I. INTRODUCTION E.

Intellectual Property Rights

A. What is Intellectual Property? 1. What does it consist of? (Sec 4, IPC)
- An expression of somebody (Expression à what the law protects - if it’s not here, there’s no protection
- “creations of the mind: inventions, literary and artistic works,
symbols, names, images, and designs used in commerce” CoRe-TS-GIP-LU

B. Importance of Intellectual Property Rights Copyright and Original and derivative intellectual creations in the
- entitlements over your creation, invention, literary work against everybody Related Rights literary and artistic domain protected from the moment
else of their creation
- “legal rights which result from intellectual activity in the Trademarks Any visible sign capable of distinguishing the goods
industrial, scientific, literary, and artistic fields” and Service (trademark) or services (service mark) of an enterprise
- NO property rights protected in mere ideas or mental Marks and shall include a stamped or marked container of
conceptions goods.
Geographic Indications which identify a good as originating in the
C-E-S Indications territory of a member of the agreement, or a region or
1. Protection of capability to create and invent locality in that territory, where a given quality,
2. Legal protection to encourage invention reputation, or other characteristic of the good is
3. Promotion of IP to spur economic growth essentially attributable to its geographical origin
Industrial Any composition of lines or colors or any three-
C. History of Intellectual Property Law in the Philippines designs dimensional form, whether or not associated with lines
IPC expressly repealed Patent Law (RA 165), RA 166, Art 118 or colors, provided that such composition or form gives
and 189 of RPC, and PD 49, including PD 285, but the principles a special appearance to and can serve as pattern for
have always been the same an industrial product or handicraft. It must be new or
ornamental.
D. Laws that Govern Intellectual Property Rights in the Philippines (C- Patents Any technical solution of a problem in any field of
C-I-I) human activity which is new, involves an inventive step
and is industrially applicable. It may be, or may relate
IPL - STATUTORY. Only derive rights from law. to, a product, or process, or an improvement of any of
the foregoing.
1. Constitution Layout Synonymous with 'Topography' and means the three-
Designs of dimensional disposition, however expressed, of the
Art XIV, Sec 13 – rationale behind IPC Integrated elements, at least one of which is an active element,
“Section 13. The State shall protect and secure the exclusive Circuits and of some or all of the interconnections of an
rights of scientists, inventors, artists, and other gifted citizens to integrated circuit, or such a three- dimensional
their intellectual property and creations, particularly when disposition prepared for an integrated circuit intended
beneficial to the people, for such period as may be provided by for manufacture.
law.” Protection of Protection of information lawfully held from being
Undisclosed disclosed to, acquired by, or used by others without
2. Civil Code Information their consent in a manner contrary to honest
commercial practices so long as such information:
Art 712 – ownership acquired by occupation and by intellectual (a) is secret in the sense that it is not, as a body or in
creation the precise configuration and assembly of its
Art 721 – By intellectual creation, the ff persons acquire components, generally known among or readily
ownership: accessible to persons within the circles that normally
1. Author deal with the kind of information in question;
2. Composer (b) has commercial value because it is secret; and
3. Painter, sculptor, or other artist (c) has been subject to reasonable steps under the
4. Scientist or technologist circumstances, by the person lawfully in control of the
Art 722 information, to keep it secret.
- Author, composer à shall have ownership even before
publication (Once published – governed by copyright laws)
SUMMARY OF SECTION 4:
- Painter, sculptor, other artists à shall have dominion even
1. Copyright – literary, artistic works
before copyrighted 2. Industrial Property – business (patent, trademark, utility
- Scientist, technologist à ownership even before patented
models)
Art 521 – goodwill of a business is property
2. Differences between copyright, trademarks and patent (see above
3. Intellectual Property Code (RA 8293)
definitions)
- National. NOT enforceable anywhere in the world. Registration Kho vs CA – name and container of a beauty cream product are
also.
proper subjects of a trademark, NOT copyright or patent (defined
- Not really based on nationality (with RECIPROCITY provision)
trademark, copyright, patent)
- IP is STATUTORY. Right depends on GRANT.
Aspects:
1. Nature and extent of rights
Pearl and Dean vs Shoemart – Light boxes not copyrightable, it
- What is the right and who are protected? is subject to a patent (Only with cert of copyright)
- RIGHT
2. Application and registration
- How do you obtain protection?
- APPLICATION PROCESS
4. Enforcement
- What is the remedy against violation of protection?
- REMEDIES (infringement, unfair comp, etc)

4. International Conventions

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F. The Intellectual Property Office (Sec 5-19, IPC, RA 10372) 1. Inventions
RA 8293 – created IPO (Mckinley Hill) Standards / Elements:
a. Novelty
Consists of SEVEN (7) BUREAUS: (PTL-DMAB) b. Inventiveness
c. Industrial Application
1. Bureau of Patents
2. Bureau of Trademarks Subject:
3. Bureau of Legal Affairs a. Product
4. Documentation, Information and Technology Transfer Bureau b. Process
5. Management Information Systems and EDP Bureau c. Improvement
6. Administrative, Financial and Personnel Services Bureau
7. Bureau of Copyright and Other Related Rights (as amended à ALWAYS REMEMBER: Is it patentable and WON it falls
by RA 10372) under list of non-patentable inventions?
- If with novelty, inventiveness, and industrial application but non
Applications: patentable = STILL NO
Patent – BOP
Trademarks – BOT a. Novelty (Sec. 23)
Copyright – National Library / SC Library - An invention shall NOT be considered new if it forms part of a
- only disputes in BOC, not registration prior art

Rules on Jurisdiction: Prior Art (Sec 24)

1. Administrative = Bureau of Legal Affairs a. Everything which has been made available to the
- Infringement public anywhere in the world, before the filing date or
2. Civil = Special courts the priority date of the application claiming the
3. Criminal = Regular courts invention; and
b. The whole contents of an earlier published
Philippine application or application with earlier priority
II. LAW ON PATENTS date of a different inventor.

A. Legislative History - A single use of the product for 1 year takes it away from the
IPC expressly repealed Patent Law (RA 165), RA 166, Art 118 ambit of novelty (old law – 2 yrs)
and 189 of RPC, and PD 49, including PD 285, but the principles
have always been the same Non-Prejudicial Disclosure (Sec 25): (From inventor,
rd
à RA 9502 – Generic meds law patent office (from inventor), 3 person (from
- added provisions on what are not patentable inventor))

B. Definition – (Sec 21) The disclosure of information contained in the

Patent - Any technical solution of a problem in any field of application during the twelve (12) months preceding
human activity which is new, involves an inventive step and is the filing date or the priority date of the application
industrially applicable. It may be, or may relate to, a product, or shall not prejudice the applicant on the ground of lack
process, or an improvement of any of the foregoing. of novelty if such disclosure was made by:

Patent – RIGHT. Exclusive right to exclude others from selling, a. The inventor;
manufacturing, exploiting (only for temp period) b. A patent officer and the information was contained:
- In exchange for disclosure, in return, you get exclusive right (a) in another publication filed by the
inventor and should not have been
C. Purpose disclosed by the office, or
(b) in an application filed, without the
Manzano v CA - The primary purpose of the patent system is not knowledge or consent of the inventor, by a
the reward of the individual but the advancement of the arts and third party who obtained the information
sciences. The function of a patent is to add to the sum of useful directly or indirectly from the inventor; or
knowledge and one of the purposes of the patent system is to c. A third party who obtained the information directly or
encourage dissemination of information concerning discoveries indirectly from the inventor. (IPC, Sec. 25)
and inventions
If the disclosure was made by the designer in the case
Pearl and Dean vs Shoemart – of industrial design, the period is 6 months.
Three-fold purpose of patent law:
1. To foster and reward invention;
2. To promote disclosures of inventions to stimulate further Maguan v CA – Injunction – you have to have the
innovation and to permit the public to practice the invention once RIGHT
the patent expires; and - Patent à Issuance of LETTERS PATENT
3. To ensure that ideas in the public domain remain there for the (determines boundaries)
free use of the public - Patent right – courts can examine it

EI Dupont De Nemours and Co vs Francisco – Purpose: to Vargas v FM Yaptico –

uphold public interest; Balancing of interest of public and the Vargas v Chua –
inventor Frank v Kosuyama – Issue: novelty. Previous case:
not novelty. Now the court can rule on novelty
D. What are patentable? (I-U-I-L)
- Any technical solution of a problem, if no solution, not b. Inventiveness (Sec 26)
patentable, if contrary to public order / morality, not patentable - not known or obvious to the one skilled in that
particular field or art
1. Invention (Sec 21, IPC)
2. Utility Model GR: Sec. 26. Inventive Step. - An invention involves
3. Industrial Design an inventive step if, having regard to prior art, it is not
4. Layout Designs obvious to a person skilled in the art at the time of the
filing date or priority date of the application claiming
the invention.

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 EXP: In the case of drugs and medicines, there is no ELEMENTS TERM OF PROTECTION
inventive step if: INVENTION -New Twenty (20) years from the
1. The invention results from the mere - Inventive Step date of filing with payment of
discovery of a new form or new property of -Industrial annuities. No renewal (IPC,
a known substance which does not result in Applicability Sec. 54).
the enhancement of the known efficacy of UTILITY -New Seven (7) years from the date
that substance MODEL -Industrial of filing without renewal (Sec.
2. Mere discovery of any new property or Applicability 109.3).
new use for a known substance INDUSTRIAL - New Five (5) years from the date
3. Mere use of a known process (unless DESIGN - Ornamental of filing with 2 five year term
such known process results in a new renewals upon payment of
product that employs at least one new fees (Sec 118.2)
reactant)

Aguas v De Leon – E. What are not patentable? (Sec 22)

Manzano v CA – brochures (gas burner) undated. Sec. 22. Non-Patentable Inventions. - The following shall be
Cannot prove that it is not new. Does not establish excluded from patent protection: (DMS-PAC)
prior use
22.1. Discoveries, scientific theories and mathematical methods;
c. Industrial Application (Sec 27) 22.2. Schemes, rules and methods of performing mental acts,
- An invention that can be produced and used in any industry playing games or doing business, and programs for computers;
meets the industrial application requirement of patent 22.3 Methods for treatment of the human or animal body by
registrability. This means an invention is not merely theoretical, surgery or therapy and diagnostic methods practiced on the
but also has a practical purpose. If the invention is a product, it human or animal body. This provision shall not apply to products
should be able to produce a product and if the invention is a and composition for use in any of these methods;
process, it should be able to lay out a process 22.4. Plant varieties or animal breeds or essentially biological
process for the production of plants or animals. This provision
à If all 3 are present, it is patentable as long as not under non- shall not apply to micro-organisms and non-biological and
patentable! microbiological processes.
Provisions under this subsection shall not preclude
Congress to consider the enactment of a law providing
2. Utility Model (Sec 109.1) sui generis protection of plant varieties and animal
Sec. 109. Special Provisions Relating to Utility Models. - breeds and a system of community intellectual rights
109.1 (a) An invention qualifies for registration as a utility model protection:
if it is new and industrially applicable. 22.5. Aesthetic creations; and
22.6. Anything which is contrary to public order or morality.
Elements:
1. New à Laws of nature, scientific, abstract = not patentable
2. Industrially applicable / Useful à If not in enumeration, it should not be limited.
à No inventiveness (difference with patentable inventions) Essence of invention = go beyond what is there
3. Industrial Designs (Sec 112, par 1) à Plant Variety Protection Act
Sec. 112. Definition of Terms: - not protected by patent, but there is this thing called
1. An Industrial Design is any composition of lines or colors or Certificate of Plant Variety Protection for plant readers
any three-dimensional form, whether or not associated with lines - Establishes and protects a right
or colors: Provided, That such composition or form gives a - similar rights and actions (patentable)
special appearance to and can serve as pattern for an industrial
product or handicraft; F. OWNERSHIP OF PATENT (Sec 28)
- Sketches Sec. 28. Right to a Patent. - The right to a patent belongs to the
inventor, his heirs, or assigns.
Elements: When two (2) or more persons have jointly made an invention,
1. New the right to a patent shall belong to them jointly.
2. Ornamental
à Also no inventiveness 1. Inventor
4. Lay-Out Designs (Sec 112, par 3) 2. Heirs
3. Layout-Design is synonymous with 'Topography' and means 3. Assigns
the three-dimensional disposition, however expressed, of the
elements, at least one of which is an active element, and of Rules:
some or all of the interconnections of an integrated circuit, or 1. If jointly made by 2 or more persons, the right to the patent
such a three-dimensional disposition prepared for an integrated belongs to them jointly.
circuit intended for manufacture. 2. If made separately and independently by 2 or more persons,
the right belongs to the person who filed an application, or who
- Draw and Register filed an application at the earliest priority date.
3. If a person commissions the work, he owns the patent (unless
Requirement: otherwise provided in the contract)
1. Original 4. If employee made the invention in the course of his
2. Procedure to follow employment contract:
A. EMPLOYEE - If the inventive activity is not part of
à Utility model, Industrial designs, and lay-out designs have protections his regular duties (even if he used the resources of
as well, but just as same as patents employer)
B. EMPLOYER - If invention is the result of the
performance of his regular duties (unless contrary
agreement)

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 If persons filed a patent application but has no right over the Several independent inventions, which do not form a single
patent, the person (not the applicant) may, within 3 months after general inventive concept? (Sec 38)
the decision became final: (Sec 67)
1. Prosecute the application as his own application in place with - NO Single application (divide out to another application the
the applicant inventions that do not belong to the single general inventive
2. File a new patent application concept)
3. Request that the application be refused - Considered filed on the same day as the first application -
4. Seek cancellation of the patent (if one has already been Should be filed within 4 months after requirement to divide
issued) becomes final

