[REVIEWER] Intellectual Property Law

 

Q. WHO MAY EXPLOIT THE INVENTION WITHOUT AGREEMENT OF THE PATENT OWNER?

A. A government agency or third person authorized by the government.

Q. IN WHAT CASES OR INTANCES THE GOVERNMENT OR THIRD PERSON AUTHORIZED BY THE GOVERNMENT MAY EXPLOIT THE INVENTION?

A. Where:

1. The public interest

ü  National Security

ü  Nutrition

ü  Health

ü  Development of other sector requires;

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

In the case of drugs and medicines:

3. there is a national emergency or other circumstance of extreme urgency requiring the use of the invention;

4. there is a public non-commercial use of the patent by the patentee, without satisfactory reason;

5. the demand for the patented article in the Philippines is not being met to an adequate extent and on reasonable terms, as determined by the Secretary of the Department of Health.

 

NOTE:

GR. The use by the government or third person authorized by the government shall be subject, where applicable, to the following provisions:

1.      In situations of national emergency or other circumstances of extreme urgency as provided under S. 74 (c), the right holder shall be notified as soon as reasonably practicable.

2.      In case of public non-commercial use of the patent by the patentee, without satisfactory reason, as provided under S. 74.1 (d), the right holder shall be informed promptly: Provided, That, the Government or third person authorized by the Government, without making a patent search, knows or has demonstrable ground to know that a valid patent is or will be used by or for the government.

3.      If the demand for the patented article in the Philippines is not being met to an adequate extent and on reasonable terms as provided under S. 74.1 (e), the right holder shall be informed promptly.

4.      The scope and duration of such use shall be limited to the purpose for which it was authorized.

5.      Such used shall be non-exclusive.

6.      The holder shall be paid adequate remuneration in the circumstances of each case, taking into account the economic value of the authorization; and

7.      The existence of a national emergency and other circumstances of extreme urgency, referred to under S. 74.1 (c), shall be subject to the determination of the President of the Philippines for the purposes of determining the need for such use or other exploitation, which shall be immediately executory.

ETR: Unless otherwise provided herein (S. 74)

Q. WHAT IS THE BASIS FOR THE GOVERNMENT USE?

A. Government use is pursuant to its power of eminent domain.

Q. WHAT IS PATENT INFRINGEMET?

A. Infringement is the:

1.      making, using offering for sale, selling, or importing a patented product or a product obtained directly or indirectly from a patented process; or

2.      the use of a patented process without the authorization of the patentee.

Q. WHAT ARE THE REMEDIES OF THE PATENT HOLDER IN CASE HIS RIGHTS ARE INFRINGED?

A. The patent holder then has the following remedies in case his rights are infringed:

1.      To bring civil action before a court to recover damages plus attorney’s fee and other expenses of litigation from the infringer and to secure an injunction for the protection of his rights.

NOTES: If the damages are inadequate or cannot be readily ascertained with reasonable certainty, the court may award by way of damages reasonable royalty.

 

The court may award damages in a sum above the amount found as actual damages sustained: Provided, That the award does not exceed three times the amount of actual damages.

 

The limitation of action for damages is only 4 years. (S. 79)

 

Q. WHEN DAMAGES CANNOT BE RECOVERED?

A. Damages cannot be recovered for acts of infringement committed before the infringer had known, or had a reasonable grounds to know of the patent.

 

Q. WHEN THERE COULD BE A PRESUMPTION OF KNOWLEDGE?

 

A. There is a presumption of knowledge if on the patented product , or on the container or package, or on the advertising material, the words “Philippine Patent" with the number of the patent are placed. (S. 80)

2. The court may order that the infringing goods, materials and implements predominantly used in the infringement be disposed of outside the channels of commerce or destroyed, without compensation.

3. Anyone who actively induces the infringement of a patent or provides the infringer with a component of a patented product or of a product produced because of a patented process knowing it to be especially adopted for infringing the patented invention and not suitable for substantial non-infringing use shall be liable as a contributory infringer and shall be jointly and shall be jointly and severally liable with the infringer.

NOTE: Any foreign national or juridical entity who meets the requirements of S.3 and not engaged in business in the Philippines, which a patent has been granted may bring an action for infringement of patent, whether or not it is licensed to do business in the Philippines.

Q. WHAT ARE THE TEST TO DETERMINE INFRINGEMENT?

A.

