INTELLECTUAL PROPERTY LAW

Difference between Patent, Trademark, and Copyright

	Patent	Trademark	Copyright
Subject matter of the right
Where right is to be registered
Protection starts
Duration of right

	Patent	Trademark	Copyright
Subject matter of the right	New, useful and industrially applicable inventions	Goods manufactured or produced	Literary, scientific or artistic work
Where right is to be registered	IPO	IPO	National Library
Protection starts	Application	Issuance of CoR	Creation
Duration of right	20 years	10 years	Lifetime of the author + 50 years after death of the author

It is a grant issued by the government to an inventor, designer or maker, the right to exclude others from making, using or selling his invention.

Patent

Kinds of Patent

1. Invention Patent

2. Design Patent

3. Utility Model

Requisites for Utility Model

1. Novelty

2. Industrial Applicability

Requisites for Design Patent

1. Novelty

2. Ornamentality

Elements of a Patent

1. Novelty

2. Inventive Step

3. Industrial Applicability

Application Process for Patent

FPF S1S P

1. Filing date requirements

2. Payment of fees

3. Formal examination

4. Search of Prior Art

5. 1st Publication

6. Substantive Examination

7. Publication of Patent

The 1st Publication of the Patent must be done within ________ from filing date

18 months

Publication of patent may be prohibited or restricted (T/F)

True (if it would be prejudicial to the national security and interests)

Contents of Application of Patent

CRADD

1. A request for the grant of a patent;

2. A description of the invention (sufficiently clear and complete for it to be carried out by a person skilled in the art);

3. Drawing necessary for the understanding of the invention;

4. One or more claims (defined the matter for which protection is sought, clear, and concise); and

5. An abstract (concise summary of the disclosure of the invention as contained in the description, claims, and drawings in preferably not more than 150 words)

Grounds for Cancellation of Patent

1. Invention is not new (no novelty)

2. The patent did not disclose the invention in a manner sufficiently clear and complete for it to be carried out by any person skilled in the art

3. Contrary to public order or morality

The heirs and/or assigns of the inventor has the right to a patent (T/F)

True

When 2 or more persons have jointly made an invention, the right to a patent shall belong to the one indicated in the application (T/F)

False (the right to a patent shall belong to them jointly)

If 2 or more persons separately made the same invention, the right to a patent shall belong to them jointly (T/F)

False (priority is given to one who filed first)

Application can be made locally when an earlier application is filed abroad (T/F)

True

Process on Application for Right of Priority/Priority Claim (Patent)

1. A CLAIM of priority based on an earlier filing date abroad

2. A local application is filed within 12 months from priority date (application date of foreign application for patent)

3. Certified copy of priority application and English translation thereof within 6 months from filing date.

If the application for the Patent is still pending, the actual inventor can file an action in court to prove that he is the actual inventor within __________

1 year from first publication

Remedies of the Actual Inventor if the application for the Patent is still pending, and he is declared to be the true inventor.

a. Request that the application be refused

b. File a new application but filing date will retroact to original filing date

If the Patent is already granted, within 1 year from publication of the patent, he can either:

a. Be substituted as patentee; or

b. Seek cancellation of patent

The person who commissions the work shall own the patent (T/F)

True

The person who commissions the literary work shall own the copyright (T/F)

False (copyright belongs to the author/artist)

In case the employee made the invention in the course of his employment contract, the patent shall belong to:

• Employee

• Employer

• Employee, if the inventive activity is not a part of his regular duties even if the employee uses the time, facilities and material of the employer

• 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

A prior user who, in good faith, used or prepared to use the invention before the patent's filing date has the right to continue using it (T/F)

True

A Government agency or third person authorized by the Government may exploit the invention even without agreement of the patent owner where:

1. The public interest, in particular, national security, nutrition, health, or the development of other sectors, as determined by the appropriate agency of the government, so requires; or

2. A judicial or administrative body has determined that the manner of exploitation, by the owner of the patent or his licensee is anti-competitive

Kinds of Patent Infringement:

1. Literal Infringement

2. Doctrine of Equivalents

It is Literal Infringement if:

a. Exactness Rule - the item that is being sold, made or used conforms exactly to the patent claim of another

b. Addition Rule - one makes, uses, or sells an item that has all the elements of the patent claim of another plus other elements

A kind of patent infringement where the invention has some modification and change, but SUBSTANTIALLY THE SAME in:

a. function

b. way/means/principle or mode of operation

c. result

Doctrine of Equivalents

The doctrine of equivalents requires the satisfaction of the _____________

function-means-and-result test

Who has the burden to show that all three component of equivalency test are met in the doctrine of equivalents?