Remedy of the True and Actual Inventor: (deprived without his 3. Priority Date (Sec 31)
consent or through fraud: (Sec 68): - Considered as filed as of the date of filing of the foreign
à File a case in court for a court declaration (you cannot just application
claim) - “An application for patent filed by any person who has
previously applied for the same invention in another country
Time to file action in court: 1 year from the date of publication which by treaty, convention, or law affords similar privileges to
Filipino citizens, shall be considered as filed as of the date of
filing the foreign application.”
G. Regular Application for Patent
1. Who may apply? - Requirements:
1. Inventor 1. Application by any person who has previously applied for the
2. His heirs same invention in another country (that gives same rights to
3. His assigns Filipinos, or co-party in a treaty or convention)
4. Foreigners from countries who grant Filipinos to apply patent 2. The local application expressly claims priority.
in their country 3. Filed within 12 months from the date the earliest foreign
5. Foreigners who are party to any convention, treaty or application was filed
agreement (relating to IPR) to which PH is also a party 4. A certified copy of the foreign application together with an
English translation, filed within 6 months from the date of filing in
*Note: If foreign applicant, he should assign a Filipino agent. the PH

Boothe v Director of Patents – Why does it need to be

Steps in the registration of a patent complete? (PRIORITY DATE – must complete requirements)
The procedure for the grant of patent may be summarized as 1. Apprise public
follows: 2. Inform courts
3. Convey to competing manufacturers / dealers
FAF-CPS-GPI
“The purpose of requiring a definite and accurate description of
1. Filing of the application the process is to apprise the public of what the patentee claims
2. Accordance of the filing date as his invention, to inform the Courts as to what they are called
3. Formality examination upon to construe, and to convey to competing manufacturers
4. Classification and Search and dealers information of exactly what they are bound to avoid.”
5. Publication of application
6. Substantive examination 4. Filing Date (Sec 40-41)
7. Grant of Patent - Not the date of receipt, but the date when the
8. Publication upon grant elements/requirements have been completely submitted
9. Issuance of certificate - If everything is complete upon filing, then date of receipt = filing
date
- If did not submit within time limit = withdrawn
2. Application
Sec. 40. Filing Date Requirements. -
Requirements for Patent Application: (Sec 32-37) 40.1. The filing date of a patent application shall be the date of
RD-DCA receipt by the Office of at least the following elements:
(a) An express or implicit indication that a Philippine patent is
1. Request for Grant – form sought;
2. Description – clear and concise (b) Information identifying the applicant; and
3. Drawings – not necessary, depends on invention (c) Description of the invention and one (1) or more claims in
4. Claims – most important Filipino or English.
- what defines your rights 40.2. If any of these elements is not submitted within the period
- points out boundaries of invention set by the Regulations, the application shall be considered
- Anything outside claims will not be protected withdrawn. (n)
- Clear and concise supported by description
5. Abstract – concise summary (150 words) Sec. 41. According a Filing Date. - The Office shall examine
whether the patent application satisfies the requirements for the
Sec. 32. The Application. - grant of date of filing as provided in Section 40 hereof. If the date
32.1. The patent application shall be in Filipino or English and of filing cannot be accorded, the applicant shall be given an
shall contain the following: opportunity to correct the deficiencies in accordance with the
(a) A request for the grant of a patent; implementing Regulations. If the application does not contain all
(b) A description of the invention; the elements indicated in Section 40, the filing date should be
(c) Drawings necessary for the understanding of the invention; that date when all the elements are received. If the deficiencies
(d) One or more claims; and are not remedied within the prescribed time limit, the application
(e) An abstract. shall be considered withdrawn.
32.2. No patent may be granted unless the application identifies
the inventor. If the applicant is not the inventor, the Office may - Filing Date is accorded only when all the requirements
require him to submit said authority. provided under Section 40 are present.

5. Formality Examination (Sec 42)

- If all has been passed and if payments have been made

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 Sec. 42. Formality Examination. - published application and within four (4) years from the
42.1. After the patent application has been accorded a filing date commission of the acts complained of.
and the required fees have been paid on time in accordance with
the Regulations, the applicant shall comply with the formal 10. Observation by Third Parties (Sec 47)
requirements specified by Section 32 and the Regulations within - Any person, after publication, may present observations
the prescribed period, otherwise the application shall be concerning the patentability of the invention
considered withdrawn. - Office to acknowledge such observations and put them in the
42.2. The Regulations shall determine the procedure for the re- file of application
examination and revival of an application as well as the appeal
to the Director of Patents from any final action by the examiner. Sec. 47. Observation by Third Parties. - Following the
publication of the patent application, any person may present
6. Classification and Search (Sec 43) observations in writing concerning the patentability of the
- Classify what your invention is, and a search is conducted to invention. Such observations shall be communicated to the
determine the prior art applicant who may comment on them. The Office shall
acknowledge and put such observations and comment in the file
Sec. 43. Classification and Search. - An application that has of the application to which it relates.
complied with the formal requirement shall be classified and a
search conducted to determine the prior art. 11. Request for Substantive Examination (Sec 48)
- There should be a WRITTEN application, within 6 months from
7. Confidentiality Before Publication (Sec 45) the date of publication
- If not yet published, no inspection without consent of applicant - Determination if the application meets all the requirements and
- But after publication, any one can inspect it the fees have been paid on time
- If none, application = withdrawn
Sec. 45. Confidentiality Before Publication. - A patent - See if complies with patentability
application, which has not yet been published, and all related
documents, shall not be made available for inspection without Sec. 48. Request for Substantive Examination. -
the consent of the applicant. 48.1. The application shall be deemed withdrawn unless within
six (6) months from the date of publication under Section 41, a
EI Dupont vs Francisco - - Should be confidentiality BEFORE written request to determine whether a patent application meets
publication the requirements of Sections 21 to 27 and Sections 32 to 39 and
the fees have been paid on time.
- A patent holder has the right to "to restrain, prohibit 48.2. Withdrawal of the request for examination shall be
and prevent" any unauthorized person or entity from irrevocable and shall not authorize the refund of any fee.
manufacturing, selling, or importing any product
derived from the patent. However, after a patent is Schuartz v CA – You should comply within the required period of
granted and published in the Intellectual Property time of the application process
Office Gazette, any interested third party "may inspect
the complete description, claims, and drawings of the 12. Amendment (Sec 49)
patent.” - May amend the application during examination
- Limitation: Not include new matter outside the scope of the
8. Publication of Patent Application (Sec 44) disclosure contained in the application as filed
- After 18 months (in IPO Gazette)
SEC. 49. Amendment of Application. - An applicant may amend
Sec. 44. Publication of Patent Application. - the patent application during examination: Provided, That such
44.1. The patent application shall be published in the IPO amendment shall not include new matter outside the scope of
Gazette together with a search document established by or on the disclosure contained in the application as filed.
behalf of the Office citing any documents that reflect prior art,
after the expiration of eighteen (18) months from the filing date 13. Conversion (Sec 110-111)
or priority date. - Any time before the grant or refusal of the application, and
44.2. After publication of a patent application, any interested upon payment of the prescribed fee
party may inspect the application documents filed with the - Patent to Utility Model
Office. - Utility Model to Patent
44.3. The Director General, subject to the approval of the - Filing date: Initial application
Secretary of Trade and Industry, may prohibit or restrict the - No two applications for the same subject, one for utility and one
publication of an application, if in his opinion, to do so would be for patent
prejudicial to the national security and interests of the Republic (Ex: If no inventiveness – can convert to utility model)
of the Philippines
Sec. 110. Conversion of Patent Applications or Applications for
9. Rights Conferred by a Patent Application After Publication (Sec 46) Utility Model Registration. -
- Rights of a patentee as if the patent has been given 110.1. At any time before the grant or refusal of a patent, an
applicant for a patent may, upon payment of the prescribed fee,
- Limitation: CAUSE OF ACTION convert his application into an application for registration of a
- You cannot sue yet until after the patent has been granted and utility model, which shall be accorded the filing date of the initial
within 4 years from the commission of the acts complained of application. An application may be converted only once.
110.2. At any time before the grant or refusal of a utility model
Sec. 46. Rights Conferred by a Patent Application After registration, an applicant for a utility model registration may,
Publication. - The applicant shall have all the rights of a patentee upon payment of the prescribed fee, convert his application into
under Section 76 against any person who, without his a patent application, which shall be accorded the filing date of
authorization, exercised any of the rights conferred under the initial application. (Sec. 58, R. A. No. 165a)
Section 71 of this Act in relation to the invention claimed in the
published patent application, as if a patent had been granted for Sec. 111. Prohibition against Filing of Parallel Applications. - An
that invention: Provided, That the said person had: applicant may not file two (2)_ applications for the same subject,
46.1. Actual knowledge that the invention that he was using was one for utility model registration and the other for the grant of a
the subject matter of a published application; or patent whether simultaneously or consecutively.
46.2. Received written notice that the invention that he was
using was the subject matter of a published application being
identified in the said notice by its serial number: Provided, That
the action may not be filed until after the grant of a patent on the

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SUMMARY OF PROCESS (AAF-CPOR) L. Annual Fees
1. Application - After 4 years from publication, then every anniversary (within 3
2. According filing date months from due date)
3. Formality Exam - If not paid = withdrawn
4. Classification and Search - Grace period = 6 months
5. Publication
6. Observations Sec. 55. Annual Fees. -
7. Request for substantive exam 55.1. To maintain the patent application or patent, an annual fee
shall be paid upon the expiration of four (4) years from the date
H. Philippine Rules on PCT Applications the application was published pursuant to Section 44 hereof, and
I. Issuance or Refusal of Patents on each subsequent anniversary of such date. Payment may be
made within three (3) months before the due date. The
GRANTED (Sec 50) obligation to pay the annual fees shall terminate should the
- All requirements application be withdrawn, refused, or cancelled.
- Fees paid on time 55.2. If the annual fee is not paid, the patent application shall be
deemed withdrawn or the patent considered as lapsed from the
à GRANT: LETTERS PATENT day following the expiration of the period within which the annual
fees were due. A notice that the application is deemed
WITHDRAWN withdrawn or the lapse of a patent for non-payment of any
- All requirements annual fee shall be published in the IPO Gazette and the lapse
- Fees NOT paid on time (grant and printing) shall be recorded in the Register of the Office.
55.3. A grace period of six (6) months shall be granted for the
Final order of refusal by examiner (Sec 51) payment of the annual fee, upon payment of the prescribed
- appelable to the Director surcharge for delayed payment.

Note: Patent shall be issued in the name of the Republic of the M. Surrender, Correction and Amendment
Philippines under the seal of the Office, signed by the Director
(Sec 53) Surrender – there should be consent from the people with
vested rights already (ex: person you allowed to produce your
work)
Sec. 50. Grant of Patent. - - Ceased from the day when notice of acceptance of surrender
50.1. If the application meets the requirements of this Act, the was published in the IPO Gazette
Office shall grant the patent: Provided, That all the fees are paid
on time. Correction and Amendment
50.2. If the required fees for grant and printing are not paid in If mistake in OFFICE:
due time, the application shall be deemed to be withdrawn. - Director will correct
50.3. A patent shall take effect on the date of the publication of - Without fee
the grant of the patent in the IPO Gazette. (Sec. 18, R. A. No.
165a) If mistake in APPLICATION:
- Director will correct
Sec. 51. Refusal of the Application. - - Upon request and payment
51.1. The final order of refusal of the examiner to grant the
patent shall be appealable to the Director in accordance with this Sec. 56. Surrender of Patent. -
Act. 56.1. The owner of the patent, with the consent of all persons
51.2. The Regulations shall provide for the procedure by which having grants or licenses or other right, title or interest in and to
an appeal from the order of refusal from the Director shall be the patent and the invention covered thereby, which have been
undertaken. recorded in the Office, may surrender his patent or any claim or
claims forming part thereof to the Office for cancellation.
Sec. 53. Contents of Patent. - The patent shall be issued in the 56.2 A person may give notice to the Office of his opposition to
name of the Republic of the Philippines under the seal of the the surrender of a patent under this section, and if he does so,
Office and shall be signed by the Director, and registered the Bureau shall notify the proprietor of the patent and determine
together with the description, claims, and drawings, if any, in the question.
books and records of the Office. 56.3. If the Office is satisfied that the patent may properly be
surrendered, he may accept the offer and, as from the day when
J. Publication Upon Grant of Patents notice of his acceptance is published in the IPO Gazette, the
- In the IPO Gazette within the prescribed period by the patent shall cease to have effect, but no action for infringement
regulations shall lie and no right compensation shall accrue for any use of
the patented invention before that day for the services of the
Sec. 52. Publication Upon Grant of Patent. - government. (Sec. 24, R. A. No. 165a)
52.1. The grant of the patent together with other related
information shall be published in the IPO Gazette within the time Sec. 57. Correction of Mistakes of the Office. - The Director shall
prescribed by the Regulations. have the power to correct, without fee, any mistake in a patent
52.2. Any interested party may inspect the complete description, incurred through the fault of the Office when clearly disclosed in
claims, and drawings of the patent on file with the Office. the records thereof, to make the patent conform to the
records. (Sec. 25, R. A. No. 165)
K. Term of Patent Sec. 58. Correction of Mistake in the Application. - On request of
any interested person and payment of the prescribed fee, the
TERM OF PROTECTION Director is authorized to correct any mistake in a patent of a
INVENTION Twenty (20) years from the date of filing with payment formal and clerical nature, not incurred through the fault of the
of annuities. No renewal (IPC, Sec. 54). Office. (Sec. 26, R. A. No. 165a)
UTILITY Seven (7) years from the date of filing without renewal
MODEL (Sec. 109.3). Sec. 59. Changes in Patents. -
INDUSTRIAL Five (5) years from the date of filing with 2 five year 59.1. The owner of a patent shall have the right to request the
DESIGN term renewals upon payment of fees (Sec 118.2) Bureau to make the changes in the patent in order to:
LAY-OUT Ten (10) years, without renewal, and such validity to (a) Limit the extent of the protection conferred by it;
DESIGN be counted from the date of commencement of the (b) Correct obvious mistakes or to correct clerical errors; and
protection accorded to the layout-design (Sec 118.5) (c) Correct mistakes or errors, other than those referred to in
letter (b), made in good faith: Provided, That where the change