1. LITERAL INFRINGEMENT

- In using literal infringement as a test, resort must be had, in the first instance, to the words of the claim.

- If the accused matter clearly falls within the claim, infringement is made out and that is the end of it.

NOTE: To determine whether the particular item falls within the meaning of the patent claims, the court must juxtapose the claims of parent and the accused product within the overall context of the claims and specifications, to determine whether there is exact identity of all material elements.

 

2.      DOCTRINE OF EQUIVALENTS

It recognizes that minor modifications in patented invention are sufficient to put the item beyond the scope of literal infringement.

 

An 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.

 

NOTE: The reason for the doctrine of equivalents is that 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.

 

(1)   Such imitation would leave room for 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 law.

NOTE: It should be noted that  the requirement of Article 34 to provide a disputable presumption applies only if:

(1)   The product obtained by the patented process is new: or

(2)   There is a substantial Likelihood that the identical product was made by the process and the process owner has not been able through reasonable effort to determine the process used.

Thus, where either of these two provisos does not obtain, members shall be free to determine the appropriate method of implementing the provisions of TRIPS within their own internal systems and processes.

Q. WHAT ARE THE DEFENSES IN AN  ACTION FOR INFRINGEMENT?

A. In addition to other defenses available to him, Defendant may show the invalidity of the patent on any of the grounds on which a petition of cancellation can be brought. These grounds are:

1. That what is claimed as the invention is not new or patentable;

2. 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

3. That the patent is contrary to public order or morality.

NOTE: If the court finds the patent invalid, it shall cancel it and the Director of Legal Affairs upon receipt of the final judgment of the court,  shall record that fact in the register of the Office and shall publish a notice to that effect in the IPO Gazette.

VOLUNTARY LICENSING

A patent holder has the right to enter into technology transfer arrangements or TTAs.

Q. WHAT ARE TECHNOLOGY TRANSFER ARRANGEMENTS or TTAs?

A. This refers to contracts or agreements involving the transfer of systematic knowledge for the manufacture of a product, the application of a process, or rendering  of a service oncljding management contracts; and the transfer, assignment or licensing of all forms of intellectual property rights, including licensing of computer  software except computer software developed for mass market.

 

(2)   Parties to the contract are free to agree on the terms of the TTA.

(3)   The grant of a license shall nkt prevent the licensor from granting further licenses to 3^rd person nor from exploiting the subject matter  of the TTA himself, in the absence of any provision to the contrary.

(4)   The licensee shall be entitled to exploit the subject matter of the TTA during its whole term.

The Director of the Document, Information and Technology Transfer Bureau shall exercise quasi-judicial jurisdiction in the settlement of disputes between parties to a TTA arising from technology transfer payments, including the fixing of appropriate amount or rate of royalty.

 

Q. WHAT ARE THE PROVISIONS THAT SHALL GE DEEMED PRIMA FACIE TO HAVE AN ADVERSE EFFECT ON COMPETITION AND TRADE HENCE PROHIBITED?

 

A. The following provisions shall be deemed prima facie to have an adverse effect on competition and trade hence prohibited.

1. Those which is imposed upon the licensee the obligation to acquire from specific source capital goods, intermediate products, raw materials, and other technologies, or of permanently employing personnel indicated by the licensor;

2. Those where the licensor reserves the right to fix the sale proces of the products manufactured on the basis of the license;

3. Those that contain restrictions regarding the volume and structure of production;

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

Q. WHAT IS COMPULSORY LICENSING?

A. The government may grant a license to exploit a patented invention, even without the agreement of the patent owner, in favor of any person who has shown his capability to exploit the invention, under any of the following circumstances:

1. National emergency or other corcumstances of extreme urgency;

2. Where the public interest, in particular, national security, nutrition, health or the development of other vital sectors of the national economy so requires; or

3. Where a judicial or administrative body has determined that the manner of exploitation by the owner of the patent or his license is anti-competitive;

4. In case of public non-commercial use of the patent by the patentee, without satisfactory reason;

5. If the patented invention is not being worked in the Philippines on a commercial scale, although capable of being worked, without satisfactory reason: Provided, That the importation of the patented article shall constitute working or using the patent;

6. Where the demand for the patented drugs and medicines is not being met to an adequate extent and on reasonable terms as determined by Secretary of the Department of Health.

Q. CAN A SPECIAL COMPULSORY LICENSE