Patentee

Remedies of Patentee

1. Civil action to recover damages

2. Injunction for the protection of rights

3. May order that the infringing goods, materials, and implements predominantly used in the infringement be disposed of outside of commerce or destroyed, without compensation.

4. Criminal Action. Imprisonment of not less than 6 months but not more than 3 years, and/or fine of not less than 100K but not more than 300K. The criminal action shall prescribe in 3 years from date of the commission of the crime.

Damages can be recovered for acts of infringement committed even if the infringer did not know the patent is existed (T/F)

False

Grounds for Compulsory Licensing (Pwedeng gamitin ng 3rd parties, even without approval ng patentee):

1. National emergency/circumstances of extreme urgency

2. Public interest so requires

3. The use of the patent is anti-competitive

4. Public non-commercial use without satisfactory reasons

5. Invention is not being worked in the PH on a commercial scale without satisfactory reasons (importation count as working or using)

6. Demand for patented drugs and medicine is not being met to an adequate extent and/or reasonable terms, as determined by DOH

Process on Priority Claim for Trademark:

1. Filed within 6 months from filing of priority application

2. Certified copy of priority application within 3 months from filing date

3. Failure to file is treated as a waiver of priority claim

Renewal of Trademark

May be renewed for periods of 10 years at its expiration upon payment of the prescribed fee and upon filing a request at any time within 6 months before expiration or within 6 months after such expiration upon payment of an additional fee.

A Declaration of Actual Use (DAU) shall be filed:

1. Within 3 years from filing date of application, extendible for another 6 months; otherwise, it shall be deemed an abandonment of the application; and

2. Another DAU within 1 year from the 5th anniversary of the registration of the mark; otherwise the mark shall be removed from the Register by the Office; and

3. Within 1 year from the date of renewal of the trademark registration

Period where a petition to cancel a registration of a mark may be filed with the Bureau of Legal Affairs by any person who believes that he is or will be damaged by the registration of a mark.

GR: 5 years from the date of the registration of the mark

XPNs:

1. At any time, if the registered owner of the mark without legitimate reason fails to use the mark within the Philippines, or to cause it to be used in the Philippines by virtue of a license during an uninterrupted period of 3 years or longer.

2. At any time, if the registered mark becomes the generic name for the goods or services,

3. Notwithstanding the foregoing provisions, the court or the administrative agency vested with jurisdiction to hear and adjudicate any action to enforce the rights to a registered mark shall likewise exercise jurisdiction to determine whether the registration of said mark may be cancelled in accordance with this Act.

Tests to Determine Trademark Infringement:

1. Holistic or Totality Test - Considers the entirety of the marks in question

2. Dominancy Test - focus is on prevalent or dominant features. Confusing similarity is to be determined not only on the visual but also on the aural and connotative comparisons and overall impressions between the two trademarks.

A registered mark shall have no effect against any person who was using the mark before the filing date (T/F)

True

Trademark Infringement VS Unfair Competition

	Trademark Infringement	Unfair Competition
Registration	Registration of the mark is a pre-requisite	No registration necessary
Intent	No fraudulent intent is required	Fraudulent intent is necessary
Infringement	Likelihood of confusion	Sales is required

There can be trademark infringement without unfair competition (T/F)

True

Derivative works are protected by copyright as a new works (T/F)

True

No Copyright Protection shall be extended to:

1. Any idea

2. Procedure

3. System method or operation

4. Concept

5. Principle

6. Discovery or

7. Mere data as such, even if they are expressed, explained, illustrated or embodied in a work

8. News of the day and other miscellaneous facts having the character of mere items of press information; or

9. Any official text of a legislative, administrative or legal nature, as well as any official translation thereof
   

Who owns the copyright when the published works are done by anonymous authors and/or Pseudonyms?

Publisher

Rights of the owner of the copyright

1. Economic Rights

2. Moral Rights

The owner of the copyright has the exclusive right to carry out, authorize or prevent the following acts: (Economic Rights)

1. Reproduction of the work or substantial portion of the work;

2. Dramatization, translation, adaptation, abridgment, arrangement or other transformation of the work;

3. The first public distribution of the original and each copy of the work by sale or other forms of transfer of ownership;

4. Rental of the original or a copy of an audiovisual or cinematographic work, a work embodied in a sound recording, a computer program, a compilation of data and other materials or a musical work in graphic form, irrespective of the ownership of the original or the copy which is the subject of the rental; (n)

5. Public display of the original or a copy of the work;

6. Public performance of the work; and

7. Other communication to the public of the work.

Moral rights of the owner of the copyright:

1. To require that the authorship of the works be attributed to him, in particular, the right that his name, as far as practicable, be indicated in a prominent way on the copies, and in connection with the public use of his work;

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

3. To object to any distortion, mutilation or other modification of, or other derogatory action in relation to, his work which would be prejudicial to his honor or reputation; and

4. To restrain the use of his name with respect to any work not of his own creation or in a distorted version of his work.