CARLOS | IPL 6
 would result in a broadening of the extent of protection conferred Affairs may order that the petition be heard and decided by a
by the patent, no request may be made after the expiration of committee composed of the Director of Legal Affairs as
two (2) years from the grant of a patent and the change shall not chairman and two (2) members who have the experience or
affect the rights of any third party which has relied on the patent, expertise in the field of technology to which the patent sought to
as published. be cancelled relates. The decision of the committee shall be
59.2. No change in the patent shall be permitted under this appealable to the Director General. (n)
section, where the change would result in the disclosure
contained in the patent going beyond the disclosure contained in Sec. 65. Cancellation of the Patent. -
the application filed. 65.1. If the Committee finds that a case for cancellation has
59.3. If, and to the extent to which the Office changes the patent been proved, it shall order the patent or any specified claim or
according to this section, it shall publish the same. (n) claims thereof cancelled.
65.2. If the Committee finds that, taking into consideration the
Sec. 60. Form and Publication of Amendment. - An amendment amendment made by the patentee during the cancellation
or correction of a patent shall be accomplished by a certificate of proceedings, the patent and the invention to which it relates
such amendment or correction, authenticated by the seal of the meet the requirement of this Act, it may decide to maintain the
Office and signed by the Director, which certificate shall be patent as amended: Provided, That the fee for printing of a new
attached to the patent. Notice of such amendment or correction patent is paid within the time limit prescribed in the Regulations.
shall be published in the IPO Gazette and copies of the patent 65.3. If the fee for the printing of a new patent is not paid in due
kept or furnished by the Office shall include a copy of the time, the patent should be revoked.
certificate of amendment or correction. 65.4. If the patent is amended under Subsection 65.2 hereof, the
Bureau shall, at the same time as it publishes the mention of the
N. Cancellation cancellation decision, publish the abstract, representative claims
Cancellation and drawings indicating clearly what the amendments consist
1. Petition – direct attack of. (n)
2. Infringement – use it as a defense, then pray for
cancellation (you are sued) Sec. 66. Effect of Cancellation of Patent or Claim. - The rights
- collateral attack conferred by the patent or any specified claim or claims
cancelled shall terminate. Notice of the cancellation shall be
1. Grounds (Sec 61) published in the IPO Gazette. Unless restrained by the Director
1. Invention is not new or patentable General, the decision or order to cancel by Director of Legal
2. Non-disclosure in a manner sufficiently clear and complete for Affairs shall be immediately executory even pending appeal.
it to be carried out by any person skilled in the art
3. Contrary to public order or morality O. Rights of Patentee (Sec 71)
1. Section 71
Sec. 61. Cancellation of Patents. -
61.1. Any interested person may, upon payment of the required Exclusive Rights:
fee, petition to cancel the patent or any claim thereof, or parts of 1. Product – , to restrain, prohibit and prevent any unauthorized
the claim, on any of the following grounds: person or entity from making, using, offering for sale, selling or
(a) That what is claimed as the invention is not new or importing that product
patentable;
(b) That the patent does not disclose the invention in a manner 2. Process - to restrain, prevent or prohibit any unauthorized
sufficiently clear and complete for it to be carried out by any person or entity from using the process, and from manufacturing,
person skilled in the art; or dealing in, using, selling or offering for sale, or importing any
(c) That the patent is contrary to public order or morality. product obtained directly or indirectly from such process.
61.2. Where the grounds for cancellation relate to some of the
claims or parts of the claim, cancellation may be effected to such 3. Succession – assign, or transfer by succession the patent,
extent only. and to conclude licensing and contracts for the same

Sec. 82. Patent Found Invalid May be Cancelled. - In an action Note: Rights of a patentee are not really a right to use it, but a
for infringement, if the court shall find the patent or any claim to right to exclude others from exploiting your invention (monopoly)
be invalid, it shall cancel the same, and the Director of Legal
Affairs upon receipt of the final judgment of cancellation by the Sec. 71. Rights Conferred by Patent. -
court, shall record that fact in the register of the Office and shall 71.1. A patent shall confer on its owner the following exclusive
publish a notice to that effect in the IPO Gazette. rights:
(a) Where the subject matter of a patent is a product, to restrain,
2. Proceedings (Sec 62-66) prohibit and prevent any unauthorized person or entity from
Sec. 62. Requirement of the Petition. - The petition for making, using, offering for sale, selling or importing that product;
cancellation shall be in writing, verified by the petitioner or by (b) Where the subject matter of a patent is a process, to restrain,
any person in his behalf who knows the facts, specify the prevent or prohibit any unauthorized person or entity from using
grounds upon which it is based, include a statement of the facts the process, and from manufacturing, dealing in, using, selling or
to be relied upon, and filed with the Office. Copies of printed offering for sale, or importing any product obtained directly or
publications or of patents of other countries, and other indirectly from such process.
supporting documents mentioned in the petition shall be 71.2. Patent owners shall also have the right to assign, or
attached thereto, together with the translation thereof in English, transfer by succession the patent, and to conclude licensing
if not in English language. (Sec. 30, R. A. No. 165) contracts for the same.

Sec. 63. Notice of Hearing. - Upon filing of a petition for Parke Davis v Doctor’s Pharmaceuticals - Right to exclude
cancellation, the Director of Legal Affairs shall forthwith serve others has limitations/conditions.
notice of the filing thereof upon the patentee and all persons - Allowing others to manufacture, use or sell
having grants or licenses, or any other right, title or interest in - Doesn’t mean that you are not compensated: ROYALTY
and to the patent and the invention covered thereby, as appears
of record in the Office, and of notice of the date of hearing
thereon on such persons and the petitioner. Notice of the filing of
the petition shall be published in the IPO Gazette. (Sec. 31, R.
A. No. 165a)

Sec. 64. Committee of Three. - In cases involving highly

technical issues, on motion of any party, the Director of Legal

CARLOS | IPL 7
Limitations on the Rights of a Patentee: (Sec 72-74) 73.2. The right of the prior user may only be transferred or
1. If put in the market assigned together with his enterprise or business, or with that
2. Non-commercial use part of his enterprise or business in which the use or
3. Experimenal use preparations for use have been made. (Sec. 40, R. A. No. 165a)
4. Testing, using, etc. of drugs and medicines
5. Prior user Sec. 74. Use of Invention by Government. -
6. Public interest 74.1. A Government agency or third person authorized by the
7. Anti-competitive Government may exploit the invention even without agreement
of the patent owner where:
Sec 73 – Prior user – can also be transferred by only together (a) the public interest, in particular, national security, nutrition,
with BUSINESS. Good faith use (authorization) health or the development of other sectors, as determined by the
Sec 74 – use by Government appropriate agency of the government, so requires; or
(b) A judicial or administrative body has determined that the
Section 72 of Republic Act No. 8293, otherwise known as the manner of exploitation, by the owner of the patent or his
Intellectual Property Code of the Philippines, is hereby amended licensee, is anti-competitive.
to read as follows: 74.2. The use by the Government, or third person authorized by
the Government shall be subject, mutatis mutandis, to the
“SEC. 72. Limitations of Patent Rights. – The owner of a patent conditions set forth in Sections 95 to 97 and 100 to 102.
has no right to prevent third parties from performing, without his
authorization, the acts referred to in Section 71 hereof in the
following circumstances: Philippine Competition Commission
- determines if anti-competitive (manner of exploitation)
“72.1. Using a patented product which has been put on the - to avoid monopoly
market in the Philippines by the owner of the product, or with his
express consent, insofar as such use is performed after that The Issue of Parallel Importation
product has been so put on the said market: Provided, That, with - Issue when you import something that is not counterfeited and
regard to drugs and medicines, the limitation on patent rights is a licensee abroad, and there is a licensee in the same country
shall apply after a drug or medicine has been introduced in the - buy from another country, import it here
Philippines or anywhere else in the world by the patent owner, or
by any party authorized to use the invention: Provided, further, Domestic Exhaustion
That the right to import the drugs and medicines contemplated in - If already put in the market, you cannot prevent it
this section shall be available to any government agency or any - “I own product now after I buy it, so I can sell it”
private third party;
International Exhaustion
“72.2. Where the act is done privately and on a non-commercial - If already introduced anywhere in the world, it limits the rights
scale or for a non-commercial purpose: Provided, That it does of the patentee here
not significantly prejudice the economic interests of the owner of - Not yet resolved, no law yet
the patent; - specific to medicines (public interest)

“72.3. Where the act consists of making or using exclusively for 2. Action for infringement (Literal and Equivalent)
experimental use of the invention for scientific purposes or BURDEN: he who alleges
educational purposes and such other activities directly related to - if you open, patent is now open to scrutiny
such scientific or educational experimental use; - However, patent enjoys presumption of validity, also
presumption of regularity of official duties
“72.4. In the case of drugs and medicines, where the act - Burden of proof now shifts
includes testing, using, making or selling the invention including
any data related thereto, solely for purposes reasonably related INFRINGEMENT:
to the development and submission of information and issuance 1. Literal – CLAIMS – sets parameters of invention
of approvals by government regulatory agencies required under - Sec 32 – of all of these, claims determine what is
any law of the Philippines or of another country that regulates protected by patent
the manufacture, construction, use or sale of any product:
Provided, That, in order to protect the data submitted by the 2. Equivalent – not literal, with changes / differences
original patent holder from unfair commercial use provided in
Article 39.3 of the Agreement on Trade-Related Aspects of Vargas v. F.M. Yaptico (1919)
Intellectual Property Rights (TRIPS Agreement), the Intellectual [Adjustable Plow]
Property Office, in consultation with the appropriate government - The burden of proof to substantiate a charge of infringement is
agencies, shall issue the appropriate rules and regulations with the plaintiff.
necessary therein not later than one hundred twenty (120) days - Where, however, the plaintiff introduces the patent in evidence,
after the enactment of this law; if it is in due form, it affords a prima facie presumption of its
correctness and validity.
“72.5. Where the act consists of the preparation for individual The decision of the Commissioner of Patents in granting the
cases, in a pharmacy or by a medical professional, of a medicine patent is always presumed to be correct. The burden then shifts
in accordance with a medical shall apply after a drug or medicine to the defendant to overcome by competent evidence this legal
has been introduced in the Philippines or anywhere else in the presumption.
world by the patent owner, or by any party authorized to use the
invention: Provided, further, That the right to import the drugs Frank v. Benito (1928)
and medicines contemplated in this section shall be available to [Hemp String Machine w/ Spindle]
any government agency or any private third party; - In a case of duly registered patent and which was introduced in
evidence by the plaintiff and is in due form, the patent is prima
Sec. 73. Prior User. - facie evidence of its correctness and validity, and the burden
73.1. Notwithstanding Section 72 hereof, any prior user, who, in then shifts to the defendant to overcome this legal presumption.
good faith was using the invention or has undertaken serious - An improver cannot appropriate the basic patent of another,
preparations to use the invention in his enterprise or business, and that the improver without license is an infringer and may be
before the filing date or priority date of the application on which a sued as such.
patent is granted, shall have the right to continue the use thereof
as envisaged in such preparations within the territory where the à did not raise the issue on validity on the ground of prior art
patent produces its effect.

CARLOS | IPL 8
 Frank v. Kosuyama (1933) names of things, but in the light of what elements do, and
[Hemp String Machine w/ Spindle] substantial, rather than technical, identity in the test.
The defendant cannot be made civilly liable for alleged
infringement of the patent on which the action is based on the Del Rosario v. CA (1996)
ground that the machines manufactured and sold by him did not [Karaoke Machine]
have any essential part unknown to the public in the Province of
Davao at the time the plaintiffs applied for and obtained their In order to infringe a patent, a machine or device must perform
patent for improved abaca stripping machines. the same function, or accomplish the same result by identical or
substantially identical means and the principle or mode of
à raised the issue on validity on the ground of prior art operation must be substantially the same.

G. Sell v. Yap Jue (1919) Smith Kline v. CA (2003)

[Process for the manufacture of curved handles for canes, [“Methods and Compositions for Producing Biphasic Parasiticide
parasols, and umbrellas] Activity Using Methyl 5 Propylthio-2-Benzimidazole Carbamate.]
The manufacture of cane handles for walking sticks and
umbrellas by a process identical with plaintiff's patented process The doctrine of equivalents provides that an infringement also
therefor, save only for the substitution of a blast lamp or takes place when a device appropriates a prior invention by
blowpipe fed by alcohol, for a blast lamp or blowpipe fed by incorporating its innovative concept and, although with some
petroleum or mineral fuel, in applying heat for the purpose of modification and change, performs substantially the same
curving such handles, is an infringement upon the patented function in substantially the same way to achieve substantially
process. the same result. It thus requires satisfaction of the function-
means-and-result test, the patentee having the burden to show
Mere formal alterations in a combination in letters patent are no that all three components of such equivalency test are met.
defense to the charge of infringement and the withdrawal of one
ingredient from the same and the substitution of another which A scrutiny of petitioner’s evidence fails to convince this Court of
was well known at the date of the patent as a proper substitute the substantial sameness of petitioner’s patented compound and
for the one withdrawn is a mere formal alteration of the Albendazole. While both compounds have the effect of
combination if the ingredient substituted performs substantially neutralizing parasites in animals, identity of result does not
the same function as the one withdrawn. amount to infringement of patent unless Albendazole operates in
substantially the same way or by substantially the same means
à still produces the same result as the patented compound, even though it performs the same
- application of heat – oil – BASIC PRINCIPLE PRESENT function and achieves the same result.

