TRADEMARK

1. RA 8293 – significant changes in the law on trademark

a. The requirement of prior use of mark as a requisite for the filing of trademark
registration has been removed
b. Use or registration in the Philippines of well-known marks is no longer required for its
protection to similar goods. If the well-known marks are registered, such registration
can prohibit its use even to non-related products
c. Supplemental register abolished
2. Trademark
a. A distinctive mark of authenticity through which the merchandise of a particular
producer or manufacturer may be distinguished from that of others
i. its sole function is to designate distinctively the origin of the products to which
it is attached.
b. RA 8293 – Sec. 121
i. "Mark" means any visible sign capable of distinguishing the goods (trademark)
or services (service mark) of an enterprise and shall include a stamped or
marked container of goods
ii. "Collective mark" means any visible sign designated as such in the application
for registration and capable of distinguishing the origin or any other common
characteristic, including the quality of goods or services of different enterprises
which use the sign under the control of the registered owner of the collective
mark
iii. "Trade name" means the name or designation identifying or distinguishing an
enterprise
1) Sec. 165.2
a) Notwithstanding any laws or regulations providing for any
obligation to register trade names, such names shall be
protected, even prior to or without registration, against any
unlawful act committed by third parties.
b) In particular, any subsequent use of the trade name by a third
party, whether as a trade name or a mark or collective mark, or
any such use of a similar trade name or mark, likely to mislead
the public, shall be deemed unlawful.
c. Service mark - it is similar to a trademark but it is used in the sale or advertising of
services to identify and distinguish the services of one company from those of others.
3. Functions of a Mark
a. A merchandising shortcut which induces a purchaser to select what he wants, or what
he has been led to believe he wants
 b. To convey through the mark, in the minds of potential customers, the desirability of the
commodity upon which it appears
c. As per Mirpuri v. CA –
i. To point out distinctly the origin of ownership of the goods to which it is affixed
ii. To secure to him, who has been instrumental in bringing into the market a
superior article of merchandise, the fruit of his industry and skill
iii. To assure the public that they are procuring the genuine article;
iv. to prevent fraud and imposition
v. To protect the manufacturer against substitution and sale of an inferior and
different articles as his product
d. Dissenting of J. Florentino in Philip Morris v. CA –
i. They indicate origin or ownership of the articles to which they are attached
ii. They guarantee that those articles come up to a certain standard of quality
iii. They advertise the articles they symbolize
4. Concept of origin
a. As per Ang v. Teodoro –
i. The test employed by the courts to determine whether non-competing goods
are not of the same class is confusion as to the origin of the goods of the second
user
1) Although the two no-competing articles may be classified under two
different classes because they are deemed not to possess the same
descriptive properties, they would, nevertheless, be held by the courts
to belong to the same class if the simultaneous use on them of identical
or closely similar trade-marks would be likely to cause confusion as to
the origin, or personal source, of the second user’s goods.
2) Considered as not falling under the same class if they are so dissimilar
or so foreign to each other as to make it unlikely that the purchaser would
think the first used mad e the second user’s goods.
ii. Based on equity and fair dealing
1) There can be unfair competition or unfair trading even if the goods are
non-competing, and that such unfair trading can cause injury or damage
to the first user of a given trademark
a) By prevention of the natural expansion of his business
b) By having his business reputation confused with and put at the
mercy of the second user
2) When noncompetitive products are sold under the same mark, the
gradual whittling away or dispersion of the identity and hold upon the
public mind of the mark created by its first user, inevitably results
3) Original owner is entitled to
 a) the preservation of the valuable link between him and the public
that has been created by his ingenuity and the merit of his wares
or services
b) protection, since there is damage to him from confusion of
reputation or goodwill in the mind of the public as well as from
confusion of goods
4) When a well-known trademark is adopted by another even for a totally
different class of goods, it is done to get the benefit of the reputation and
advertisements of the originator of said mark, to convey to the public a
false impression of some supposed connection between the
manufacturer of the article sold under the original mark and the new
articles being tendered to the public under the same or similar mark
a) The registered trademark owner may use his mark on the same
or similar products, in different segments of the market, and at
different price levels depending on variations of the products for
specific segments of the market [McDo v. Big Mak]
i). Likely to lead to a confusion of source, as where
prospective purchasers would be misled into thinking that
the complaining party has extended his business into the
field or in any way connected with the activities of the
infringer; or when it forestalls the normal potential
expansion of his business
ii). The registered trademark owner enjoys protection in
product and market areas that are the normal potential
expansion of his business
5) “A self-respecting person does not remain in the shelter of another but
builds one of his own.”
