Quiz No.

18 – Intellectual Property Code

I
Cezar works in a car manufacturing company owned by Joab. Cezar is quite innovative and loves
to tinker with things. With the materials and part of the car, he was able to invent a gas-saving
device that will enable cars to consume less gas. Francis, a co-worker, saw how Cezar created
the device and likewise, came up with a similar gadget, also using scrap materials and spare parts
of the company. Thereafter, Francis filed an application for registration of his device with the
Bureau of Patent.

a. Is the gas-saving device patentable? Explain. (3%)

Answer: 2005 Bar

a. Yes, the gas-saving device is patentable. Sec. 21 of IPL provides that in order that a
machine, product, process or improvement of them may be patented it must be new, it
must involve an inventive step and it must be industrially applicable. The invention is
new because it does not form part of prior art; involves an inventive step and
unquestionably industrially applicable for it can be produced as what Francis did though
he used scrap materials instead.
b. Cezar is entitled to the patent. Sec 28 of IPL provides that the right to a patent belongs to
the inventor, his heirs, or assigns. Further, in case the employee made the invention in the
course of his employment contract, the patent belongs to the employee, if the inventive
activity is not a part of his regular duties even if he uses the time, facilities and materials
of the employer [Sec 30 (1)]. In this case, Cezar is the inventor. The inventive activity
was not part of Cezar’s regular duties despite the fact that he uses the time, facilities and
materials of the employer. Francis application, however, should be given priority under
the “first to file” rule, subject to the right of Cezar to have the application canceled within
three months from the decision as the rightful inventor or to file an action to prove his
priority to the invention within one year from publication.
c. No. Sec. 30(1) explicitly provides that in case the employee made the invention in the
course of employment, the patent belongs to the employee, if the inventive activity is not
part of his regular duties even if he uses the time, facilities and materials of the employer.
Joab’s assertion that Cezar and Francis used his materials and company’s time to lay
claim for patent cannot prevail over the clear provision of the law.

II
Supposing Albert Einstein were alive today and he filed with the Intellectual Property Office
(IPO) an application for patent for his theory of relativity expressed in the formula E=mc2. The
IPO disapproved Einstein's application on the ground that his theory of relativity is not
patentable. Is the IPO's action correct? (10%)

Answer: 2006 Bar

Yes. Under the Intellectual Property Code, discoveries, scientific theories and mathematical
methods, are classified to be as "non-patentable inventions." Einstein's theory of relativity falls
within the category of being a non-patentable "scientific theory"(Sec. 22, IPC as amended by
R.A. 9502).

III
Che-che invented a device that can convert rainwater to automobile fuel. She asked Macon, a
lawyer, to assist in getting her invention patented. Macon suggested that they form a corporation
with other friends and have the corporation apply for a patent, 80% of the shares of stock thereof
to be subscribed by Che-che and 5% by Macon. The corporation was formed and the patent
application was filed. However, Che-che died 3 months later of a heart attack.

Franco, the estranged husband of Che-che, contested the application of the corporation and filed
his own patent application as the sole surviving heir of Che-che. Decide the issue with reasons.
(10%)

Answer: 1990 Bar

The estranged husband of Che-che cannot successfully contest the application. The right over
inventions accrue from the moment of creation and as a right it can lawfully be assigned. Once
the title thereto is vested in the transferee, the latter has the right to apply for its registration. The
estranged husband of Che-che, if not disqualified to inherit, merely would succeed to the interest
of Che-che.

IV
K-9 Corporation, a foreign corporation alleging itself to be the registered owner of trademark
“K-9” and logo “K”, filed an Inter Partes case with the Intellectual Property Office against Kanin
Corporation for the cancellation of the latter’s mark “K-9” and logo “K.” During the pendency of
the case before the IPO, Kanin Corporation brought suit against K-9 Corporation before the RTC
for infringement and damages. Could the action before the RTC prosper? Why? (10%)

Answer: 2003 Bar

Yes, the action before the RTC can prosper. According to Sec. 151.2 of the IPC, the filing of a
suit to enforce the registered mark with the proper court or agency shall exclude any other court
or agency from assuming jurisdiction over a subsequently filed petition to cancel the same mark.
On the other hand, the earlier filing of petition to cancel the mark with the Bureau of Legal
Affairs shall not constitute a prejudicial question that must be resolved before an action to
enforce the rights to same registered mark may be decided. The issues raised before the different
the IPO and the RTC are different. The issue raised before the IPO is whether or not the
cancellation of the subsequent trademark is proper because of the prior ownership of the disputed
mark by K-9. While the issue raised before the RTC pertains to infringement. Furthermore, an
action for infringement or unfair competition, as well as the remedy of injunction and relief for
damages, is explicitly and unquestionably within the competence and jurisdiction of ordinary
courts (Shangri-la International Hotel Management v. Makati Shangri-la Hotel and Resort Inc.,
G.R. No. 111580. June 21, 2001).