à Point of EQUIVALENT: No one will actually infringe Besides, Albendazole is not in the claims. Even if we have the
LITERALLY. This is the point of doctrine of equivalents doctrine of equivalents, one cannot expand it to something not
there.
Maguan v. CA (1986)
[Powder Puff] à Function-means-and-result test – patentee has the burden to
prove/show that all 3 components of such equivalency test are
The burden of proof to substantiate a charge of patent met
infringement lies with the plaintiff. Once the patent is in
evidence, the burden of evidence is upon the defendant to Phil Pharmawealth, Inc. vs. Pfizer, Inc. and Pfizer (Phil.), Inc.
overcome this presumption. (2010)
[Sulbactam Ampicillin]
In actions for patent infringement a writ of injunction will not
issue unless the validity of the patent in relation to the issue of The exclusive right of a patentee to make, use and sell a
novelty and originality of the alleged invention, is clear and patented product, article or process exists only during the term
beyond question. If a fair case of invalidity, after preliminary of the patent.
hearing is presented, injunction must not issue.
à Action for infringement exists only if you have a right

Godines v. CA (1993) Rules of Procedure for Intellectual Property Rights Cases

[Power Tiller] a. Civil Action for Infringement (Sec 75-76)
Tests have been established to determine infringement. These b. Criminal Action for Repetition of Infringement
are c. Administrative
Literal Infringement Doctrine of Equivalents
Resort must be had, in the first Recognizes that minor Who can you sue?
instance, to the words of the modifications in a patented 1. Person who infringed
claim. If accused matter clearly invention are sufficient to put 2. Contributor – actively induces to infringe
falls within the claim, the item beyond the scope of
infringement is made out and literal infringement. 76.6. Anyone who actively induces the infringement of a patent
that is the end of it. or provides the infringer with a component of a patented product
To determine whether the Occurs when a device or of a product produced because of a patented process
particular item falls within the appropriates a prior invention by knowing it to be especially adopted for infringing the patented
literal meaning of the patent incorporating its innovative invention and not suitable for substantial non-infringing use shall
claims, the Court must concept and, albeit with some be liable as a contributory infringer and shall be jointly and
juxtapose the claims of the modification and change, severally liable with the infringer.
patent and the accused product performs substantially the same
within the overall context of the function in substantially the Cause of action
claims and specifications, to same way to achieve - one act can make rise to several causes of action (civil,
determine whether there is substantially the same result. criminal, administrative)
exact identity of all material
elements. d. Who can file?
1. Patentee
A careful examination between the two power tillers will show 2. Any person possessing any right, title or interest over the
that they will operate on the same fundamental principles. And, patent
according to established jurisprudence, in infringement of patent,
similarities or differences are to be determined, not by the
CARLOS | IPL 9
 Sec. 77. Infringement Action by a Foreign National. - Any foreign 76.2. Any patentee, or anyone possessing any right, title or
national or juridical entity who meets the requirements of Section interest in and to the patented invention, whose rights have been
3 and not engaged in business in the Philippines, to which a infringed, may bring a civil action before a court of competent
patent has been granted or assigned under this Act, may bring jurisdiction, to recover from the infringer such damages
an action for infringement of patent, whether or not it is licensed sustained thereby, plus attorney’s fees and other expenses of
to do business in the Philippines under existing law. litigation, and to secure an injunction for the protection of his
rights.
Creser Precision System, Inc. v. CA (1998)
[Aerial Fuze] Criminal Case for Infringement: (Sec 84)
1. There should be a finality of judgment that he infringed (civil
Only the patentee or his successors-in-interest may file an action case first)
for infringement—the phrase “anyone possessing any right, title 2. If he repeated, he can now be criminally liable
or interest in and to the patented invention” in Sec. 42 of R.A.
165 refers only to the patentee’s successors-in-interest, à Note: ONLY if he was found liable first in a civil case for
assignees or grantees. infringement and then he repeated

à “Any person” – only patentee, assignee or heirs can file. Not Sec. 84. Criminal Action for Repetition of Infringement. - If
literally any person. 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
Sec. 75. Extent of Protection and Interpretation of Claims. - institution of a civil action for damages, be criminally liable
75.1. The extent of protection conferred by the patent shall be therefor and, upon conviction, shall suffer imprisonment for the
determined by the claims, which are to be interpreted in the light period of not less than six (6) months but not more than three (3)
of the description and drawings. years and/or a fine of not less than One hundred thousand
75.2. For the purpose of determining the extent of protection pesos (P100,000) but not more than Three hundred thousand
conferred by the patent, due account shall be taken of elements pesos (P300,000), at the discretion of the court. The criminal
which are equivalent to the elements expressed in the claims, so action herein provided shall prescribed in three (3) years from
that a claim shall be considered to cover not only all the date of the commission of the crime.
elements as expressed therein, but also equivalents. (n)
Administrative Case
- File in Bureau of Legal Affairs (BLA)
Where do you bring the action? - same reliefs with civil case
- Civil action – court of competent jurisdiction - Limitation: If less than 200K, do not ask for damages in order
- RTC for BLA to have jurisdiction
- BLA – Admin case - Other remedy: Go to RTC
à RTC, BLA with concurrent jurisdiction
Sec. 10. The Bureau of Legal Affairs. - The Bureau of Legal
Civil Action for Infringement Affairs shall have the following functions:
10.1. Hear and decide opposition to the application for
Sec. 76. Civil Action for Infringement. - registration of marks; cancellation of trademarks; subject to the
76.1. The making, using, offering for sale, selling, or importing a provisions of Section 64, cancellation of patents, utility models,
patented product or a product obtained directly or indirectly from and industrial designs; and petitions for compulsory licensing of
a patented process, or the use of a patented process without the patents;
authorization of the patentee constitutes patent infringement. 10.2. (a) Exercise original jurisdiction in administrative
76.2. Any patentee, or anyone possessing any right, title or complaints for violations of laws involving intellectual property
interest in and to the patented invention, whose rights have been rights: Provided, That its jurisdiction is limited to complaints
infringed, may bring a civil action before a court of competent where the total damages claimed are not less than Two hundred
jurisdiction, to recover from the infringer such damages thousand pesos (P200,000): Provided, further, That availment of
sustained thereby, plus attorney’s fees and other expenses of the provisional remedies may be granted in accordance with the
litigation, and to secure an injunction for the protection of his Rules of Court. The Director of Legal Affairs shall have the
rights. power to hold and punish for contempt all those who disregard
76.3. If the damages are inadequate or cannot be readily orders or writs issued in the course of the proceedings. (n)
ascertained with reasonable certainty, the court may award by (b) After formal investigation, the Director for Legal Affairs may
way of damages a sum equivalent to reasonable royalty. impose one (1) or more of the following administrative penalties:
76.4. The court may, according to the circumstances of the case,
award damages in a sum above the amount found as actual (i) The issuance of a cease and desist order which
damages sustained: Provided, That the award does not exceed shall specify the acts that the respondent shall cease
three (3) times the amount of such actual damages. and desist from and shall require him to submit a
76.5. The court may, in its discretion, order that the infringing compliance report within a reasonable time which shall
goods, materials and implements predominantly used in the be fixed in the order;
infringement be disposed of outside the channels of commerce (ii) The acceptance of a voluntary assurance of
or destroyed, without compensation. compliance or discontinuance as may be imposed.
76.6. Anyone who actively induces the infringement of a patent Such voluntary assurance may include one or more of
or provides the infringer with a component of a patented product the following:
or of a product produced because of a patented process (1) An assurance to comply with the provisions of the
knowing it to be especially adopted for infringing the patented intellectual property law violated;
invention and not suitable for substantial non-infringing use shall (2) An assurance to refrain from engaging in
be liable as a contributory infringer and shall be jointly and unlawful and unfair acts and practices
severally liable with the infringer. subject of the formal investigation;
(3) An assurance to recall, replace, repair, or refund
the money value of defective goods distributed in
Reliefs: (Sec 76.2) commerce; and
1. Actual damages (4) An assurance to reimburse the complainant the
2. Injunction – to prevent others from doing an act expenses and costs incurred in prosecuting the case
3. Destruction of the product in the Bureau of Legal Affairs.
4. Attorney’s fes

CARLOS | IPL 10
 The Director of Legal Affairs may also require the respondent to g. Defenses in Action for Infringement (Sec 81) (PIG)
submit periodic compliance reports and file a bond to guarantee 1. Prescription
compliance of his undertaking; 2. Invalidity
3. Grounds for cancellation (BLA only but can be defense in
(iii) The condemnation or seizure of products which are subject regular courts) – Sec 61
of the offense. The goods seized hereunder shall be disposed of 1. Invention is not new or patentable
in such manner as may be deemed appropriate by the Director 2. Non-disclosure in a manner sufficiently clear and
of Legal Affairs, such as by sale, donation to distressed local complete for it to be carried out by any person skilled
governments or to charitable or relief institutions, exportation, in the art
recycling into other goods, or any combination thereof, under 3. Contrary to public order or morality
such guidelines as he may provide;
(iv) The forfeiture of paraphernalia and all real and personal à Sec 68 – remedy of true anc actual inventor
properties which have been used in the commission of the
offense; Sec. 81. Defenses in Action for Infringement. - In an action for
(v) The imposition of administrative fines in such amount as infringement, the defendant, in addition to other defenses
deemed reasonable by the Director of Legal Affairs, which shall available to him, may show the invalidity of the patent, or any
in no case be less than Five thousand pesos (P5,000) nor more claim thereof, on any of the grounds on which a petition of
than One hundred fifty thousand pesos (P150,000). In addition, cancellation can be brought under Section 61 hereof.
an additional fine of not more than One thousand pesos
(P1,000) shall be imposed for each day of continuing violation; Sec. 68. Remedies of the True and Actual Inventor. - If a person,
(vi) The cancellation of any permit, license, authority, or who was deprived of the patent without his consent or through
registration which may have been granted by the Office, or the fraud is declared by final court order or decision to be the true
suspension of the validity thereof for such period of time as the and actual inventor, the court shall order for his substitution as
Director of Legal Affairs may deem reasonable which shall not patentee, or at the option of the true inventor, cancel the patent,
exceed one (1) year; and award actual and other damages in his favor if warranted by
(vii) The withholding of any permit, license, authority, or the circumstances.
registration which is being secured by the respondent from the
Office; h. Patent Found Invalid May Be Cancelled (Sec 82)
(viii) The assessment of damages;
(ix) Censure; and Sec. 82. Patent Found Invalid May be Cancelled. - In an action
(x) Other analogous penalties or sanctions. (Secs. 6, 7, 8, and 9, for infringement, if the court shall find the patent or any claim to
Executive Order No. 913 [1983]a) be invalid, it shall cancel the same, and the Director of Legal
10.3. The Director General may by Regulations establish the Affairs upon receipt of the final judgment of cancellation by the
procedure to govern the implementation of this Section. (n) court, shall record that fact in the register of the Office and shall
publish a notice to that effect in the IPO Gazette.
e. Presumptions (Sec 78)
- process only i. Assessors (Sec 83)

Sec. 78. Process Patents; Burden of Proof. - If the subject Sec. 83. Assessor in Infringement Action. -
matter of a patent is a process for obtaining a product, any 83.1. Two (2) or more assessors may be appointed by the court.
identical product shall be presumed to have been obtained The assessors shall be possessed of the necessary scientific
through the use of the patented process if the product is new or and technical knowledge required by the subject matter in
there is substantial likelihood that the identical product was litigation. Either party may challenge the fitness of any assessor
made by the process and the owner of the patent has been proposed for appointment.
unable despite reasonable efforts, to determine the process 83.2. Each assessor shall receive a compensation in an amount
actually used. In ordering the defendant to prove that the to be fixed by the court and advanced by the complaining party,
process to obtain the identical product is different from the which shall be awarded as part of his costs should he prevail in
patented process, the court shall adopt measures to protect, as the action
far as practicable, his manufacturing and business secrets.

3. Licensing
f. Damages (Sec 79-80) - Authorized
- Prescriptive period: 4 years before action for infringement - Agreement between the patentee and other persons allowed to
- No damages can be recovered if action for infringement was enjoy rights over the patent
instituted 4 years after the act of infringement
- No damages if committed before infringer knew, or had the Kinds of Licensing:
chance to know of the patent 1. Voluntary
2. Compulsory
1. 4 years
2. Knowledge – but can file injunction a. Voluntary (Sec 85-92)
- contract between licensor and licensee
Sec. 79. Limitation of Action for Damages. - No damages can be - Purpose: To encourage the transfer and dissemination of
recovered for acts of infringement committed more than four (4) technology, prevent or control practices and conditions that may
years before the institution of the action for infringement. (Sec. in particular cases constitute an abuse of intellectual property
43, R. A. No. 165) rights having an adverse effect on competition and trade (Sec.
85. IPC)
Sec. 80. Damages; Requirement of Notice. - Damages cannot - Even though voluntary, the law still provides to follow certain
be recovered for acts of infringement committed before the provisions (Sec 87-88)
infringer had known; or had reasonable grounds to know of the - If not complied, it has to have the approval of the
patent. It is presumed that the infringer had known of the patent Director to be enforceable
if on the patented product, or on the container or package in
which the article is supplied to the public, or on the advertising Sec. 85. Voluntary License Contract. - To encourage the transfer
material relating to the patented product or process, are placed and dissemination of technology, prevent or control practices
the words "Philippine Patent" with the number of the patent. and conditions that may in particular cases constitute an abuse
of intellectual property rights having an adverse effect on
competition and trade, all technology transfer arrangements
shall comply with the provisions of this Chapter. (n)