5. Spectrum of distinctiveness
a. Generic marks –
i. commonly used as the name or description of a kind of goods
ii. constitute common descriptive name of an article or substance or the genus of
which the particular product is a species
iii. refer to the basic nature of the wares or services provided rather than to the
more idiosyncratic characteristics of a particular product
iv. not legally protectable
b. Descriptive marks –
i. convey the characteristics, functions, qualities or ingredients of a product to one
who has never seen it or does not know it exists
ii. clearly denotes what goods or services are provided in such a way that the
consumer does not have to exercise powers of perception or imagination
1) Doctrine of secondary meaning – a word or phrase originally
incapable of exclusive appropriation with reference to an article on the
market, because geographically or otherwise descriptive, might
 nevertheless have been used so long and so exclusively by one
producer with reference to his article that, in that trade and to that branch
of the purchasing public, the word or phrase has come to mean that the
article was his product
c. Suggestive term –
i. require imagination, thought and perception to reach a conclusion as to the
nature of the goods
ii. subtly connote something about the product
iii. eligible for protection in the absence of secondary meaning
d. Arbitrary marks – bears no logical relation to the actual characteristics of the product
it represents
e. Fanciful or specially coined terms –
6. How rights to a mark are acquired
a. Re: actual prior use – under Sec. 2, RA 166, as amended by RA 865 - What are
registrable. Trademarks, tradenames and service marks owned by persons,
corporations, partnerships or associations domiciled in the Philippines and by persons,
corporations, partnerships or associations domiciled in any foreign country may be
registered in accordance with the provisions of this Act; PROVIDED, That said
trademarks, tradenames, or service marks are actually in use in commerce and
services not less than two months in the Philippines before the time the
applications for registration are filed; And provided, further, That the country of
which the applicant for registration is a citizen grants by law substantially similar
privileges to citizens of the Philippines, and such fact is officially certified, with a
certified true copy of the foreign law translated into the English language, by the
government of the foreign country to the Government of the Republic of the
Philippines.
i. Sec. 20 – a certificate of registration of a mark or trade-name shall be prima
facie evidence of the validity of the registration, the registrant's ownership of
the mark or trade-name, and of the registrant's exclusive right to use the same
in connection with the goods, business or services specified in the certificate,
subject to any conditions and limitations stated therein.
b. Sec. 122 – the rights in a mark shall be acquired through registration made validly in
accordance with the provision of RA 8293.
i. Sec. 138 - A certificate of registration of a mark shall be prima facie evidence
of the validity of the registration, the registrant's ownership of the mark, and of
the registrant's exclusive right to use the same in connection with the goods or
services and those that are related thereto specified in the certificate.
1) Notice that tradename is not included here
c. Sec. 1, RA 623 – Persons engaged or licensed to engaged in the manufacture, bottling
or selling of soda water, mineral or aerated waters, cider, milk, cream, or other lawful
beverages in bottles, boxes, casks, kegs, or barrels, and other similar containers,
with their names or the names of their principals or products, or other marks of
ownership stamped or marked thereon, may register with the Philippine Patent
Office a description of the names or are used by them, under the same conditions,
 rules, and regulations, made applicable by law or regulation to the issuance of
trademarks.
7. How rights to a tradename are acquired
a. Sec. 165.2(a) – notwithstanding any laws or regulations providing for any obligation to
register trade names, such names shall be protected, even prior to or without
registration, against any unlawful act committed by third parties.
b. Sec. 165.2(b) – In particular, any subsequent use of the trade name by a third party,
whether as a trade name or a mark or collective mark, or any such use of a similar
trade name or mark, likely to mislead the public, shall be deemed unlawful.
