Intellectual Property Reviewer

INTELLECTUAL PROPERTY REVIEWER By: Dhang Teoxon RA 8293- Intellectual property Code -

Approved by President Fidel Ramos January 1, 199 It has no retroactive effect

State policies

trademarks established reputation and popularity thus causing confusion on the purchasing public who associate Gallo trademarks with Gallo winery. Mighty corp. contends that Gallo cigarettes and Gallo winery are totally unrelated products; the latter’s registration certificate covered wines only not cigarettes and sold through different channels of trade.

It shall protect and secure the exclusive rights of scientists, inventors, artists and other gifted citizen to their intellectual property and creations, particularly when beneficial to the people The state shall promote the diffusion of knowledge and information for the promotion of national development and progress and the common good. To streamline administrative procedures of registering patents, trademarks and copyright To liberalize the registration on the transfer of technology To enhance the enforcement of intellectual property rights in the Philippines.

The Makati RTC ruled in favor of Mighty corp holding that Gallo’s trademarks reg. certificate covered wines only and that respondent’s wines and petitioner’s cigarettes were unrelated goods.

Case Mighty Corp. and La Campana Fabrica de tobacco Inc. vs. E & J Gallo winery and Andersons Group Inc.

No. It is the trademark law and Paris convention which is applicable and not the INP code

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Facts: Gallo Winery is foreign corporation not doing business in the Philippines but organized and existing under the laws of the state of California. It sells and produces different kinds of wines and brandy products under different registered trademarks including Gallo and Ernest and Julio Gallo wine trademarks. Andersons, Gallo winery’s exclusive wine importer and distributor in the Philippines selling the products in its own name and or its own account. Gallo wine trademark was registered in the Philippine register IPO on November 16, 1979 renewed on November 16, 1991. It also applied for registration of E&J Gallo wine but no record of it being approved. Mighty corp & La Campana & their sister company Tobacco industries are engaged in the cultivation of tobacco products for which they have been using the Gallo cigarette trademark. Gallo winery sued mighty for trademark and tradename infringement and unfair competition. Gallo contends that mighty adapted the Gallo trademark to ride in Gallo winery, E&J gallo

The CA dismissed the petition for certiorari for the denial of the writ of preliminary injunction but the RTC ruled the petitioners liable for TM infringement and unfair competition and enjoined them from using E&J registered trademark Issue: Whether or not RA 8293 was applicable in the case Ruling:

The suit was filed March 12, 1993 for trademark infringement and unfair competition committed during the effectivity of the Paris convention and trademark law. It is a fundamental principle that the validity and obligatory force of law proceed from the fact that it has first been promulgated. A law that is not yet effective cannot be considered as conclusively known by the populace. To make a law binding even before it takes effect may lead to the arbitrary exercise of the legislative power. A new state of law ought to affect the future, not the past. Intellectual Property rights 1. 2. 3. 4. 5. 6. 7.

Copyright and related rights Trademarks and service marks Geographic indications Industrial designs Patents Layout designs of integrated circuits Protection of undisclosed information

Trademarks – any visible sign capable of distinguishing the goods or services of an enterprise and shall include a stamped or marked container of goods. Tradename – the name or designation identifying or distinguishing an enterprise.

Copyright- confined to literary and artistic works which are original intellectual creations in the literary and artistic domain protected from the moment of their creation.

trademark and copyright, unfair competition and damages.

Patentable invention – any technical solution of a problem in any field of human activity which is new involves an inventive step & is industrially applicable.

On appeal, however, the CA reversed the trial court viz:

Doctrine of secondary meaning -

A word or phrase originally incapable of exclusive appropriation with reference to an article in the market might nevertheless have been used for so long & so exclusively by one producer with reference to his article that, in the trade and to that branch of the purchasing public, the word or phrase has come to mean that the article was his property.

Case Pearl and Dean vs Shoemart Inc Facts: Pearl and Dean (Phil.), Inc. is a corporation engaged in the manufacture of advertising display units simply referred to as light boxe. Pearl and Dean was able to secure a Certificate of Copyright Registration over these illuminated display units. Sometime in 1985, Pearl and Dean negotiated with defendant-appellant Shoemart, Inc. (SMI) for the lease and installation of the light boxes in SM City North Edsa. Since SM City North Edsa was under construction at that time, SMI offered as an alternative, SM Makati and SM Cubao, to which Pearl and Dean agreed. Only the contract for SM Makati, however, was returned signed. In 1986, SMI’s house counsel informed Pearl and Dean that it was rescinding the contract for SM Makati due to nonperformance of the terms thereof. Sometime in 1989, Pearl and Dean, received reports that exact copies of its light boxes were installed at SM City and in the fastfood section of SM Cubao. Upon investigation, Pearl and Dean found out that aside from the two (2) reported SM branches, light boxes similar to those it manufactures were also installed in two (2) other SM stores. It further discovered that defendant-appellant North Edsa Marketing Inc. (NEMI). was set up primarily to sell advertising space in lighted display units located in SMI’s different branches. Pearl and Dean sent a letter to both SMI and NEMI enjoining them to cease using the subject light boxes and to remove the same from SMI’s establishments. Upon receipt of the demand letter, SMI suspended the leasing of two hundred twenty-four (224) light boxes and NEMI took down its advertisements for “Poster Ads” from the lighted display units in SMI’s stores. Claiming that both SMI and NEMI failed to meet all its demands, Pearl and Dean filed this instant case for infringement of