CARLOS | IPL 11
Sec. 86. Jurisdiction to Settle Disputes on Royalties. - The 88.4. The Philippine taxes on all payments relating to the
Director of the Documentation, Information and Technology technology transfer arrangement shall be borne by the
Transfer Bureau shall exercise quasi-judicial jurisdiction in the licensor. (n)
settlement of disputes between parties to a technology transfer
arrangement arising from technology transfer payments, Sec. 89. Rights of Licensor. - In the absence of any provision to
including the fixing of appropriate amount or rate of royalty. (n) the contrary in the technology transfer arrangement, the grant of
a license shall not prevent the licensor from granting further
Sec. 87. Prohibited Clauses. - Except in cases under Section 91, licenses to third person nor from exploiting the subject matter of
the following provisions shall be deemed prima facie to have an the technology transfer arrangement himself. (Sec. 33-B, R. A.
adverse on competition and trade: 165a)
87.1. Those which impose upon the licensee the obligation to
acquire from a specific source capital goods, intermediate Sec. 90. Rights of Licensee. - The licensee shall be entitled to
products, raw materials, and other technologies, or of exploit the subject matter of the technology transfer arrangement
permanently employing personnel indicated by the licensor; during the whole term of the technology transfer
87.2. Those pursuant to which the licensor reserves the right to arrangement. (Sec. 33-C (1), R. A. 165a)
fix the sale or resale prices of the products manufactured on the
basis of the license; Sec. 91. Exceptional Cases. - In exceptional or meritorious
87.3. Those that contain restrictions regarding the volume and cases where substantial benefits will accrue to the economy,
structure of production; such as high technology content, increase in foreign exchange
87.4 Those that prohibit the use of competitive technologies in a earnings, employment generation, regional dispersal of
non-exclusive technology transfer agreement; industries and/or substitution with or use of local raw materials,
87.5. Those that establish a full or partial purchase option in or in the case of Board of Investments, registered companies
favor of the licensor; with pioneer status, exemption from any of the above
87.6. Those that obligate the licensee to transfer for free to the requirements may be allowed by the Documentation, Information
licensor the inventions or improvements that may be obtained and Technology Transfer Bureau after evaluation thereof on a
through the use of the licensed technology; case by case basis. (n)
87.7. Those that require payment of royalties to the owners of
patents for patents which are not used; Sec. 92. Non-Registration with the Documentation, Information
87.8. Those that prohibit the licensee to export the licensed and Technology Transfer Bureau. - Technology transfer
product unless justified for the protection of the legitimate arrangements that conform with the provisions of Sections 86
interest of the licensor such as exports to countries where and 87 need not be registered with the Documentation,
exclusive licenses to manufacture and/or distribute the licensed Information and Technology Transfer Bureau. Non-conformance
product(s) have already been granted; with any of the provisions of Sections 87 and 88, however, shall
87.9. Those which restrict the use of the technology supplied automatically render the technology transfer arrangement
after the expiration of the technology transfer arrangement, unenforceable, unless said technology transfer arrangement is
except in cases of early termination of the technology transfer approved and registered with the Documentation, Information
arrangement due to reason(s) attributable to the licensee; and Technology Transfer Bureau under the provisions of Section
87.10. Those which require payments for patents and other 91 on exceptional cases.
industrial property rights after their expiration, termination
arrangement; b. Compulsory (Sec 93-95)
87.11. Those which require that the technology recipient shall - If the patentee does not approve, the law may compel him
not contest the validity of any of the patents of the technology - Who is entitled to CL? Any person who has the capacity to
supplier; exploit
87.12. Those which restrict the research and development
activities of the licensee designed to absorb and adapt the Grounds:
transferred technology to local conditions or to initiate research 1. National emergency
and development programs in connection with new products, 2. Public interest so requires
processes or equipment; 3. Anti-competitive
87.13. Those which prevent the licensee from adapting the 4. Non-commercial use of the patentee with no satisfactory
imported technology to local conditions, or introducing innovation reason
to it, as long as it does not impair the quality standards 5. Not being worked in the PH, without satisfactory reason
prescribed by the licensor;
87.14. Those which exempt the licensor for liability for non- Sec. 93. Grounds for Compulsory Licensing. - The Director of
fulfillment of his responsibilities under the technology transfer Legal Affairs may grant a license to exploit a patented invention,
arrangement and/or liability arising from third party suits brought even without the agreement of the patent owner, in favor of any
about by the use of the licensed product or the licensed person who has shown his capability to exploit the invention,
technology; and under any of the following circumstances:
87.15. Other clauses with equivalent effects. (Sec. 33-C[2], R. A. 93.1. National emergency or other circumstances of extreme
165a) urgency;
93.2. Where the public interest, in particular, national security,
Sec. 88. Mandatory Provisions. - The following provisions shall nutrition, health or the development of other vital sectors of the
be included in voluntary license contracts: national economy as determined by the appropriate agency of
88.1. That the laws of the Philippines shall govern the the Government, so requires; or
interpretation of the same and in the event of litigation, the 93.3. Where a judicial or administrative body has determined
venue shall be the proper court in the place where the licensee that the manner of exploitation by the owner of the patent or his
has its principal office; licensee is anti-competitive; or
88.2. Continued access to improvements in techniques and 93.4. In case of public non-commercial use of the patent by the
processes related to the technology shall be made available patentee, without satisfactory reason;
during the period of the technology transfer arrangement; 93.5. If the patented invention is not being worked in the
88.3. In the event the technology transfer arrangement shall Philippines on a commercial scale, although capable of being
provide for arbitration, the Procedure of Arbitration of the worked, without satisfactory reason: Provided, That the
Arbitration Law of the Philippines or the Arbitration Rules of the importation of the patented article shall constitute working or
United Nations Commission on International Trade Law using the patent. (Secs. 34, 34-A, and 34-B, R. A. No. 165a)
(UNCITRAL) or the Rules of Conciliation and Arbitration of the
International Chamber of Commerce (ICC) shall apply and the Sec. 94. Period for Filing a Petition for a Compulsory License. -
venue of arbitration shall be the Philippines or any neutral 94.1. A compulsory license may not be applied for on the ground
country; and stated in Subsection 93.5 before the expiration of a period of

CARLOS | IPL 12
four (4) years from the date of filing of the application or three (3) 4. Right to Transfer and Assign
years from the date of the patent whichever period expires last. - Inventions and any right, title or interest in and to patents and
94.2. A compulsory license which is applied for on any of the inventions may be assigned or transferred by inheritance or
grounds stated in Subsections 93.2, 93.3, and 93.4 and Section bequest or may be subject of a license contract
97 may be applied for at any time after the grant of the
patent. (Sec. 34[1], R. A. No. 165) Albana v. Director of Patents (1953)
[Fel-Tap Meter Guard and Detector]
Sec. 95. Requirement to Obtain a License on Reasonable The alleged assignment is not of the invention but it is an
Commercial Terms. - agreement whereby he is to act as selling agent for the inventors
95.1. The license will only be granted after the petitioner has of the patent (if granted) and of the invention covered thereby
made efforts to obtain authorization from the patent owner on and to receive compensation therefor.
reasonable commercial terms and conditions but such efforts
have not been successful within a reasonable period of time. 4.2. The term "technology transfer arrangements" refers to
95.2. The requirement under Subsection 95.1 shall not apply in contracts or agreements involving the transfer of systematic
the following cases: knowledge for the manufacture of a product, the application of a
(a) Where the petition for compulsory license seeks to process, or rendering of a service including management
remedy a practice determined after judicial or contracts; and the transfer, assignment or licensing of all forms
administrative process to be anti-competitive; of intellectual property rights, including licensing of computer
(b) In situations of national emergency or other software except computer software developed for mass market.
circumstances of extreme urgency;
(c) In cases of public non-commercial use. Sec. 103. Transmission of Rights. -
95.3. In situations of national emergency or other circumstances 103.1 Patents or applications for patents and invention to which
of extreme urgency, the right holder shall be notified as soon as they relate, shall be protected in the same way as the rights of
reasonably practicable. other property under the Civil Code.
95.4. In the case of public non-commercial use, where the 103.2. Inventions and any right, title or interest in and to patents
government or contractor, without making a patent search, and inventions covered thereby, may be assigned or transmitted
knows or has demonstrable grounds to know that a valid patent by inheritance or bequest or may be the subject of a license
is or will be used by or for the government, the right holder shall contract. (Sec. 50, R. A. No. 165a)
be informed promptly.
Sec. 104. Assignment of Inventions. - An assignment may be of
Price v. United Laboratories (1988) the entire right, title or interest in and to the patent and the
[Compulsory License to Use the Patented Compound] invention covered thereby, or of an undivided share of the entire
patent and invention, in which event the parties become joint
The Director of Patents is authorized to fix the terms and owners thereof. An assignment may be limited to a specified
conditions of the compulsory license. territory. (Sec. 51, R. A. No. 165)

Even if it were true, as alleged by the patentee (although it is Sec. 105. Form of Assignment. - The assignment must be in
denied by UNILAB), that its capability to use the patented writing, acknowledged before a notary public or other officer
compound was only acquired after the petition for compulsory authorized to administer oath or perform notarial acts, and
licensing had been filed, the important thing is that such certified under the hand and official seal of the notary or such
capability was proven to exist during the hearing of the petition. other officer. (Sec. 52, R. A. No. 165)

There is no error in granting a compulsory license over the entire Sec. 106. Recording. -
patented invention for there is no law requiring that the license 106.1. The Office shall record assignments, licenses and other
be limited to a specific embodiment of the invention or, to a instruments relating to the transmission of any right, title or
particular claim; Petitioner cannot complain of deprivation of interest in and to inventions, and patents or application for
property rights without just compensation. patents or inventions to which they relate, which are presented
in due form to the Office for registration, in books and records
Smith Kline v. CA (1997) kept for the purpose. The original documents together with a
[Cimetidine] signed duplicate thereof shall be filed, and the contents thereof
should be kept confidential. If the original is not available, an
A patent holder is not unduly deprived of its property rights authenticated copy thereof in duplicate may be filed. Upon
where the law not only grants him a protective period of two recording, the Office shall retain the duplicate, return the original
years to enjoy his exclusive rights thereto but subsequently or the authenticated copy to the party who filed the same and
recognizes just compensation in the form of royalties. notice of the recording shall be published in the IPO Gazette.
106.2. Such instruments shall be void as against any
Smith Kline v. CA (2001) subsequent purchaser or mortgagee for valuable consideration
[Cimetidine] and without notice, unless, it is so recorded in the Office, within
three (3) months from the date of said instrument, or prior to the
The grant of the compulsory license satisfies the requirements of subsequent purchase or mortgage. (Sec. 53, R. A. No. 165a)
the foregoing provision. More than ten years have passed since
the patent for Cimetidinewas issued to petitioner and its Sec. 107. Rights of Joint Owners. - If two (2) or more persons
predecessors-in-interest, and the compulsory license applied for jointly own a patent and the invention covered thereby, either by
by private respondent is for the use, manufacture and sale of a the issuance of the patent in their joint favor or by reason of the
medicinal product. Furthermore, both the appellate court and the assignment of an undivided share in the patent and invention or
BPTTT found that private respondent had the capability to work by reason of the succession in title to such share, each of the
Cimetidine or to make use thereof in the manufacture of a useful joint owners shall be entitled to personally make, use, sell, or
product. import the invention for his own profit: Provided, however, That
neither of the joint owners shall be entitled to grant licenses or to
assign his right, title or interest or part thereof without the
consent of the other owner or owners, or without proportionally
dividing the proceeds with such other owner or owners.

CARLOS | IPL 13
III. LAW ON TRADEMARKS, TRADENAMES, AND SERVICE MARKS
A. Legislative History 121.1. "Mark" means any visible sign capable of distinguishing
RA 166 – (Trademark Law) – before based on Act 3134 the goods (trademark) or services (service mark) of an
RA 101372 – renumbering of RA 8293 from Sec 230 onwards enterprise and shall include a stamped or marked container of
goods;
IPC: Sec 240.2
- RA 166 – marks registered shall remain in force Kinds of Trademark: (WSS-LS)
1. Words
à 239.2. Marks registered under Republic Act No. 166 shall 2. Symbols
remain in force but shall be deemed to have been granted under 3. Slogans
this Act and shall be due for renewal within the period provided 4. Logo
for under this Act and, upon renewal, shall be reclassified in 5. Sounds (but only in US)
accordance with the International Classification. Trade names
and marks registered in the Supplemental Register under Trademark – goods
Republic Act No. 166 shall remain in force but shall no longer be Tradename – enterprises
subject to renewal. Service marks - services

Distilleria Washington v. CA
RA 166 RA 8293 [Bottles of Ginebra San Miguel used in Gin Seven Products]
Prior use prior to registration No prior use anymore
20 years 10 years A trademark refers to a word, name, symbol, emblem, sign or
Director - classification Nice – classification device or any combination thereof adopted and used by a
Marks, etc Any visible sign merchant to identify, and distinguish from others, his goods of
Principal and supplemental One registration commerce.
registration
Took effect 1997 An action to recover personal property does not apply in this
RA 166 & 165 expressly Applications pending also to be case since the subject of ownership is the trademark and not the
repealed by IPC presented under IPC bottles.
- Trademarks registered under
RA 166 are considered à IP different from object itself
registered under this new law à Writ of replevin NOT proper. Already being used
Case: but not all provisions. à LTDI does not own bottles anymore
Only those inconsistent à Protection is limited to non-functional
therewith. à Bottles – except sisi, patis, bagoong, etc
The term "trade-mark" 121.1. "Mark" means any visible
includes any word, name, sign capable of distinguishing
symbol, emblem, sign or the goods (trademark) or C. Functions of Trademarks
device or any combination services (service mark) of an Purpose: To point out distinctively
thereof adopted and used by a enterprise and shall include a
manufacturer or merchant to stamped or marked container of 3 distinct functions of trademarks:
identify his goods and goods; 1. Indicate origin or ownership
distinguish them from those 2. Guarantee standard or quality
manufactured, sold or dealt in 3. Advertise the article
by others.
Ang v. Teodoro (1942)
RA 166 [Ang Tibay: Pants and Shirts vs. Slippers, Shoes, etc.]
Section 38. Words and terms defined and construed. - In the
construction of this Act, unless the contrary is plainly apparent The function of a trade-mark is to point distinctively, either by its
from the context - own meaning or by association, to the origin or ownership of the
wares to which it is applied.
The term "trade-name" includes individual names and surnames,
firm names, trade-names, devices or words used by à only desire to get a free ride on the reputation and selling
manufacturers, industrialists, merchants, agriculturists, and power
others to identify their business, vocations or occupations; the
names or titles lawfully adopted and used by natural or juridical Etepha v. Director of Patents (1966)
persons, unions, and any manufacturing, industrial, commercial, [Atussin v. Pertussin]
agricultural or other organizations engaged in trade or
commerce. The objects of a trademark are to point out distinctly the origin or
ownership of the article to which it is affixed, to secure to him,
The term "trade-mark" includes any word, name, symbol, who has been instrumental in bringing into market a superior
emblem, sign or device or any combination thereof adopted and article of merchandise, the fruit of his industry and skill, and to
used by a manufacturer or merchant to identify his goods and prevent fraud and imposition.
distinguish them from those manufactured, sold or dealt in by
others. à “Tussin” merely descriptive, open for appropriation by anyone

The term "service-mark" means a mark used in the sale or Mirpuri v. CA (1999)
advertising of services to identify the services of one person and [Barbizon]
distinguish them from the services of others and includes without
limitation the marks, names, symbols, titles, designations, In Philippine jurisprudence, the function of a trademark is
slogans, character names, and distinctive features of radio or 1. To point out distinctly the origin or ownership of the goods to
other advertising. which it is affixed;
2. To secure to him, who has been instrumental in bringing into
the market a superior article of merchandise, the fruit of his
B. Definition of Trademarks (Sec 121.1) industry and skill;
- symbols, etc. to distinguish from others 3. To assure the public that they are procuring the genuine
- You know what the origin of the thing is article;
- It relays to you a certain message 4. To prevent fraud and imposition; and
- Just like any other property wherein the owner has right over it

CARLOS | IPL 14
 5. To protect the manufacturer against substitution and sale of adoption of a particular tradename without actual use thereof in
an inferior and different article as his product. the market is insufficient to give any exclusive right to its use.