8. Non-registrable marks
a. Sec. 123 –
i. Consists of
1) immoral, deceptive or scandalous matter, or
2) matter which may disparage or falsely suggest a connection with
persons, living or dead, institutions, beliefs, or national symbols, or bring
them into contempt or disrepute
ii. Consists of the flag or coat of arms or other insignia of the Philippines or any of
its political subdivisions, or of any foreign nation, or any simulation thereto
iii. Consists of
1) a name, portrait or signature identifying a particular living individual
a) EXCEPT by his written consent,
2) the name, signature, or portrait of a deceased President of the
Philippines, during the life of his widow, if any,
a) EXCEPT by written consent of the widow
iv. Is identical with a registered mark belonging to a different proprietor or a mark
with an earlier filing or priority date, in respect of:
1) The same goods or services, or
2) Closely related goods or services, or
3) If it nearly resembles such a mark as to be likely to deceive or cause
confusion;
v. Is (a) IDENTICAL with, or (b) CONFUSINGLY SIMILAR to, or (c) constitutes
a TRANSLATION of a mark
1) which is considered by the competent authority of the Philippines to be
WELL-KNOWN internationally and in the Philippines
2) WHETHER OR NOT it is registered here, as being already the mark of
a person other than the applicant for registration,
3) and used for IDENTICAL or SIMILAR goods or services:
a) PROVIDED, That in determining whether a mark is well-known,
account shall be taken of the knowledge of the relevant sector
 of the 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 mark
vi. Is (a) IDENTICAL with, or (b) CONFUSINGLY SIMILAR to, or (c) constitutes
a TRANSLATION of a mark –
1) considered by the competent authority of the Philippines to be WELL-
KNOWN internationally and in the Philippines,
2) which is REGISTERED in the Philippines
3) with respect to goods or services which are NOT SIMILAR to those with
respect to which registration is applied for
a) PROVIDED, that use of the mark in relation to those goods or
services would indicate a CONNECTION between those goods
or services, and the owner of the registered mark
b) PROVIDED FURTHER, that the interests of the owner of the
registered mark are likely to be DAMAGED by such use
vii. Is likely to mislead the public, particularly as to the
1) nature, quality, characteristics or geographical origin of the goods or
services
viii. Consists exclusively of SIGNS THAT ARE GENERIC for the goods or services
that they seek to identify
ix. Consists exclusively of signs or of indications that have become
CUSTOMARY or USUAL to designate the goods or services in everyday
language or in bona fide and established TRADE PRACTICE
x. Consists exclusively of signs or of indications that may serve in trade to
designate the kind, quality, quantity, intended purpose, value,
geographical origin, time or production of the goods or rendering of the
services, or other characteristics of the goods or services
xi. Consists of SHAPES that may be necessitated by technical factors or by the
nature of the goods themselves or factors that affect their intrinsic value
xii. Consists of COLOR alone,
1) UNLESS defined by a given form
xiii. Is contrary to PUBLIC ORDER or MORALITY
9. Principles in trade marks
a. Well-known marks doctrine
i. Art. 6bis, Paris Convention (well-known marks)
1) The countries of the Union undertake, ex officio if their legislation so
permits, or at the request of an interested party, to refuse or to cancel
the registration, and to prohibit the use, of a trademark
a) which constitutes
i). a reproduction,
 ii). an imitation, or
iii). a translation,
b) liable to create confusion,
c) of a mark considered by the competent authority of the country of
registration or use to be well known in that country as being
already the mark of a person entitled to the benefits of this
Convention and
d) used for identical or similar goods.
e) These provisions shall also apply when the essential part of the
mark constitutes a reproduction of any such well–known mark or
an imitation liable to create confusion therewith.
2) A period of at least five years from the date of registration shall be
allowed for requesting the cancellation of such a mark. The countries of
the Union may provide for a period within which the prohibition of use
must be requested.