V
S Development Corporation sued Shangrila Corporation for using the “S” logo and the
tradename “Shangrila.” The former claims that it was the first to register the logo and the
tradename in the Philippines and that it had been using the same in its restaurant business.
Shangrila Corporation counters that it is an affiliate of an international organization which has
been using such logo and tradename “Shangrila” for over 20 years. However, Shangrila
Corporation registered the tradename and logo in the Philippines only after the suit was filed.

a. Which of the two corporations has a better right to use the logo and the tradename?
Explain. (5%)
b. How does the international affiliation of Shangrila Corporation affect the outcome of the
dispute? Explain. (5%)
Answer: 2005 Bar

a. S Corporation. Sec. 122 of the IPC provides that the rights in a trademark are acquired
through valid registration. Actual prior use in commerce in the Philippines has been
abolished as a condition for the registration of a trademark (Record of the Senate, Vol. II,
No. 29, 8 Oct.1996; Journal of the House of Representatives, No. 35. 12 Nov. 1996, 34).
b. Shangrila’s international affiliation shall result in a decision favorable to it. The Paris
Convention mandates that protection should be afforded to internationally known marks
as signatory to the Paris Convention, without regard as to whether the foreign corporation
is registered, licensed or doing business in the Philippines. Shangrila’s separate
personalities from their mother corporation cannot be an obstacle in the enforcement of
their rights as part of the Kuok Group of Companies and as official repository, manager
and operator of the subject mark and logo. Besides, R.A. No. 166 did not require the
party seeking relief to be the owner of the mark but "any person who believes that he is
or will be damaged by the registration of a mark or trade name." (Shangri-la International
Hotel Management v. Developers Group of Companies, Inc. G.R. No. 159938).

VI
X, a dealer of low grade oil, to save on expenses, uses the containers of different companies.
Before marketing to the public his low grade oil, X totally obliterates and erases the brands or
marks stenciled on the containers. Y brings an action against X for unfair competition upon its
discovery that its containers have been used by X for his low grade oil. Is there unfair
competition? State briefly your reasons. (10%)

Answer 1988 Bar

No. There is no unfair competition, unfair competition is passing off of one’s goods as those of
another and requires fraudulent intent on the part of the user. These elements are not present in
the problem.

VII
Felix copyrighted the oil painting showing the oath taking of Pres. C. Aquino and Vice-President
S. Laurel after the EDSA revolution. Val engaged an artist to paint the same scene for use as
picture postcards. Val then started sending the picture postcards to his friends abroad. Is there a
violation of Felix’s copyright? Reasons. (10%)

Answer: 1989 Bar

While Felix can have a copyright on his own painting which is expressive of his own artistic
interpretation of the event he has portrayed, the scene or the event itself however, is not
susceptible to exclusive ownership. Accordingly, there would be no violation of Felix’s
copyright if another painter were to do the similar work.

VIII
X copyrighted a scientific research paper consisting of 50 pages dealing with the Tasadays. Y
wrote a 100-page review of X’s paper criticizing X’s findings and dismissing X’s story as a
hoax. Y’s review literally reproduced 90% of X’s paper. Can X sue Y for infringement of his
copyright? (10%)

Answer: 1989 Bar

Yes. The Copyright Law provides that to an extent compatible with fair practice and justified by
scientific, critical, informatory or educational purpose, it is permissible to make quotations or
excerpts from a work already made accessible to the public. Such quotations may be utilized in
their original form or in translation. Viewed from the foregoing, a review by another that
“literally reproduced 90%” of the research work done by X may no longer be considered as fair
play, and X can sue Y for the violation of the copyright.
 IX
Miss Solis wrote a script for Regal Films for the movie “One Day—Isang Araw”. Ms. Badiday,
while watching the movie in Ermita Theatre, discovered that the story of the movie is exactly
similar to an unpublished copyrighted autobiography which she wrote. Ms. Badiday sued Miss
Solis for infringement of copyright. It was however, conclusively proven that Miss Solis was not
aware that the autobiography of Ms. Badiday was protected by a copyright. Is Miss Solis liable?
State briefly your reasons. (10%)

Answer: 1988 Bar

Yes, Miss Solis may be held liable. Animus furandi or intention to pirate is not an element of
infringement; hence, an honest intention is no defense to an action for infringement.

X
May a person have photocopies of some pages of the book of Professor Rosario made without
violating the copyright law? (10%)

Answer: 1998 Bar

Yes, a person may photocopy some of pages of Professor Rosario’s book for as long as it is not
for public use or distribution and it does not copy the substantial text or “heart” of the book. It is
considered as fair use of the copyrighted work.