Modern authorities on trademark law view trademarks as à -Before registration, you must be an owner
performing three distinct functions: -During that time, to be able to register, what was necessary?
(1) they indicate origin or ownership of the articles to which they Owner of the mark
are attached; -How do you establish ownership? Actual use
(2) they guarantee that those articles come up to a certain -Isetann Japan sought to cancel registration of Isetann in PH on
standard of quality; the ground of ownership and prior
(3) they advertise the articles they symbolize. -SC: denied the petition of Isetann Japan
-The fact that Japan did not have business in the PH proves that
Today, the trademark is not merely a symbol of origin and there was no actual use -Under the law, there must be actual
goodwill; it is often the most effective agent for the actual use
creation and protection of goodwill. It imprints upon the public
mind an anonymous and impersonal guaranty of satisfaction, Philip Morris v. CA (2006)
creating a desire for further satisfaction. In other words, the mark [MARK Cigarettes]
actually sells the goods. The mark has become the "silent
salesman," the conduit through which direct contact between the Petitioners may have the capacity to sue for infringement
trademark owner and the consumer is assured. It has invaded irrespective of lack of business activity in the Philippines on
popular culture in ways never anticipated that it has become a account of Section 21-A of the Trademark Law but the question
more convincing selling point than even the quality of the article whether they have an exclusive right over their symbol as to
to which it refers. justify issuance of the controversial writ will depend on actual
use of their trademarks in the Philippines in line with Sections 2
à “Silent salesman” and 2-A of the same law.

D. How are marks acquired? à WON foreign corporation can enforce their rights = YES, but
- Through a validly made REGISTRATION subject to laws of PH (actual use – old law)
- No need for prior use, but submit within 3 years of actual use
à -SC: this is a prelim injunction
Sec. 122. How Marks are Acquired. - The rights in a mark shall
be acquired through registration made validly in accordance with 1. Show existence of the right —> PM was not able to show
the provisions of this law. existence of the right bec the trademark was not in use in the PH
(but the Court did not prevent them from filing the case even if
124.2. The applicant or the registrant shall file a declaration of they are not doing a business in the PH) (it does not affect the
actual use of the mark with evidence to that effect, as prescribed right, you can always file to protect your TM rights)
by the Regulations within three (3) years from the filing date of
the application. Otherwise, the application shall be refused or the 2. Violation
mark shall be removed from the Register by the Director. -But PM is not entitled to the relief sought w/c prelim injunction
-SC: PM did not have the right to be protected bec PM did not do
Unno Commercial Enterprises v. General Milling Corp. (1983) business in the PH which means there was no actual use hence
[All Montana] they are not owners of the TM as they claimed
-economic reasons for denying the injunctions: PM is not even a
Petitioner’s contention that it is the owner of the mark "All PH corp and doing business here yet you want to prevent
Montana" because of its certificate of registration issued by the Fortune to do business here hence it will cause unemployment
Director of Patents, must fail, since: to thousand of Filipino workers

Ownership of a trademark is not acquired by the mere fact of -J. Feliciano, dissenting: we are not preventing you from doing
registration alone. Registration merely creates a prima facie business, you can still employ those Filipinos. But you cannot
presumption of the validity of the registration, of the registrant's use the mark bec it is protected since there is already a
ownership of the trademark and of the exclusive right to the use registration
thereof. Registration does not perfect a trademark right. -Use of trademark by Fortune will cause damage to the
Evidence may be presented to overcome the presumption. Prior reputation & goodwill since there is a registration and prima facie
use by one will controvert a claim of legal appropriation, by presumption
subsequent users.
Philip Morris v. Fortune Tobacco (2006)
à How are marks acquired? Under Sec 122 thru registration [MARK Cigarettes]
-Who can register? The owner or the authorized person of the The registration of a trademark gives the registrant, such as
owner petitioners, advantages denied non-registrants or ordinary users,
-In this case, registration is only a prima facie presumption of the like respondent. But while petitioners enjoy the statutory
validity of the registration, of the registrant’s ownership, and of presumptions arising from such registration, i.e., as to the
the exclusive right to the use —> this implies that such validity of the registration, ownership and the exclusive right to
registration is open to opposition and may be rebutted use the registered marks, they may not successfully sue on the
basis alone of their respective certificates of registration of
*CASES DECIDED UNDER RA 166: trademarks. For, petitioners are still foreign corporations.
Trademarks should actually be used two months in commerce in
the Philippines before the time the applications for registration The registration of a trademark unaccompanied by actual use
are filed. thereof in the country accords the registrant only the standing to
sue for infringement in Philippine courts.
Kabushi Kaisha Isetan v. IAC (1991)
[Isetan] à -no actual use
-not the fact that you are not doing business in PH. It is the
A fundamental principle of Philippine Trademark Law is that actual use in the PH
actual use in commerce in the Philippines is a pre-requisite to -PM used case of Converse but in that case there was evidence
the acquisition of ownership over a trademark or a tradename. that there was sales in the PH but in this case, none
-PM failed to show actual use as compared to what happen in
In fact, a prior registrant cannot claim exclusive use of the Converse
trademark unless it uses it in commerce. The mere origination or

CARLOS | IPL 15
 Shangrila v. DCCI (2006) Ecole De Cuisine Manjlle (Cordon Bleu of the Philippines), Inc.
[Shangrila or “S” Logo] v. Renaud Cointreau & Cie and Le Cordon Bleu Int'l. (2013)
[Le Cordon Bleu]
Under R.A. 166, as amended, one may be an owner of a mark
due to actual use thereof but not yet have the right to register Under the Paris Convention, the Philippines is obligated to
such ownership here due to failure to use it within the Philippines assure nationals of the signatory-countries that they are afforded
for two months. an effective protection against violation of their intellectual
property rights in the Philippines in the same way that their own
à -Shangrila hotels filed a pet for cancellation of resto’s mark countries are obligated to accord similar protection to Philippine
-SC: not granted —> bec hotel has no prior use in the PH nationals. Thus, under Philippine law, a trade name of a national
-the first use of the name and S sign is the hotels everywhere of a State that is a party to the Paris Convention, whether or not
else except PH since 1969 the trade name forms part of a trademark, is protected "without
-Resto came up w/ the name & design thru jeepney signboard the obligation of filing or registration.
artist —> but the Court did not believe the Pres bec 2 mons
before he stayed in Shangrila hotel hence he knew about the The present law on trademarks, RA 8293, has already
sign dispensed with the requirement of prior actual use at the time of
-It is true that DGCI had registered and used in the PH before registration.
hotel but he is not the true owner since he got it thru unlawful
and fraudulent means à -Contreau = real owner and not Dayrit even tho she was able
to register it
*CASES DECIDED UNDER THE IPC (RA 8293):
No need for 2-month actual use before registration, but one still
needs to file a declaration of actual use of the mark within 3 Under RA 166, there must be actual use for at least 2 mos but under IPC
years from the filing of the application for registration. Also, proof you can register it immediately:
of prior and continuous use is still necessary to establish -but even then registration only gives you a prima facie
ownership of a mark. presumption that regisration has been validly made because
registration is still based on the ownership – right belongs to the
Berries Agricultural Co., Inc. vs. Norvy Abyadang (2010) owner
[NS D-10 PLUS v. D-10 80 WP] -even if you are registered but if you are not the owner, it will be
cancelled
Section 122 of R.A. No. 8293 provides that the rights in a mark -rule: registration but the registrant must have
shall be acquired by means of its valid registration with the IPO. ownership; later on in the process you will still have to
R.A. No. 8293, however, requires the applicant for registration or establish prior use
the registrant to file a declaration of actual use (DAU) of the -validly made = registered by the owner or authorized
mark, with evidence to that effect, within three (3) years from the by the owner
filing of the application for registration; otherwise, the application
shall be refused or the mark shall be removed from the register. E. Standard for Registrability
1. Is it PROTECTABLE?
In other words, the prima facie presumption brought about by the - prevent others from using it
registration of a mark may be challenged and overcome, in an 2. Is it AVAILABLE?
appropriate action, by proof of the nullity of the registration or of - can others prevent you?
non-use of the mark, except when excused. Moreover, the
presumption may likewise be defeated by evidence of prior use F. What Marks May Be Registered? (Sec 123)
by another person
Spectrum of Protection
à -was there actual use? YES. 1. Generic
-what is necessary to prove actual use? Sale to the public - ordinary / common terms
-infringement: there was infringement pursuant to dominancy - No protection
test —> dominant feature D-10 w/c caused confusion or there is - “apple”
likelihood to cause confusion 2. Descriptive
- conveys immediate idea of what product is
E.Y. Industrial Sales, Inc. and Engracio Yap v. Shen Dar - may not be registrable
Electricity and Machinery Co., Ltd. (2010) - everybody has a right to describe his product that
[VESPA for Air Compressors] way
- “tomato ketchup” / “ripe mango”
RA 8293 espouses the "first-to-file" rule as stated under Sec. 3. Suggestive
123.1(d). Under this provision, the registration of a mark is - describes the product, but requires imagination
prevented with the filing of an earlier application for registration. - closer to full protection
This must not, however, be interpreted to mean that ownership - can be attached
should be based upon an earlier filing date. While RA 8293 à Secondary meaning: “Sports Illustrated”
removed the previous requirement of proof of actual use prior to - “Coppertone” / “Potato corner”
the filing of an application for registration of a mark, proof of prior 4. Arbitrary
and continuous use is necessary to establish ownership of a - no relation to product
mark. Such ownership constitutes sufficient evidence to oppose - “Apple – computers”, “Red mango – yogurt”
the registration of a mark. 5. Fanciful
- made up word
à -Why was SD not upheld kahit na siya nagprovide kay EY? A: - top most protected
not the registration, but the actual use as basis - “Starbucks”, “Xerox”, “Kodak”, “Google”
-SD was exporting to EY under chinese characters, no VESPA
in the compressors being imported à Arbitrary and Fanciful = most protection
-EY nilagyan niya na VESPA nung na receive niya ung à Available – mark already used / registered?
compressors à Shop: “Pen shop”: Answer: “Assuming….” No. Well-known
-Again, not the registration but the actual use brand.