3) No time limit shall be fixed for requesting the cancellation or the
prohibition of the use of marks registered or used in bad faith
ii. Same goods [Sec. 123(e)]
1) Is (a) IDENTICAL with, or (b) CONFUSINGLY SIMILAR to, or (c)
constitutes a TRANSLATION of a mark
a) which is considered by the competent authority of the
Philippines to be WELL-KNOWN internationally and in the
Philippines
b) WHETHER OR NOT it is registered here, as being already the
mark of a person other than the applicant for registration,
c) and used for IDENTICAL or SIMILAR goods or services:
i). PROVIDED, That in determining whether a mark is well-
known, account shall be taken of the knowledge of the
relevant sector of the 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 mark
iii. Dissimilar goods [Sec. 123(f)]
1) Is (a) IDENTICAL with, or (b) CONFUSINGLY SIMILAR to, or (c)
constitutes a TRANSLATION of a mark –
a) considered by the competent authority of the Philippines to be
WELL-KNOWN internationally and in the Philippines,
b) which is REGISTERED in the Philippines
c) with respect to goods or services which are NOT SIMILAR to
those with respect to which registration is applied for
 i). PROVIDED, that use of the mark in relation to those goods
or services would indicate a CONNECTION between those
goods or services, and the owner of the registered mark
ii). PROVIDED FURTHER, that the interests of the owner of
the registered mark are likely to be DAMAGED by such
use
2) Theory of dilution [Levi Strauss v. Clinton] –
a) Trademark dilution is the lessening of the capacity of a famous
mark to identify and distinguish goods or services, regardless of
the presence or absence of: (1) competition between the owner
of the famous mark and other parties; or (2) likelihood of
confusion, mistake or deception.
b) Subject to the principles of equity, the owner of a famous mark is
entitled to an injunction against another person’s commercial use
in commerce of a mark or trade name, if such use begins after the
mark has become famous and causes dilution of the distinctive
quality of the mark.
c) This is intended to protect famous marks from subsequent uses
that blur distinctiveness of the mark or tarnish or disparage it.
d) To be eligible for protection from dilution, there has to be a finding
that:
i). the trademark sought to be protected is famous and
distinctive;
ii). the use by the other began after the complainant’s mark
became famous; and
iii). such subsequent use defames petitioners mark.
10. Confusion of goods v. confusion of business
a. Confusion of goods – when an otherwise prudent purchaser is induced to purchase
one product in the belief that he is purchasing another, in which case defendant’s
goods are then bought as the plaintiff’s and its poor quality reflects badly on the
plaintiff’s reputation.
b. Confusion of business – wherein the goods of the parties are different but the
defendant’s product can reasonably (though mistakenly) be assumed to originate from
the plaintiff, thus deceiving the public into believing that there is some connection
between the plaintiff and defendant which, in fact, does not exist
11. Colorable imitation – that which denotes such as close or ingenious imitation as to be
calculated to deceive ordinary persons, or such a resemblance to the original as to deceive
an ordinary purchaser giving such attention as a purchaser usually gives, as to cause him to
purchase the one supposing it to be the other
12. Tests to determine confusing similarity between marks
a. Dominancy test – focuses on the similarity of the prevalent features of the competing
trademarks which might cause confusion or deception and thus constitutes
infringement
 b. Holistic test – the entirety of the marks in question must be considered in determining
confusing similarity
13. Nice classification
 PATENT

1. Three-fold PURPOSE [Pearl & Dean v. SM] –

a. Seeks to foster and reward invention
b. Promotes disclosures of inventions to stimulate further invention and to permit the
public to practice the invention once the patent expires
c. Stringent requirements for patent protection seek to ensure that ideas in the public
domain remain there for free use of the public
2. Patentable inventions
a. Elements or requirements of patentability [Sec. 21] –
i. Any technical solution of a problem in any field of human activity which is new
1) Novelty
2) Inventive step
3) Industrial applicability
ii. NOVELTY
1) Shall NOT be considered new if it forms part of a PRIOR ART [Sec. 23]
a) Prior Art [Sec. 24] – shall consist of
i). Everything which
(1) has been made available to the public anywhere in
the world,
(2) before the filing date or the priority date of the
application claiming the invention;
ii). The whole contents of [those that are actually subject of
application for patent registration] –
(1) an application for a patent, utility model, or industrial
design registration, published in accordance with
this Act,
(2) filed or effective in the Philippines,
(3) with a filing or priority date that is earlier than the
filing or priority date of the application:
(4) PROVIDED, That the application which has validly
claimed the filing date of an earlier application under
Section 31 [Right of Priority] of this Act, shall be
prior art with effect as of the filing date of such
earlier application:
(5) Provided FURTHER, That the applicant or the
inventor identified in both applications are not one
and the same.
