility model were copied by petitioner. We
are compelled to arrive at no other conclusion but
Thus, according to this doctrine, “(a)n infringement that there was infringement.
also occurs when a device appropriates a prior
invention by incorporating its innovative concept Recognizing that the logical fallback position of one
and, albeit with some modification and change, in the place of defendant is to aver that his product is
performs substantially the same function in different from the patented one, courts have adopted
substantially the same way to achieve substantially the doctrine of equivalents which recognizes that
the same result.” In this case, the trial court minor modifications in a patented invention are
observed: But a careful examination between the two sufficient to put the item beyond the scope of literal
power tillers will show that they will operate on the infringement.
same fundamental principles.
Thus, according to this doctrine, "(a)n infringement
also occurs when a device appropriates a prior
We are compelled to arrive at no other conclusion invention by incorporating its innovative concept
but that there was infringement. and, albeit with some modification and change,
performs substantially the same function in
Another ruling: substantially the same way to achieve substantially
the same result." The reason for the doctrine of
equivalents is that to permit the imitation of a
Ruling: Yes. The question of whether petitioner was patented invention which does not copy any literal
manufacturing and selling power tillers is a question detail would be to convert the protection of the
of fact better addressed to the lower courts. The fact patent grant into a hollow and useless thing.
that petitioner herein manufactured and sold power
tillers without patentee's authority has been Such imitation would leave room for — indeed
encourage — the unscrupulous copyist to make considered the U.S. patent as implying that
unimportant and insubstantial changes and Albendazole is different from methyl 5 propylthio-2-
substitutions in the patent which, though adding benzimidazole carbamate, and likewise found that
nothing, would be enough to take the copied matter private respondent was not guilty of deceiving the
outside the claim, and hence outside the reach of the public by misrepresenting that Impregon is its
law. A careful examination between the two power product.
tillers will show that they will operate on the same
fundamental principles. ISSUE/S: Whether private respondent committed
patent infringement to the prejudice of petitioner.

RULING: NO. From a reading of the 9 claims of

Letters Patent No. 14561 in relation to the other
portions thereof, no mention is made of the
compound Albendazole. All that the claims disclose
are: the covered invention, that is, the compound
methyl 5 propylthio-2-benzimidazole carbamate; the
compounds being anthelmintic but nontoxic for
animals or its ability to destroy parasites without
harming the host animals; and the patented methods,
compositions or preparations involving the
compound to maximize its efficacy against certain
kinds of parasites infecting specified animals.

SMITH KLINE BECKMAN VS CA When the language of its claims is clear and distinct,
G. R. No. 126627. August 14, 2003] the patentee is bound thereby and may not claim
anything beyond them. And so are the courts bound
which may not add to or detract from the claims
FACTS: Smith Kline Beckman Corp. (US corporation)
matters not expressed or necessarily implied, nor
filed as assignee, before the Philippine Patent Office
may they enlarge the patent beyond the scope of that
an application for patent over an invention entitled
which the inventor claimed and the patent office
Methods and Compositions for Producing Biphasic
allowed, even if the patentee may have been entitled
Parasiticide Activity Using Methyl 5 Propylthio-2-
to something more than the words it had chosen
Benzimidazole Carbamate.Letters Patent for the
would include. The mere absence of the word
aforesaid invention was issued to petitioner for a
Albendazole in Letters Patent No. 14561 is not
term of 17 years, which provides that the patented
determinative of Albendazoles non-inclusion in the
invention consisted of a new com ound named
claims of the patent. While Albendazole is admittedly
methyl 5 propylthio-2benzimidazole carbamate and
a chemical compound that exists by a name different
the methods or compositions utilizing the compound
from that covered in petitioner’s letters patent, the
as an active ingredient in fighting infections caused
language of Letter Patent No. 14561 fails to yield
by gastrointestinal parasites and lungworms in
anything at all regarding Albendazole. And no
animals such as swine, sheep, cattle, goats, horses,
extrinsic evidence had been adduced to prove that
and even pet animals.
Albendazole inheres in petitioner’s patent in spite of
Tryco Pharma Corp. is a domestic corporation that
its omission therefrom or that the meaning of the
manufactures, distributes and sells veterinary
claims of the patent embraces the same.
products, including Impregon, a drug that has
Albendazole for its active ingredient and is claimed
While petitioner concedes that the mere literal
to be effective against gastrointestinal roundworms,
wordings of its patent cannot establish private
lungworms, tapeworms and fluke infestation in
respondent’s infringement, it urges this Court to
carabaos, cattle and goats.
apply the doctrine of equivalents. The doctrine of
equivalents provides that an infringement also takes
Petitioner sued private respondent for infringement
place when a device appropriates a prior invention
of patent and unfair competition before the Caloocan
by incorporating its innovative concept and, although
City RTC. It claimed that its patent covers or includes
with some modification and change, performs
the substance Albendazole such that private
substantially the same function in substantially the
respondent, by manufacturing, selling, using, and
same way to achieve substantially the same result.
causing to be sold and used the drug Impregon
without its authorization, committed infringement
A scrutiny of petitioner’s evidence fails to convince
and unfair competition under RPC and The
this Court of the substantial sameness of petitioners
Trademark Law for advertising and selling as its own
patented compound and Albendazole. While both
the drug Impregon although the same contained
compounds have the effect of neutralizing parasites
petitioner’s patented Albendazole.
in animals, identity of result does not amount to
infringement of patent unless Albendazole operates
Private respondent averred that petitioner’s letter
in substantially the same way or by substantially the
patent does not cover the substance Albendazole for
same means as the patented compound, even though
nowhere in it does that word appear.
it performs the same function and achieves the same
result. In other words, the principle or mode of
RTC ruled for the Respondent. CA upheld trial court’s
operation must be the same or substantially the
ruling and held that respondent was not liable for
same.
any infringement of the patent of petitioner in light
of the latter’s failure to show that Albendazole is the
The doctrine of equivalents thus requires satisfaction
same as the compound subject of its Letters Patent,
 of the function-means-and-result test, the patentee
having the burden to show that all three components  Check the claims and if there is literal infringement. If
of such equivalency test are met. As stated early on, there is no literal infringement then look at the doctrine
petitioners evidence fails to explain how Albendazole of equivalents because it looks at between the accused
is in every essential detail identical to methyl 5 article, process or procedure and the literal meaning of
propylthio-2-benzimidazole carbamate. the claims.