CARLOS | IPL 16
Sec. 123. Registrability. - Etepha v. Director of Patents (1966)
123.1. A mark cannot be registered if it: [Altussin v. Pertussin]
(a) Consists of immoral, deceptive or scandalous matter, or matter which
may disparage or falsely suggest a connection with persons, living or “Tussin” is merely descriptive; it is generic; it furnishes to the
dead, institutions, beliefs, or national symbols, or bring them into contempt buyer no indication of the origin of the goods; it is open for
or disrepute; appropriation by anyone. It is accordingly barred from
(b) Consists of the flag or coat of arms or other insignia of the Philippines registration as a trademark. But while “Tussin” by itself cannot
or any of its political subdivisions, or of any foreign nation, or any thus be used exclusively to identify one’s goods, it may properly
simulation thereof; become the subject of a trademark “by combination with another
(c) Consists of a name, portrait or signature identifying a particular living word or phrase.”
individual except by his written consent, or the name, signature, or portrait
of a deceased President of the Philippines, during the life of his widow, if Ang v. Teodoro (1942)
any, except by written consent of the widow; [Ang Tibay: Pants and Shirts vs. Slippers, Shoes, etc.]
(d) Is identical with a registered mark belonging to a different proprietor or
a mark with an earlier filing or priority date, in respect of: An inquiry into the etymology and meaning of the Tagalog words
(i) The same goods or services, or "Ang Tibay," made in the decision, shows that the phrase is
(ii) Closely related goods or services, or never used adjectively to define or describe an object. It is,
(iii) If it nearly resembles such a mark as to be likely to deceive there¬fore, not a descriptive term within the meaning of the
or cause confusion; Trade-mark Law but rather a fanciful or coined phrase which
(e) Is identical with, or confusingly similar to, or constitutes a translation of may properly and legally be appropriated as a trade-mark or
a mark which is considered by the competent authority of the Philippines to trade-name. Hence, it was originally capable of exclusive
be well-known internationally and in the Philippines, whether or not it is appropriation as a trade-mark by the respondent.
registered here, as being already the mark of a person other than the
applicant for registration, and used for identical or similar goods or
services: Provided, That in determining whether a mark is well-known, Arce Sons v. Selecta Biscuits (1961)
account shall be taken of the knowledge of the relevant sector of the [Selecta: Ice Cream v. Biscuits]
public, rather than of the public at large, including knowledge in the
Philippines which has been obtained as a result of the promotion of the The word "Selecta" may be an ordinary or common word in the
mark; sense that it may be used or employed by anyone in promoting
(f) Is identical with, or confusingly similar to, or constitutes a translation of a his business or enterprise, but once adopted as an emblem, sign
mark considered well-known in accordance with the preceding paragraph, or device to characterize its products, or as a badge of
which is registered in the Philippines with respect to goods or services authenticity, it may acquire a secondary meaning as to be
which are not similar to those with respect to which registration is applied exclusively associated with the user's products and business.
for: Provided, That use of the mark in relation to those goods or services
would indicate a connection between those goods or services, and the A word or phrase originally incapable of exclusive appropriation
owner of the registered mark: Provided further, That the interests of the with reference to an article on the market, because
owner of the registered mark are likely to be damaged by such use; geographically or otherwise descriptive, might neverthless have
(g) Is likely to mislead the public, particularly as to the nature, quality, been used so long and so exclusively by one producer with
characteristics or geographical origin of the goods or services; reference to his article that, in that trade and to that branch of
(h) Consists exclusively of signs that are generic for the goods or services the purchasing public, the word or phrase has come to mean
that they seek to identify; that the article was his product.
(i) Consists exclusively of signs or of indications that have become
customary or usual to designate the goods or services in everyday Asia Brewery v. CA (1993)
language or in bona fide and established trade practice; [BEER PALE PILSEN or BEER NA BEER v. SAN MIGUEL
(j) Consists exclusively of signs or of indications that may serve in trade to PALE PILSEN]
designate the kind, quality, quantity, intended purpose, value, geographical The fact that the words pale pilsen are part of ABI’s trademark
origin, time or production of the goods or rendering of the services, or other does not constitute an infringement of SMC’s trademark; SAN
characteristics of the goods or services; MIGUEL PALE PILSEN, for “pale pilsen” are generic words
(k) Consists of shapes that may be necessitated by technical factors or by descriptive of the color (“pale”), of a type of beer (“pilsen”), which
the nature of the goods themselves or factors that affect their intrinsic is a light bohemian beer with a strong hops flavor that originated
value; in the City of Pilsen in Czechoslovakia and became famous in
(l) Consists of color alone, unless defined by a given form; or the Middle Ages. “Pilsen” is a “primarily geographically
(m) Is contrary to public order or morality. descriptive word,” hence, non-registerable and not appropriable
by any beer manufacturer.
123.2. As regards signs or devices mentioned in paragraphs (j), (k), and
(l), nothing shall prevent the registration of any such sign or device which à No protection even for container (brown bottle)
has become distinctive in relation to the goods for which registration is
requested as a result of the use that have been made of it in commerce in Emerald Garment Manufacturing v. CA (1995)
the Philippines. The Office may accept as prima facie evidence that the [LEE v. STYLISTIC MR. LEE]
mark has become distinctive, as used in connection with the applicant’s
goods or services in commerce, proof of substantially exclusive and “LEE” is primarily a surname. Private respondent cannot,
continuous use thereof by the applicant in commerce in the Philippines for therefore, acquire exclusive ownership over and singular use of
five (5) years before the date on which the claim of distinctiveness is said term. It has been held that a personal name or surname
made. may not be monopolized as a trademark or tradename as
against others of the same name or surname. For in the
123.3. The nature of the goods to which the mark is applied will not absence of contract, fraud, or estoppel, any man may use his
constitute an obstacle to registration. name or surname in all legitimate ways. Thus, “Wellington” is a
surname, and its first user has no cause of action against the
à “Rodrigo Duterte” – No. Sec 123 (c). junior user of “Wellington” as it is incapable of exclusive
à Secondary meaning could only come in if descriptive / appropriation.
selective. If fanciful, NO NEED
Fredco Manufacturing Corporation v. President and Fellows of
Harvard College (Harvard University) (2011)
[Harvard Veritas Shield Symbol]

“Harvard” is the trade name of the world-famous Harvard

University, and it is also a trademark of Harvard University.
Under Article 8 of the Paris Convention, as well as Section 37 of

CARLOS | IPL 17
 R.A. No. 166, Harvard University is entitled to protection in the à Register – NO need actual use
Philippines of its trade name “Harvard” even without registration - BUT still ownership
of such trade name in the Philippines. This means that no
educational entity in the Philippines can use the trade name à Marks acquired by registration validly made:
“Harvard” without the consent of Harvard University. Likewise, 1. Owner
no entity in the Philippines can claim, expressly or impliedly 2. Anyone acting for owner
through the use of the name and mark “Harvard,” that its
products or services are authorized, approved, or licensed by, or 1. Application
sourced from, Harvard University without the latter’s consent. 2. Assignment of Application Number and Filing Date
Requirements:
Section 123.1(e) of R.A. No. 8293 now categorically states that 1. An express or implicit indication that the registration of a mark
“a mark which is considered by the competent authority of the is sought
Philippines to be well-known internationally and in the 2. Identity of the applicant
Philippines, whether or not it is registered here,” cannot be 3. Indications sufficient to contact the applicant or his
registered by another in the Philippines. Section 123.1(e) does representative, if any.
not require that the well-known mark be used in commerce in the 4. Reproduction of the mark whose registration is sought.
Philippines but only that it be well-known in the Philippines. 5. List of the goods or services for which the registration is
sought.
Dy v. Koninklijke Philips Electronics, NV. (2017)
[PHILITES v. PHILIPS] 3. Examination
a. Is it complete? (Sec 124)
The mark “PHILITES” bears an uncanny resemblance or b. Is it registrable? (Sec 123 / 121)
confusing similarity with respondent’s mark “PHILIPS,” to wit: 1. Protectable
Applying the dominancy test in the instant case, it shows the 2. Available
uncanny resemblance or confusing similarity between the
trademark applied for by respondent with that of petitioner’s 4. Publication
registered trademark. An examination of the trademarks shows - upon payment, cause the application to be published in the
that their dominant or prevalent feature is the five-letter “PHILI,” prescribed manner
“PHILIPS” for petitioner, and “PHILITES” for respondent. The
marks are confusingly similar with each other such that an 5. Opposition
ordinary purchaser can conclude an association or relation - anyone who believes to be damaged
between themarks. The consuming public does not have the - 30 days after publication
luxury of time to ruminate the phonetic sounds of the
trademarks, to find out which one has a short or long vowel Bata Industries v. CA (1982)
sound. At bottom, the letters “PHILI” visually catch the attention [BATA]
of the consuming public and the use of respondent’s trademark
will likely deceive or cause confusion. The appellant has no Philippine goodwill that would be damaged
by the registration of the mark in the appellee’s favor. Hence, it
“Competent authority” for purposes of determining whether a cannot file an opposition to the registration of appellee.
mark is well-known, means the Court, the Director General, the
Director of the Bureau of Legal Affairs, or any administrative Mirpuri v. CA (1999)
agency or office vested with quasi-judicial or judicial jurisdiction [Barbizon]
to hear and adjudicate any action to enforce the rights to a mark. The opposition in IPC No. 686 was based on specific provisions
of the Trademark Law, i.e., Section 4 (d) on confusing similarity
UFC Philippines, Inc. vs. Barrio Fiesta Manufacturing of trademarks and Section 8 on the requisite damage to file an
Corporation (2016) opposition to a petition for registration. The opposition in IPC No.
[PAPA KETSARAP v. PAPA BOY & DEVICE] 2049 invoked the Paris Convention, particularly Article 6bis
Respondent avers that the word “PAPA” was coined after the thereof, E.O. No. 913 and the two Memoranda of the Minister of
surname of the person who first created and made use of the Trade and Industry. This opposition also invoked Article 189 of
mark. Admittedly, while “PAPA” is a surname, it is more widely the Revised Penal Code which is a statute totally different from
known as a term of endearment for one’s father. Respondent the Trademark Law.
cannot, therefore, claim exclusive ownership over and singular
use of the term. Causes of action which are distinct and independent from each
other, although arising out of the same contract, transaction, or
Somboonsakdikul v. Orlane (2017) state of facts, may be sued on separately, recovery on one being
[ORLANE v. LALANE] no bar to subsequent actions on others. The mere fact that the
A trademark is defined under Section 121.1 of RA 8293 as any same relief is sought in the subsequent action will not render the
visible sign capable of distinguishing the goods. It is susceptible judgment in the prior action operative as res judicata, such as
to registration if it is crafted fancifully or arbitrarily and is capable where the two actions are based on different statutes. Res
of identifying and distinguishing the goods of one manufacturer judicata therefore does not apply to the instant case and
or seller from those of another. respondent Court of Appeals did not err in so ruling.

G. Application for Registration 6. Issuance and Publication Certificate

1. Application - after opposition and payment of fee
2. Assignment of Application Number and Filing Date
3. Examination 7. Duration of Certificate
4. Publication - 10 YEARS
5. Opposition - Provided that the registrant shall file declaration of actual use
th
6. Issuance and Publication Certificate within 1 year from the 5 anniversary of the registration
7. Duration of Certificate
8. Voluntary Cancellation of Certificate Renewal:
9. Correction of Mistakes 1. Within 6 months before the expiration
10. Renewal 2. After 6 months after expiration upon payment of additional
fees
à124.2 - declaration of actual use, may file initially without
actual use but must show actual use after 8. Voluntary Cancellation of Certificate
à 131 – Priority Right 9. Correction of Mistakes

CARLOS | IPL 18
10. Renewal G. Application for Registration
1. Application
H. Madrid Protocol Sec. 3, IPC
- Allows application in one member country, and you can avail of
that filing in other member states Section 3. International Conventions and Reciprocity. - Any person who is
- Single filing a national or who is domiciled or has a real and effective industrial
establishment in a country which is a party to any convention, treaty or
Intellectual Property Association of the Philippines vs. Ochoa agreement relating to intellectual property rights or the repression of unfair
(2016) competition, to which the Philippines is also a party, or extends reciprocal
rights to nationals of the Philippines by law, shall be entitled to benefits to
There is no conflict between the Madrid Protocol and the IP the extent necessary to give effect to any provision of such convention,
Code. The IPOPHL actually requires the designation of the treaty or reciprocal law, in addition to the rights to which any owner of an
resident agent when it refuses the registration of a mark. Local intellectual property right is otherwise entitled by this Act. (n)
representation is further required in the submission of the
Declaration of Actual Use, as well as in the submission of the Sections 124 (and its sub-paragraphs), 125, 126, 128, 130 (and its
license contract. subparagraphs), IPC

The Madrid Protocol accords with the intent and spirit of the IP
Section 124. Requirements of Application. - 124.1. The application for the
Code, particularly on the subject of the registration of
registration of the mark shall be in Filipino or in English and shall contain
trademarks. The Madrid Protocol does not amend or modify the
the following:
IP Code on the acquisition of trademark rights considering that
the applications under the Madrid Protocol are still examined
according to the relevant national law, In that regard, the (a) A request for registration;
IPOPHL will only grant protection to a mark that meets the local (b) The name and address of the applicant;
registration requirements. (c) The name of a State of which the applicant is a national or
where he has domicile; and the name of a State in which the
applicant has a real and effective industrial or commercial
establishment, if any;
(d) Where the applicant is a juridical entity, the law under which
it is organized and existing;
(e) The appointment of an agent or representative, if the
applicant is not domiciled in the Philippines;
(f) Where the applicant claims the priority of an earlier
application, an indication of:
i) The name of the State with whose national office the
earlier application was filed or if filed with an office
other than a national office, the name of that office,
ii) The date on which the earlier application was filed,
and
iii) Where available, the application number of the
earlier application;
(g) Where the applicant claims color as a distinctive feature of
the mark, a statement to that effect as well as the name or
names of the color or colors claimed and an indication, in
respect of each color, of the principal parts of the mark which are
in that color;
(h) Where the mark is a three-dimensional mark, a statement to
that effect;
(i) One or more reproductions of the mark, as prescribed in the
Regulations;
(j) A transliteration or translation of the mark or of some parts of
the mark, as prescribed in the Regulations;
(k) The names of the goods or services for which the registration
is sought, grouped according to the classes of the Nice
Classification, together with the number of the class of the said
Classification to which each group of goods or services belongs;
and
(l) A signature by, or other self-identification of, the applicant or
his representative.

124.2. The applicant or the registrant shall file a declaration of actual use
of the mark with evidence to that effect, as prescribed by the Regulations
within three (3) years from the filing date of the application. Otherwise, the
application shall be refused or the mark shall be removed from the
Register by the Director.

124.3. One (1) application may relate to several goods and/or services,
whether they belong to one (1) class or to several classes of the Nice
Classification.