 2) Non-prejudicial disclosure – novelty requires that the things is not yet
known to anyone besides the inventor; if made known to the public thru
disclosures, this may prejudice the applicant on the ground of LACK OF
NOVELTY UNLESS the disclosure was [Sec. 25] –
a) Made during the twelve (12) months preceding the filing date or
the priority date of the application and was made by –
i). The inventor;
(1) Also means any person who, at the filing date of
application, had the right to the patent.
ii). A patent office and the information was contained –
(a) in another application filed by the inventor and
should not have been disclosed by the office, or
(b) in an application filed without the knowledge or
consent of the inventor by a third party which
obtained the information directly or indirectly from
the inventor
iii). A third party which obtained the information directly or
indirectly from the inventor.
(1) Memo Circ No. 4, Series of 2002 – “third party”
excludes all patent offices as well as the WIPO
which publishes patent application filed through the
PCT
iii. INVENTIVE STEP
1) An invention involves an inventive step if, having regard to prior art, it is
NOT obvious to a person skilled in the art at the time of the filing date or
priority date of the application claiming the invention. [Sec. 26.1]
a) Graham factors [Graham v. John Deere Co.] – obviousness
should be determined by looking at –
i). The scope and content of the prior art;
ii). The level of ordinary skill in the art;
iii). The differences between the claimed invention and the
prior art; and
iv). Objective evidence of non-obviousness.
(1) Commercial success
(2) Long-felt but unsolved needs
(3) Failure of others
2) In the case of drugs and medicines, there is NO inventive step if the
invention results from [Sec. 26.2, added by RA 9502]
a) the mere discovery of a new form or new property of a known
substance which does not result in the enhancement of the known
efficacy of that substance, or
 b) the mere discovery of any new property or new use for a known
substance, or
c) the mere use of a known process unless such known process
results in a new product that employs at least one new reactant.
iv. INDUSTRIAL APPLICABILITY
1) An invention that can be produced and used in any industry [Sec. 27]
3. Non-patentable inventions [Sec. 22]
a. Excluded from patentability –
i. Discoveries, scientific theories and mathematical methods;
ii. Schemes, rules and methods of performing mental acts, playing games or
doing business, and programs for computers;
iii. Methods for treatment of the human or animal body by surgery or therapy and
diagnostic methods practiced on the human or animal body. This provision shall
not apply to products and composition for use in any of these methods;
iv. Plant varieties or animal breeds or essentially biological process for the
production of plants or animals. This provision shall not apply to micro-
organisms and non-biological and microbiological processes.
Provisions under this subsection shall not preclude Congress to consider
the enactment of a law providing sui generis protection of plant varieties and
animal breeds and a system of community intellectual rights protection:
v. Aesthetic creations; and
vi. Anything which is contrary to public order or morality.
b. To prevent commercial exploitation of which is necessary to protect public order or
morality, including protection of human, animal or plant life or health or to avoid serious
prejudice to the environment
4. Ownership of a patent
a. Right to a patent belongs to [Sec. 28] –
i. the inventor,
ii. his heirs, or
iii. assigns.
When two (2) or more persons have jointly made an invention, the right to a
patent shall belong to them jointly.
b. First-to-file rule [Sec. 29]
i. If two (2) or more persons have made the invention SEPARATELY and
INDEPENDENTLY of each other, the right to the patent shall belong to the –
1) person who filed an application for such invention, or
2) where two or more applications are filed for the same invention, to the
applicant who has the earliest filing date or, the earliest priority date.
 c. Inventions created pursuant to a commission [Sec. 30]
i. The person who commissions the work shall own the patent, unless
otherwise provided in the contract.
ii. In case the EMPLOYEE made the invention in the course of his employment
contract, the patent shall belong to:
1) The employee, if the inventive activity is not a part of his regular duties
even if the employee uses the time, facilities and materials of the
employer.