The submission of a literary, photographic or artistic work to a newspaper, magazine or periodical for publication shall constitute a transfer of ownership (T/F)

False (constitute only a license to make a single publication)

If 2 or more persons jointly own a copyright or any part thereof, any of them can grant the licenses (T/F)

False (neither of the owner without the prior written consent of the other owner/s)

Reproduction or distribution of published articles for visually impaired is subject to copyright infringement (T/F)

False

The use of copyrighted work for criticism, comment, news reporting, teaching including limited number of copies for the classroom use, scholarship, researched, and similar purposes is an infringement of copyright (T/F)

False (this describes fair use provisions).

Generally, the private reproduction of a published work in a single copy shall be permitted, without the authorization of the owner of copyright in the work (T/F)

True

Duration of Copyright

General
Joint Authorship
Anonymous or Pseudonymous works
Works of applied art
Photographic works
Audio-visual
Performers and producers of sound recording
Broadcasts

General	During the life of the author and for 50 years after his death.
Joint Authorship	The economic rights shall be protected during the life of the last surviving author and for 50 years after his death.
Anonymous or Pseudonymous works	50 years from the date on which the work was first lawfully published. Provided, that where, before the expiration of the said period, the author’s identity is revealed or is no longer in doubt, the general terms of the protection shall apply. If not published before - 50 years counted from the making of the work
Works of applied art	25 years from the date of making
Photographic works	50 years from publication of the work, and if unpublished 50 years from the making
Audio-visual	50 years from date of publication and, if unpublished, from the date of making
Performers and producers of sound recording	50 years from the end of the year in which the performance took place
Broadcasts	20 years from the date the broadcast took place. The extended term shall be applied only to old works with subsisting protection under the prior law

A single copy of a book is permitted (T/F)

False

(The permission granted for reproduction of a single copy shall not extend to:

a. A work of architecture in form of building or other construction;

b. An entire book, or a substantial past thereof, or of a musical work in which graphics form by reprographic means;

c. A compilation of data and other materials;

d. Any work in cases where reproduction would unreasonably conflict with a normal exploitation of the work or would otherwise unreasonably prejudice the legitimate interests of the author;

e. A compute program

Any library or archive whose activities are not for profit may, without the authorization of the author of copyright owner, make a single copy of the work by reprographic reproduction (T/F)

True

The author may waive his moral rights, but no such waiver shall be valid where its effects is to permit another:

1. To use the name of the author, or the title of his work, or otherwise to make use of his reputation with respect to any version or adaptation of his work which, because of alterations therein, would substantially tend to injure the literary or artistic reputation of another author; or

2. To use the name of the author with respect to a work he did not create.

Terms of Moral Rights

Lifetime of the author and for 50 years after his death, except (1) right of attribution = perpetual

Terms of Protection of the Copyright

General
Joint Authorship
Anonymous or Pseudonymous works
Works of applied art
Photographic works
Audio-visual
Performers and producers of sound recording
Broadcasts

General	During the life of the author and for 50 years after his death.
Joint Authorship	The economic rights shall be protected during the life of the last surviving author and for 50 years after his death.
Anonymous or Pseudonymous works	50 years from the date on which the work was first lawfully published. Provided, that where, before the expiration of the said period, the author’s identity is revealed or is no longer in doubt, the general terms of the protection shall apply. If not published before - 50 years counted from the making of the work
Works of applied art	25 years from the date of making
Photographic works	50 years from publication of the work, and if unpublished 50 years from the making
Audio-visual	50 years from date of publication and, if unpublished, from the date of making
Performers and producers of sound recording	50 years from the end of the year in which the performance took place
Broadcasts	20 years from the date the broadcast took place. The extended term shall be applied only to old works with subsisting protection under the prior law

The term of protection subsequent to the death of the author shall run from the date of his death or of publication, but such terms shall always be deemed to begin on the 1st day of January of the year following the event which gave rise to them (T/F)

True

A company sells coffee beans labeled “Arabica – Grown in Benguet, Philippines.” Another company owns the registered trademark “Benguet Brew” for its coffee products.

The latter company infringed the trademark (T/F)

False (place)

Requisites of the Fair Use of Copyright

1. The private reproduction of a published work is for a single copy only;

2. The reproduction is made by a natural person;

3. The purpose of reproduction is exclusively for research and private study.

Prescriptive period for the cancellation of patent, copyright, and trademark

4 years

Tradename must be registered before it can be infringed (T/F)

False

Trademark must be registered before it can be infringed (T/F)

True