124.4. If during the examination of the application, the Office finds factual
basis to reasonably doubt the veracity of any indication or element in the
application, it may require the applicant to submit sufficient evidence to
remove the doubt. (Sec. 5, R.A. No. 166a)

CARLOS | IPL 19
Section 125. Representation; Address for Service. - If the applicant is not in Section 123.1(e) of this Act, that is not registered in the Philippines,
domiciled or has no real and effective commercial establishment in the may, against an identical or confusingly similar mark, oppose its
Philippines, he shall designate by a written document filed in the Office, the registration, or petition the cancellation of its registration or sue for unfair
name and address of a Philippine resident who may be served notices or competition, without prejudice to availing himself of other remedies
process in proceedings affecting the mark. Such notices or services may provided for under the law.
be served upon the person so designated by leaving a copy thereof at the
address specified in the last designation filed. If the person so designated
131.4. In like manner and subject to the same conditions and
cannot be found at the address given in the last designation, such notice or
requirements, the right provided in this section may be based upon a
process may be served upon the Director. (Sec. 3, R.A. No. 166a)
subsequent regularly filed application in the same foreign country:
Provided, That any foreign application filed prior to such subsequent
Section 126. Disclaimers. - The Office may allow or require the applicant application has been withdrawn, abandoned, or otherwise disposed of,
to disclaim an unregistrable component of an otherwise registrable mark without having been laid open to public inspection and without leaving any
but such disclaimer shall not prejudice or affect the applicant's or owner's rights outstanding, and has not served, nor thereafter shall serve, as a
rights then existing or thereafter arising in the disclaimed matter, nor such basis for claiming a right of priority. (Sec. 37, R.A. No. 166a)
shall disclaimer prejudice or affect the applicant's or owner's right on
another application of later date if the disclaimed matter became distinctive
239.2. Marks registered under Republic Act No. 166 shall remain in force
of the applicant's or owner's goods, business or services. (Sec. 13, R.A.
but shall be deemed to have been granted under this Act and shall be due
No. 166a)
for renewal within the period provided for under this Act and, upon renewal
shall be reclassified in accordance with the International Classification.
Section 128. Single Registration for Goods and/or Services. - Where Trade names and marks registered in the Supplemental Register under
goods and/or services belonging to several classes of the Nice Republic Act No. 166 shall remain in force but shall no longer be subject to
Classification have been included in one (1) application, such an renewal.
application shall result in one registration. (n)
2. Assignment of Application Number and Filing Date Sec. 127, IPC
Section 130. Signature and Other Means of Self-Identification. - 130.1.
Where a signature is required, the Office shall accept:
Section 127. Filing Date. - 127.1. Requirements. - The filing date of an
application shall be the date on which the Office received the following
(a) A hand-written signature; or indications and elements in English or Filipino:

(b) The use of other forms of signature, such as a printed or (a) An express or implicit indication that the registration of a
stamped signature, or the use of a seal instead of a hand-written mark is sought;
signature: Provided, That where a seal is used, it should be (b) The identity of the applicant;
accompanied by an indication in letters of the name of the (c) Indications sufficient to contact the applicant or his
signatory. representative, if any;
(d) A reproduction of the mark whose registration is sought; and
(e) The list of the goods or services for which the registration is
130.2. The Office shall accept communications to it by telecopier, or by
sought.
electronic means subject to the conditions or requirements that will be
prescribed by the Regulations. When communications are made by
telefacsimile, the reproduction of the signature, or the reproduction of the 127.2. No filing date shall be accorded until the required fee is paid. (n)
seal together with, where required, the indication in letters of the name of
the natural person whose seal is used, appears. The original
Sec. 132 (and its sub-paragraphs), IPC
communications must be received by the Office within thirty (30) days from
date of receipt of the telefacsimile.
Section 132. Application Number and Filing Date. - 132.1. The Office shall
examine whether the application satisfies the requirements for the grant of
130.3. No attestation, notarization, authentication, legalization or other
a filing date as provided in Section 127 and Regulations relating thereto. If
certification of any signature or other means of self-identification referred to
the application does not satisfy the filing requirements, the Office shall
in the preceding paragraphs, will be required, except, where the signature
notify the applicant who shall within a period fixed by the Regulations
concerns the surrender of a registration. (n)
complete or correct the application as required, otherwise, the application
shall be considered withdrawn.
Sec. 124.2, IPC Sec. 131 (and its sub-paragraphs), IPC (Claim of Priority
Date) Sec. 239.2, IPC
132.2 Once an application meets the filing requirements of Section 127, it
shall be numbered in the sequential order, and the applicant shall be
124.2. The applicant or the registrant shall file a declaration of actual use informed of the application number and the filing date of the application will
of the mark with evidence to that effect, as prescribed by the Regulations be deemed to have been abandoned. (n)
within three (3) years from the filing date of the application. Otherwise, the
application shall be refused or the mark shall be removed from the
Register by the Director. 3. Examination
Sec. 133 (and its sub-paragraphs), IPC Sec. 126, IPC Sec. 129, IPC

Section 131. Priority Right. - 131.1. An application for registration of a

mark filed in the Philippines by a person referred to in Section 3, and who Section 133. Examination and Publication. - 133.1. Once the application
previously duly filed an application for registration of the same mark in one meets the filing requirements of Section 127, the Office shall examine
of those countries, shall be considered as filed as of the day the whether the application meets the requirements of Section 124 and the
application was first filed in the foreign country. mark as defined in Section 121 is registrable under Section 123.

131.2. No registration of a mark in the Philippines by a person described in 133.2. Where the Office finds that the conditions referred to in Subsection
this section shall be granted until such mark has been registered in the 133.1 are fulfilled, it shall upon payment of the prescribed fee, forthwith
country of origin of the applicant. cause the application, as filed, to be published in the prescribed manner.

131.3. Nothing in this section shall entitle the owner of a registration 133.3. If after the examination, the applicant is not entitled to registration
granted under this section to sue for acts committed prior to the date on for any reason, the Office shall advise the applicant thereof and the
which his mark was registered in this country: Provided, That, reasons therefor. The applicant shall have a period of four (4) months in
notwithstanding the foregoing, the owner of a well-known mark as defined which to reply or amend his application, which shall then be re-examined.

CARLOS | IPL 20
The Regulations shall determine the procedure for the re-examination or which shall be registered marks, numbered in the order of their
revival of an application as well as the appeal to the Director of registration, and all transactions in respect of each mark, required to be
Trademarks from any final action by the Examiner. recorded by virtue of this law.

133.4. An abandoned application may be revived as a pending application 137.2. The registration of a mark shall include a reproduction of the mark
within three (3) months from the date of abandonment, upon good cause and shall mention: its number; the name and address of the registered
shown and the payment of the required fee. owner and, if the registered owner's address is outside the country, his
address for service within the country; the dates of application and
registration; if priority is claimed, an indication of this fact, and the number,
133.5. The final decision of refusal of the Director of Trademarks shall be
date and country of the application, basis of the priority claims; the list of
appealable to the Director General in accordance with the procedure fixed
goods or services in respect of which registration has been granted, with
by the Regulations. (Sec. 7, R.A. No. 166a)
the indication of the corresponding class or classes; and such other data
as the Regulations may prescribe from time to time.
Section 126. Disclaimers. - The Office may allow or require the applicant
to disclaim an unregistrable component of an otherwise registrable mark
137.3. A certificate of registration of a mark may be issued to the assignee
but such disclaimer shall not prejudice or affect the applicant's or owner's
of the applicant: Provided, That the assignment is recorded in the Office. In
rights then existing or thereafter arising in the disclaimed matter, nor such
case of a change of ownership, the Office shall at the written request
shall disclaimer prejudice or affect the applicant's or owner's right on
signed by the owner, or his representative, or by the new owner, or his
another application of later date if the disclaimed matter became distinctive
representative and upon a proper showing and the payment of the
of the applicant's or owner's goods, business or services. (Sec. 13, R.A.
prescribed fee, issue to such assignee a new certificate of registration of
No. 166a)
the said mark in the name of such assignee, and for the unexpired part of
the original period.
Section 129. Division of Application. - Any application referring to several
goods or services, hereafter referred to as the "initial application," may be
137.4. The Office shall record any change of address, or address for
divided by the applicant into two (2) or more applications, hereafter
service, which shall be notified to it by the registered owner.
referred to as the "divisional applications," by distributing among the latter
the goods or services referred to in the initial application. The divisional
applications shall preserve the filing date of the initial application or the 137.5. In the absence of any provision to the contrary in this Act,
benefit of the right of priority. (n) communications to be made to the registered owner by virtue of this Act
shall be sent to him at his last recorded address and, at the same, at his
last recorded address for service. (Sec. 19, R.A. No. 166a)
4. Publication Sec. 133.2, IPC

Section 138. Certificates of Registration. - A certificate of registration of a

133.2. Where the Office finds that the conditions referred to in Subsection
mark shall be prima facie evidence of the validity of the registration, the
133.1 are fulfilled, it shall upon payment of the prescribed fee, forthwith
registrant's ownership of the mark, and of the registrant's exclusive right to
cause the application, as filed, to be published in the prescribed manner.
use the same in connection with the goods or services and those that are
related thereto specified in the certificate. (Sec. 20, R.A. No. 165)
5. Opposition Sections 134 and 135, IPC
Section 139. Publication of Registered Marks; Inspection of Register. -
Section 134. Opposition. - Any person who believes that he would be 139.1. The Office shall publish, in the form and within the period fixed by
damaged by the registration of a mark may, upon payment of the required the Regulations, the marks registered, in the order of their registration,
fee and within thirty (30) days after the publication referred to in reproducing all the particulars referred to in Subsection 137.2.
Subsection 133.2, file with the Office an opposition to the application. Such
opposition shall be in writing and verified by the oppositor or by any person
139.2. Marks registered at the Office may be inspected free of charge and
on his behalf who knows the facts, and shall specify the grounds on which
any person may obtain copies thereof at his own expense. This provision
it is based and include a statement of the facts relied upon. Copies of
shall also be applicable to transactions recorded in respect of any
certificates of registration of marks registered in other countries or other
registered mark. (n)
supporting documents mentioned in the opposition shall be filed therewith,
together with the translation in English, if not in the English language. For
good cause shown and upon payment of the required surcharge, the time Section 144. Classification of Goods and Services. - 144.1. Each
for filing an opposition may be extended by the Director of Legal Affairs, registration, and any publication of the Office which concerns an
who shall notify the applicant of such extension. The Regulations shall fix application or registration effected by the Office shall indicate the goods or
the maximum period of time within which to file the opposition. (Sec. 8, services by their names, grouped according to the classes of the Nice
R.A. No. 165a) Classification, and each group shall be preceded by the number of the
class of that Classification to which that group of goods or services
belongs, presented in the order of the classes of the said Classification.
Section 135. Notice and Hearing. - Upon the filing of an opposition, the
Office shall serve notice of the filing on the applicant, and of the date of the
hearing thereof upon the applicant and the oppositor and all other persons 144.2. Goods or services may not be considered as being similar or
having any right, title or interest in the mark covered by the application, as dissimilar to each other on the ground that, in any registration or
appear of record in the Office. (Sec. 9, R.A. No. 165) publication by the Office, they appear in different classes of the Nice
Classification. (Sec. 6, R.A. No. 166a)
6. Issuance and Publication of Certificate
Sections 136 and 137, IPC Sec. 138, IPC Sec. 139, IPC Sec. 144 (and its Sec. 4.2, IPC
sub-paragraphs), IPC
4.2. The term "technology transfer arrangements" refers to contracts or
Section 136. Issuance and Publication of Certificate. - When the period for agreements involving the transfer of systematic knowledge for the
filing the opposition has expired, or when the Director of Legal Affairs shall manufacture of a product, the application of a process, or rendering of a
have denied the opposition, the Office upon payment of the required fee, service including management contracts; and the transfer, assignment or
shall issue the certificate of registration. Upon issuance of a certificate of licensing of all forms of intellectual property rights, including licensing of
registration, notice thereof making reference to the publication of the computer software except computer software developed for mass market.
application shall be published in the IPO Gazette. (Sec. 10, R.A. No. 165)

7. Duration of Certificate
Section 137. Registration of Mark and Issuance of a Certificate to the
Sec. 145, IPC
Owner or his Assignee. - 137.1. The Office shall maintain a Register in
CARLOS | IPL 21
 146.4. An applicant for renewal not domiciled in the Philippines shall be
Section 145. Duration. - A certificate of registration shall remain in force subject to and comply with the requirements of this Act. (Sec. 15, R.A. No.
for ten (10) years: Provided, That the registrant shall file a declaration of 166a)
actual use and evidence to that effect, or shall show valid reasons based
on the existence of obstacles to such use, as prescribed by the
Regulations, within one (1) year from the fifth anniversary of the date of the
registration of the mark. Otherwise, the mark shall be removed from the
Register by the Office. (Sec. 12, R.A. No. 166a)

8. Voluntary Cancellation of Certificate

Sec. 140, IPC

Section 140. Cancellation upon Application by Registrant; Amendment or

Disclaimer of Registration. - Upon application of the registrant, the Office
may permit any registration to be surrendered for cancellation, and upon
cancellation the appropriate entry shall be made in the records of the
Office. Upon application of the registrant and payment of the prescribed
fee, the Office for good cause may permit any registration to be amended
or to be disclaimed in part: Provided, That the amendment or disclaimer
does not alter materially the character of the mark. Appropriate entry shall
be made in the records of the Office upon the certificate of registration or, if
said certificate is lost or destroyed, upon a certified copy thereof (Sec. 14,
R.A. No. 166)

9. Correction of Mistakes
Sections 142 and 143, IPC
Section 142. Correction of Mistakes Made by the Office. - Whenever a
material mistake in a registration incurred through the fault of the Office is
clearly disclosed by the records of the Office, a certificate stating the fact
and nature of such mistake shall be issued without charge, recorded and a
printed copy thereof shall be attached to each printed copy of the
registration. Such corrected registration shall thereafter have the same
effect as the original certificate; or in the discretion of the Director of the
Administrative, Financial and Human Resource Development Service
Bureau a new certificate of registration may be issued without charge. All
certificates of correction heretofore issued in accordance with the
Regulations and the registration to which they are attached shall have the
same force and effect as if such certificates and their issuance had been
authorized by this Act. (n)

Section 143. Correction of Mistakes Made by Applicant. - Whenever a

mistake is made in a registration and such mistake occurred in good faith
through the fault of the applicant, the Office may issue a certificate upon
the payment of the prescribed fee: Provided, That the correction does not
involve any change in the registration that requires republication of the
mark. (n)

10. Renewal
Sec. 146 (and its sub-paragraphs), IPC
Section 146. Renewal. - 146.1. A certificate of registration may be
renewed for periods of ten (10) years at its expiration upon payment of the
prescribed fee and upon filing of a request. The request shall contain the
following indications:
(a) An indication that renewal is sought;
(b) The name and address of the registrant or his successor-in-
interest, hereafter referred to as the "right holder";
(c) The registration number of the registration concerned;
(d) The filing date of the application which resulted in the
registration concerned to be renewed;
(e) Where the right holder has a representative, the name and
address of that representative;
(f) The names of the recorded goods or services for which the
renewal is requested or the names of the recorded goods or
services for which the renewal is not requested, grouped
according to the classes of the Nice Classification to which that
group of goods or services belongs and presented in the order of
the classes of the said Classification; and
(g) A signature by the right holder or his representative.
146.2. Such request shall be in Filipino or English and may be made at any
time within six (6) months before the expiration of the period for which the
registration was issued or renewed, or it may be made within six (6)
months after such expiration on payment of the additional fee herein
prescribed.
146.3. If the Office refuses to renew the registration, it shall notify the
registrant of his refusal and the reasons therefor.

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