2) The employer, if the invention is the result of the performance of his
regularly-assigned duties, unless there is an agreement, express or
implied, to the contrary.
d. Right of Priority –
i. An application for patent filed by any person who has previously applied for the
same invention in another country 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 [Sec. 31] –
1) PROVIDED, that:
a) the local application expressly claims priority;
b) it is filed within twelve (12) months from the date the earliest
foreign application was filed; and
c) a certified copy of the foreign application together with an English
translation is filed within six (6) months from the date of filing in
the Philippines.\
e. Filing Date –
i. The filing date of a patent application shall be the date of receipt by the Office
of at least the following elements [Sec. 40.1] –
1) an express or implicit indication that a Philippine patent is sought;
2) Information identifying the applicant; and
3) Description of the invention and one (1) or more claims in Filipino or
English.
ii. If any of these elements is not submitted within the period set by the
Regulations, the application shall be considered withdrawn [Sec. 40.2]
f. Term of Patent –
i. Twenty (20) years from filing date of the application [Sec. 54]
5. Application for a patent
a. Shall be in Filipino or English and containing the following [Sec. 32.1] –
i. Request for the grant of a patent
1) shall contain [Sec. 34] –
a) a petition for the grant of the patent,
 b) the name and other data of the applicant,
c) the inventor and the agent and the title of the invention
ii. Description of the invention
1) The application shall disclose the invention in a manner sufficiently clear
and complete for it to be carried out by a person skilled in the art.
2) Where the application concerns –
a) a microbiological process or the product thereof and
b) involves the use of a micro-organism which cannot be sufficiently
disclosed in the application in such a way as to enable the
invention to be carried out by a person skilled in the art,
c) and such material is not available to the public –
the application shall be supplemented by a deposit of such
material with an international depository institution.
iii. Drawings necessary for the understanding of the invention
iv. One or more claims
1) The application shall contain one (1) or more claims which shall define
the matter for which protection is sought. Each claim shall be clear and
concise, and shall be supported by the description. [Sec. 36]
v. Abstract
1) Shall consist of [Sec. 37] –
a) a concise summary of the disclosure of the invention as
contained in the description,
b) claims and drawings
c) in preferably not more than one hundred fifty (150) words.
2) It must be drafted in a way which allows the clear understanding of
a) the technical problem,
b) the gist of the solution of that problem through the invention, and
c) the principal use or uses of the invention.
The abstract shall merely serve for technical information.
b. Application must identify the inventor [Sec. 32.1] –
i. If applicant not inventor – may be required to submit said authority
ii. An applicant who is not a resident of the Philippines must appoint and maintain
a resident agent or representative in the Philippines upon whom notice or
process for judicial or administrative procedure relating to the application for
patent or the patent may be served. [Sec. 33]
c. The applicant shall, at the request of the Director, furnish him with the DATE and
NUMBER of any application for a patent filed by him abroad (foreign application)
 relating to the same or essentially the same invention as that claimed in the application
filed with the Office and other documents relating to the foreign application. [Sec. 39]
d. Unity of Invention
i. The application shall relate to one invention only or to a group of inventions
forming a single general inventive concept.
ii. If several independent inventions which do not form a single general inventive
concept are claimed in one application – the Director may require that the
application be restricted to a single invention.
iii. A later application filed for an invention divided out shall be considered as
having been filed on the same day as the first application:
1) Provided, that the later application is filed within four (4) months after
the requirement to divide becomes final or within such additional time,
not exceeding four (4) months, as may be granted:
2) Provided further, that each divisional application shall not go beyond
the disclosure in the initial application.
e. Grant of a patent on an application that did not comply with the requirement of unity of
invention shall NOT be a ground to cancel the patent.
6. Grounds for cancellation of a patent
a. Any interested person may, upon payment of the required fee, petition to cancel the
patent or any claim thereof, or parts of the claim, on any of the following grounds [Sec.
61] –
i. That what is claimed as the invention is NOT new or Patentable;
ii. That the patent does not disclose the invention in a manner sufficiently clear
and complete for it to be carried out by any person skilled in the art; or
iii. That the patent is contrary to public order or morality.
7. Remedy of the true and actual inventor
a. If a person, who was deprived of the patent without his consent or through fraud is
declared by final court order or decision to be the true and actual inventor [Sec. 68] –
i. the court shall order for his substitution as patentee, or
ii. at the option of the true inventor, cancel the patent, and award actual and other
damages in his favor if warranted by the circumstances.