 There is infringement when an invention appropriates a

prior invention by incorporation of its innovative set
although there are some modification or changes
through performance substantially the same function or
way to achieve substantially the same result this is also
called the function means and results test.

Can a foreing national bring an action for patent

infringement? YES.sec. 77 in relation to sec. 3
(requirements)

SECTION 77. Infringement Action by a Foreign National. - Any

foreign national or juridical entity who meets the requirements of
Section 3 and not engaged in business in the Philippines, to which a
patent has been granted or assigned under this Act, may bring an
action for infringement of patent, whether or not it is licensed to do
business in the Philippines under existing law.

SECTION 3. International Conventions and Reciprocity. - 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
A patent here maybe infringed where the essential or any convention, treaty or agreement relating to intellectual
substantial features of a patented invention are taken or property rights or the repression of unfair competition, to which
appropriated by someone else. In order to infringe a patent, the Philippines is also a party, or extends reciprocal rights to
it must perform the same function or procedure or nationals of the Philippines by law, shall be entitled to benefits to
accomplish the same result by identical or substantial the extent necessary to give effect to any provision of such
identical means and the principal and mode of operation convention, treaty or reciprocal law, in addition to the rights to
must be substantially the same. which any owner of an intellectual property right is otherwise
entitled by this Act.
What are the 2 tests in determining patent infringement?
Basically, when it comes to patent infringement ,foreigners and
with the rule on reciprocity you look at if the country where the
alleged infringer is from is a member country of the paris
1. Literal infringement Test – Resort must be had, in the convention or if their local law also extends the same benefit the
first instance, to words of the claim. If the accused foreigner can file an action for infringement.
matter clearly falls within the claim, infringement is
committed. What are the rules on damages in an action or infringement?

Minor modifications are sufficient to put the item beyond literal

infringement. (Godines v. CA, G.R. No. L‐97343, Sept. 13, 1993) 1. No damages can be recovered for acts of infringement
committed more than four (4) years before the filing of the
2. Doctrine of Equivalents – There is infringement where action for infringement. (Sec. 79, IPC)
a device appropriates a prior invention by incorporating
its innovative concept and, although with some 2. Damages cannot be recovered for acts of infringement
modification and change, performs substantially the committed before the infringer had known, or had
same function in substantially the same way to achieve reasonable grounds to know of the patent. It is presumed
substantially the same result. (Ibid.) that the infringer had known of the patent if on the patented
product, or on the container or package in which the article
 There must be comparison of the claims of the patent is supplied to the public, or on the advertising material
from the accused product with the overall context of the relating to the patented product or process, are placed the
claims to determine whether or not there is an identity words “Philippine Patent” with the number of the patent.
in all the material elements. (sec. 80)

 How do we apply this? When you file for a patent When is the prescriptive period?
registration you must disclose in your application all of
your claims of configuration, the parts, procedures or  The criminal action prescribes in three (3) years from
everything for a 3rd party to be able to meet your the commission
invention.
SCENARIO: B has invented a flying car and was able to
 For example: I applied for a patent and my claims for institute a patent. In creating the invention A has been
the application is for a black, twist, open pen and then I helping B out with the component that helps it fly and
see someone he has an infringing product and I claim eventually A and B got in bad terms so they parted ways and
that infringing product what do I do? then A found another person, C who almost has the same
invention as B but the car is not yet flying. A helped C out
and they were subsequently able to produce the same
invention for a lower pric,e is C liable for patent
infringement? YES. Sec 76.6

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 adopted for infringing the patented invention and not
suitable for substantial non-infringing use shall be liable as a
contributory infringer and shall be jointly and severally liable with
the infringer.

In this case C is the infringer and A is the contributor to the

infringer. The flying car was invented without knowing that
C already have an insisting patent for the same product and
then C instituted an action for patent infringement against A
so he got scared and called-off and pulled-out the product
production is there liability for patent infringement? NO. Sec.
80

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.

What is repetition of infringement ?

SECTION 84. Criminal Action for Repetition of Infringement. -

If infringement is repeated by the infringer or by anyone in
connivance with him after finality of the judgment of the court
against the infringer, the offenders shall, without prejudice to the
institution of a civil action for damages, be criminally liable
therefor and, upon conviction, shall suffer imprisonment for the
period of not less than six (6) months but not more than three (3)
years and/or a fine of not less than One hundred thousand pesos
(P100,000) but not more than Three hundred thousand pesos
(P300,000), at the discretion of the court. The criminal action
herein provided shall prescribe in three (3) years from date of the
commission of the crime.

Can you petition for a cancellation of a patent in an

infringement suit so in the same case?

SECTION 81. Defenses in Action for Infringement. - In an

action for infringement, the defendant, in addition to other
defenses available to him, may show the invalidity of the patent, or
any claim thereof, on any of the grounds on which a petition of
cancellation can be brought under Section 61 hereof.

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

RECAP: Sec. 21 is very important, memorize inventive step,

industrial applicability, elements of patentability.

Next lesson : Licensing