RTC decided in favor of P & D

Since the light boxes cannot, by any stretch of the imagination, be considered as either prints, pictorial illustrations, advertising copies, labels, tags or box wraps, to be properly classified as a copyrightable class “O” work, we have to agree with SMI when it posited that what was copyrighted were the technical drawings only, and not the light boxes themselves. Ruling: On the issue of copyright Its claim of copyright infringement cannot be sustained. Copyright, in the strict sense of the term, is purely a statutory right. Being a mere statutory grant, the rights are limited to what the statute confers. It may be obtained and enjoyed only with respect to the subjects and by the persons, and on terms and conditions specified in the statute. Accordingly, it can cover only the works falling within the statutory enumeration or description. P & D secured its copyright under the classification class “O” work. This being so, petitioner’s copyright protection extended only to the technical drawings and not to the light box itself because the latter was not at all in the category of “prints, pictorial illustrations, advertising copies, labels, tags and box wraps.” Stated otherwise, even as we find that P & D indeed owned a valid copyright, the same could have referred only to the technical drawings within the category of “pictorial illustrations.” It could not have possibly stretched out to include the underlying light box. The strict application of the law’s enumeration in Section 2 prevents us from giving petitioner even a little leeway, that is, even if its copyright certificate was entitled “Advertising Display Units.” What the law does not include, it excludes, and for the good reason: the light box was not a literary or artistic piece which could be copyrighted under the copyright law. And no less clearly, neither could the lack of statutory authority to make the light box copyrightable be remedied by the simplistic act of entitling the copyright certificate issued by the National Library as “Advertising Display Units.”

On the issue of patent infringement Petitioner never secured a patent for the light boxes. It therefore acquired no patent rights which could have protected its invention, if in fact it really was. And because it had no patent, petitioner could not legally prevent anyone from manufacturing or commercially using the contraption. To be able to effectively and legally preclude others from copying and profiting from the invention, a patent is a primordial requirement. No patent, no protection. The ultimate goal of a patent system is to bring new designs and technologies into the public domain through disclosure. Ideas, once disclosed to the public without the protection of a valid patent, are subject to appropriation without significant restraint.

On the issue of trademark infringement This issue concerns the use by respondents of the mark “Poster Ads” which petitioner’s president said was a contraction of “poster advertising.” P & D was able to secure a trademark certificate for it, but one where the goods specified were “stationeries such as letterheads, envelopes, calling cards and newsletters”. Petitioner admitted it did not commercially engage in or market these goods. On the contrary, it dealt in electrically operated backlit advertising units and the sale of advertising spaces thereon, which, however, were not at all specified in the trademark certificate. Assuming arguendo that “Poster Ads” could validly qualify as a trademark, the failure of P & D to secure a trademark registration for specific use on the light boxes meant that there could not have been any trademark infringement since registration was an essential element thereof.

problem in any field of human activity which is new, involves an inventive step and is industrially applicable Petitioner has no right to support her claim for the exclusive use of the subject trade name and its container. The name and container of a beauty cream product are proper subjects of a trademark inasmuch as the same falls squarely within its definition. In order to be entitled to exclusively use the same in the sale of the beauty cream product, the user must sufficiently prove that she registered or used it before anybody else did. The petitioner’s copyright and patent registration of the name and container would not guarantee her right to the exclusive use of the same for the reason that they are not appropriate subjects of the said intellectual rights. Consequently, a preliminary injunction order cannot be issued for the reason that the petitioner has not proven that she has a clear right over the said name and container to the exclusion of others, not having proven that she has registered a trademark thereto or used the same before anyone did. Technology transfer agreement -

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Case Elidad Kho vs. Court of Appeals Trademark, copyright and patents are different intellectual property rights that cannot be interchanged with one another. A trademark is 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.] In relation thereto, a trade name means the name or designation identifying or distinguishing an enterprise. Meanwhile, the scope of a copyright is confined to literary and artistic works which are original intellectual creations in the literary and artistic domain protected from the moment of their creation. Patentable inventions, on the other hand, refer to any technical solution of a

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 including management contracts. A licensing contract between an intellectual property right owner, as the licensor and a second party as the licensee who was granted the authority to commercially exploit the same intellectual property right under specified terms and conditions. Failure to comply with the mandatory and prohibited clauses would automatically render the TTA, UNENFORCEABLE. Except in certain cases, it may still be valid if the same is approved and registered with the DITT Bureau.