8. Rights conferred by a patent
a. A patent shall confer on its owner the following exclusive rights [Sec. 71] –
i. Where the subject matter of a patent is a product, to restrain, prohibit and
prevent any unauthorized person or entity from making, using, offering for sale,
selling or importing that product;
ii. Where the subject matter of a patent is a process, to restrain, prevent or prohibit
any unauthorized person or entity from using the process, and from
manufacturing, dealing in, using, selling or offering for sale, or importing any
product obtained directly or indirectly from such process.
 iii. He/she shall also have the [Sec. 71.2]
1) right to assign, or
2) transfer by succession the patent,
3) and to conclude licensing contracts for the same
9. Limitations of patent right
a. The owner of a patent has no right to prevent third parties from performing, without his
authorization, the acts referred to in Section 71 hereof in the following circumstances:
[Sec. 72]
i. Using a patented product which has been put on the market in the Philippines
by the owner of the product, or with his express consent, insofar as such use is
performed after that product has been so put on the said market;
ii. Where the act is done privately and on a non-commercial scale or for a non-
commercial purpose: Provided, That it does not significantly prejudice the
economic interests of the owner of the patent;
iii. Where the act consists of making or using exclusively for the purpose of
experiments that relate to the subject matter of the patented invention;
iv. Where the act consists of the preparation for individual cases, in a pharmacy or
by a medical professional, of a medicine in accordance with a medical
prescription or acts concerning the medicine so prepared;
v. Where the invention is used in any ship, vessel, aircraft, or land vehicle of any
other country entering the territory of the Philippines temporarily or accidentally:
Provided, That such invention is used exclusively for the needs of the ship,
vessel, aircraft, or land vehicle and not used for the manufacturing of anything
to be sold within the Philippines.
b. Prior user
i. Notwithstanding Section 72 hereof, any prior user, who, in good faith was using
the invention or has undertaken serious preparations to use the invention in his
enterprise or business, before the filing date or priority date of the application
on which a patent is granted, shall have the right to continue the use thereof as
envisaged in such preparations within the territory where the patent produces
its effect. [Sec. 73.1]
ii. The right of the prior user may only be transferred or assigned together with his
enterprise or business, or with that part of his enterprise or business in which
the use or preparations for use have been made. [Sec. 73.2]
c. Use by the government [Sec. 74]
i. A Government agency or third person authorized by the Government may
exploit the invention even without agreement of the patent owner where:
1) The public interest, in particular, national security, nutrition, health or the
development of other sectors, as determined by the appropriate agency
of the government, so requires; or
 2) A judicial or administrative body has determined that the manner of
exploitation, by the owner of the patent or his licensee is anti-
competitive.
ii. The use by the Government, or third person authorized by the Government
shall be subject, mutatis mutandis, to the conditions set forth in Sections 95 to
97 and 100 to 102.
10. Utility models
11. Registrability
12. Rights of holder
a. Industrial design
13. Patent infringement
a. Tests
i. Literal infringement
1) literal infringement – resort must be had, in the first instance, to the
words of the claim. If accused matter clearly falls within the claim,
infringement is made out and that is the end of it; to determine whether
the particular item falls within the literal meaning of the patent claims, the
court must juxtapose the claims of the patent and the accused product
within the overall context of the claims and specifications, to determine
whether there is exact identity of all material elements.
ii. Doctrine of equivalents
1) Infringement also occurs when a device appropriates a prior invention
by incorporating its innovative concept and, albeit with some
modification and change, performs substantially the same function in
substantially the same way to achieve substantially the same result.
2) Recognizing that the logical fallback position of one in the place of
defendant is to aver that his product is different from the patented one,
courts have adopted this which recognizes that minor modifications in a
patented invention are sufficient to put the item beyond the scope of
literal infringement.
3) To permit the imitation of a patented invention which does not copy any
literal detail would be to convert the protection of the patent grant into a
hollow and useless thing. Such imitation would leave room for — indeed
encourage — the unscrupulous copyist to make unimportant and
insubstantial changes and substitutions in the patent which, though
adding nothing, would be enough to take the copied matter outside the
claim, and hence outside the reach of the law.
b. Civil and criminal action
c. Prescriptive period
d. Defenses in action for infringement
14. Licensing
a. Voluntary
 b. Compulsory
15. Assignment and transmission of rights