Case In-N-Out Burger Inc. vs Sehwani Inc Facts: Petitioner IN-N-OUT BURGER, INC., a business entity incorporated under the laws of California, engaged mainly in the restaurant business, but it has never engaged in business in the Philippines. Respondents Sehwani Incorporated and Benita Frites, Inc. are corporations organized in the Philippines. Petitioner filed trademark and service mark applications with the Bureau of Trademarks

(BOT) of the IPO for “IN-N-OUT” and “IN-N-OUT Burger & Arrow Design.” Petitioner later found out that respondent Sehwani, Incorporated had already obtained Trademark Registration for the mark “IN N OUT (the inside of the letter “O” formed like a star).” Petitioner eventually filed before the Bureau of Legal Affairs of the IPO an administrative complaint against respondents for unfair competition and cancellation of trademark registration. Following the filing of its complaint petitioner sent a demand letter directing respondent Sehwani Incorporated to cease and desist from claiming ownership of the mark “IN-N-OUT” and to voluntarily cancel its trademark registration. Petitioner was able to register the mark “Double Double.” It alleged that respondents also used this mark, as well as the menu color scheme. The IPO Director of Legal Affairs rendered a Decision in favor of petitioner. Both parties filed their respective Motions for Reconsideration of the aforementioned Decision, which were denied by the Director on Legal affairs. Upon the denial of its Partial Motion for Reconsideration of the Decision, petitioner was able to file a timely appeal before the IPO Director General which ruled that respondents were guilty of unfair competition. Respondents appealed their case to the Court of Appeals The appellate court declared that Section 163 of the Intellectual Property Code specifically confers upon the regular courts, and not the BLA-IPO, sole jurisdiction to hear and decide cases involving provisions of the Intellectual Property Code, particularly trademarks. Consequently, the IPO Director General had no jurisdiction to rule in its Decision.

Ruling: The Court disagrees with the Court of Appeals. The Court of Appeals erroneously reasoned that Section 10(a) of the Intellectual Property Code, conferring upon the BLA-IPO jurisdiction over administrative complaints for violations of intellectual property rights, is a general provision, over which the specific provision of Section 163 of the same Code, found under Part III thereof particularly governing trademarks, service marks, and tradenames, must prevail. Proceeding therefrom, the Court of Appeals incorrectly concluded that all actions involving trademarks, including charges of unfair competition, are under the exclusive jurisdiction of civil courts.

While Section 163 thereof vests in civil courts jurisdiction over cases of unfair competition, nothing in the said section states that the regular courts have sole jurisdiction over unfair competition cases, to the exclusion of administrative bodies. On the contrary, Sections 160 and 170, which are also found under Part III of the Intellectual Property Code, recognize the concurrent jurisdiction of civil courts and the IPO over unfair competition cases. Case Phil.Pharmawealth Inc. vs Pfizer (Phil.) Inc Facts: Pfizer is the registered owner of Philippine Letters Patent No. 21116 which covers ampicillin sodium/sulbactam sodium (hereafter “Sulbactam Ampicillin”). Ampicillin sodium is a specific example of the broad beta-lactam antibiotic disclosed and claimed in the Patent. It is the compound which efficacy is being enhanced by co-administering the same with sulbactam sodium. Sulbactam sodium, on the other hand, is a specific compound of the formula IA disclosed and claimed in the Patent. Pfizer is marketing Sulbactam Ampicillin under the brand name “Unasyn.” Sometime in January and February 2003, complainants came to know that respondent [herein petitioner] submitted bids for the supply of Sulbactam Ampicillin to several hospitals without the consent of complainants and in violation of the complainants' intellectual property rights. Pfizer wrote the above hospitals and demanded that the latter immediately cease and desist from accepting bids for the supply [of] Sulbactam Ampicillin or awarding the same to entities other than complainants. Complainants, in the same letters sent through undersigned counsel, also demanded that respondent immediately withdraw its bids to supply Sulbactam Ampicillin. Respondents prayed for permanent injunction, damages and the forfeiture and impounding of the alleged infringing products. They also asked for the issuance of a temporary restraining order and a preliminary injunction that would prevent herein petitioner, its agents, representatives and assigns, from importing, distributing, selling or offering the subject product for sale to any entity in the Philippines. Issue: Whether Pfizer still holds monopoly over the substance by virtue of their issued patent

Ruling:

new, involves an inventive step and is industrially acceptable.

No. Section 37 of Republic Act No. (RA) 165, which was the governing law at the time of the issuance of respondents' patent, provides: Section 37. Rights of patentees. A patentee shall have the exclusive right to make, use and sell the patented machine, article or product, and to use the patented process for the purpose of industry or commerce, throughout the territory of the Philippines for the term of the patent; and such making, using, or selling by any person without the authorization of the patentee constitutes infringement of the patent. It is clear from the above-quoted provision of law that the exclusive right of a patentee to make, use and sell a patented product, article or process exists only during the term of the patent. In the instant case, Philippine Letters Patent No. 21116, which was the basis of respondents in filing their complaint with the BLA-IPO, was issued on July 16, 1987. On the basis of the foregoing, the Court agrees with petitioner that after July 16, 2004, respondents no longer possess the exclusive right to make, use and sell the articles or products covered by Philippine Letters Patent No. 21116.

Non-Patentable inventions- inventions which are not patentable and are excluded from patent protection. 1. Discoveries, scientific theories and mathematical methods, and in the case of drugs and medicines, 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 the mere discovery of any new property or new use for a known substance, or the mere use of a known process unless such known process results in a new product that employs at least one reactant. 2. Schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers; 3. 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; 4. Plant varieties or animal breeds or essentially biological process for the production of plants or animals. This provision shall not apply to microorganisms and non-biological and microbiological processes.

Patents (Sec. 21- 120)

5. Aesthetic creations

Patent

6. Anything which is contrary to public order or morality.

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A set of exclusive rights granted by a state to an individual or his assignee for a fixed period of time in exchange for a disclosure of an invention.

Three-fold purpose

Elements of patentability 1. Novelty- an invention shall not be considered new if it forms part of a prior art;

1. To foster and reward invention

2. Inventive step

2. It promotes disclosures of inventions to stimulate further invention and to permit the public to practice the invention once the patent expires;

3. Industrially acceptable

3. The stringent requirements for patent protection seek to ensure that ideas in the public domain remain there for the free use of the public. Ultimate goal of a patent system: To bring new designs and technologies into the public domain through disclosures. Patentable Invention – any technical solution of a problem in any field of human activity which is

Filing Date – only when all the requirements provided under Section 40 are complied with: a. An express or implicit indication that a Philippines patent is sought; b. Information identifying the applicant c. Description of the invention and one more claims in Filipino or English Failure to comply with the requirements, the application shall be considered withdrawn.

If the date of filing cannot be accorded, the applicant shall be given an opportunity to correct the deficiencies, otherwise it shall be considered as withdrawn. Priority date A 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) -

The local application expressly claims priority

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Filed within 12 months from the date the earliest foreign application was filed

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A certified copy of the foreign application together with an English translation is filed within 6 months from the date of filing in the Philippines.

“First to file” Rule -In case of two or more applications for patent over the same invention, an application with latter local filing date may still be the preferred application over a previous local filing date provided that it has an earlier foreign application assuming that the requirements are all complied with.

Ownership of Patent 1. If two or more persons have made the invention separately and independently of each other, the right to the patent shall belong to the person who filed an application for such invention 2. If there are two or more application for the same invention, to the applicant who has the earliest filing date, or the earliest priority date.

Inventions created pursuant to a commission or employment 1. Where the invention is made pursuant to a commission, the person who commissions the work shall be the owner of the patent, unless there was an agreement to the contrary 2. When an invention is made by an employee in the course of the employment contract: a. The employee, if the inventive step is not part of his regular duties even if the employee uses the time and materials of the employer b. 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.

Non-prejudicial disclosure Novelty requires that the thing is not yet known to anyone besides the inventor. There are however disclosure which will not prejudice the application: 1. Made during the 12 months preceding the filing date or the priority of the application; 2. The disclosure was made by any of the ff. persons: a.

The inventor

b. Patent office and the information was contained in i.) another application filed by the inventor and should not have been disclosed by the office. Ii) 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; c. A third party which obtained the information directly or indirectly from the inventor.

Right of Priority A 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) -

The local application expressly claims priority

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Filed within 12 months from the date the earliest foreign application was filed A certified copy of the foreign application together with an English translation is filed within 6 months from the date of filing in the Philippines

Procedure for the grant of patent 1. Filing of the application -

Must be in Filipino or English and shall contain the ff: o

A request for the grant of a patent;

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A description of the invention

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Drawings necessary for the understanding of the invention

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One or more claims

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An abstract

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No patent may be granted, unless the application identifies the inventor. If the applicant is not the inventor, the office may require the submission of said authority.

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The application must disclose the invention is such a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

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An application which concerns a microbiological process and involves the use of microorganism which cannot be sufficiently disclose in the application and such material is not available to the public, such application must be supplemented by a deposit of such material.