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INTELLECTUAL PROPERTY to the Dir Gen, such that, if you lose your case to the BLA, your
remedy is to file an appeal to Dir Gen.
What is the principal law that governs Intellectual Properties?
o R.A. No. 8293 AS AMENDED What are laws covered by IP?
o Patents
Principal Purpose o Trademarks, Service Marks and Tradenames
o To protect and secure the exclusive rights of scientists, investors o Copyright
and other gifted citizens to their IP and creations, particularly
when beneficial to the people. Patents
o To ensure that the investors/creators will benefit from the o Grant of exclusive right to make use and sell patented object
protection of law in order for them to be encouraged to create personally or through others as well as the grant of right to
more or invent more. effectively prohibit others from practicing the invention or profiting
o It is also cognizant of the fact that science will be developed therefrom without the owner’s consent.
through intellectual property protection.
o The interest of the investors will run contrary to the public but then Are all inventions patentable?
IP must be protected. Their right or entitlement to intellectual o Any technical solution to a problem in any field of human activity,
property is protected, however limited for a given period of time. which is NEW, involves an INVENTIVE STEP and is
INDUSTRIALLY APPLICABLE.
Intellectual Property o Is novelty required for the patentability of an invention/discovery?
o What does TTA mean? The element of novelty is an essential requisite of
An inventor may have a product but he cannot patentability of an invention or discovery.
manufacture such product due to cost consideration. o An invention must possess the essential elements of novelty,
A contract or agreement involving transfer of systematic originality and precedence, and for the patentee to be entitled to
knowledge for the manufacture of a product, the the protection of the invention, which must be new to the world.
application of a process, or lending of a service including o The very first requirement that the applicant must satisfy is the
mgmt contract; and the transfer, assignment or licensing issue of NOVELTY/ORIGINALITY. If it is merely an improvement
of all forms of IP including licensing of computer of an exisiting invention, that will not qualify.
software.
So that the owners of the products in the US, when they Non-patentable = SEC. 22
bring it here in the PI, these products will not be copied,
and will be protected under this arrangement. What is the “First to File Rule”
If two (2) or more persons have made the invention separately and
IPO independently of each other, the right to the patent shall belong to the
o Principal government agency for IP. person who filed an application for such invention, or where two or more
o Functions: 1) issue letters of patent and register utility models; 2) applications are filed for the same invention, to the applicant who has the
examine of registration of marks, geographic indications, etc.; 3) earliest filing date or the earliest priority date.
register TTA and settle disputes; 4) promote the use of patent
information as a tool for technology development; 5) What is the so-called “Right to Priority”? Sec. 31
administratively adjudicate contested proceeding affecting IP o If the application is filed by another inventor in another country,
rights; 6) coordinate with other govt agencies. this rule in priority will be given preference.
o Bureaus of IPO: 1) BoP; 2) BoT; 3) BLA; 4) DITTB; 5) EDP o Requirements: 1) local application expressly claiming priority; 2)
Bureau; 6) administrative financial and personnel services bureau. filed within 12 months from the date of the earliest foreign
o IPO is headed by Dir Gen. In case of appeal in matters of inter application is filed; 3) patent shall be issued in the name of the
partes cases, appeal on the decision of the Bureaus is made only Republic under the seal of the office.
DLSU LAW
TRICIA CRUZ GO2 | 2015-2016
COMMERCIAL LAW REVIEW | ATTY. CENIZA
o Term of patent: 20 years from the filing date of the application Can rights over inventions be assigned/transmitted? Yes. Sec. 103.2
(Sec. 54).
o May patents be cancelled? Yes. On what grounds? 1) invention is TRADEMARK
not new or patentable; 2) patent does not disclose the invention in o Mark, Collective Mark & Trade Name
a manner sufficiently clear and complete o How is a right over a mark acquired? Sec. 122. This is the
o Note that the inventor has to disclose every bit of information distinction between trademark and copyrights. In copyright,
related to his invention. If he fails to do this, the IPO thru the BoP registration is not indispensable. In trademark, however, you do
will deny the application. not apply the same rule. You have to register before you can
o What is the effect of a cancelled patent? Sec. 66 claim ownership.
o Can a patent be surrendered? Sec. 56 o Can the owner of a mark demand for its registration? No. The
owner cannot demand. Registration will only be allowed upon
Remedies available to a true and actual inventor who was deprived of the compliance with the law.
patent without his consent or through fraud: Sec. 68 o What can be used as evidence that the mark has become
distinctive? For you to register a mark, it must have acquired
Rights conferred by a patent: Sec. 71.2 distinctiveness, such that, that mark is already associated with the
product in the minds of the people. The IPO may accept as prima
IP is property in itself therefore it can be assigned or transferred. facie evidence that the mark has become distinctive as used in
connection with the goods or service for 5 years.
Prior User Rule: Sec. 73.1 o What must the applicant file as evidence of substantial and
o You can disqualify the whole world from using their product. The exclusive use? Sec. 124.2
Prior User Rule is a minor exception to such rule. The prior user o Nature of the First to File Rule: the rule that registration of a mark
can continue using his product without being accused of is prevented with the filing of an earlier application for registration.
infringement. This must not, however, be interpreted to mean that ownership
should be based upon an earlier filing date.
Can the government use an invention? Yes. Sec. 74.1 o Does the Philippines adhere to the Paris Convention? Shangri-La
Int’l Hotel Management v. Developers Group of Co., Inc.
Patent Infringement o Is there at time limit for the filing of a petition for cancellation of a
o Remedies of patentee whose rights have been infringed: Sec. registered trademark? None. Shangri-La Int’l Hotel Management
76.2 v. Developers Group of Co., Inc.
o Can a foreign national file an action for infringement? Sec. 77 o Recourse of the owner of a mark that has been abandoned: Sec.
o Is notice of an existing patent a necessary requisite before one 133.4
can recover damages due to infringement? Sec. 80 o Recourse of the person whose right is affected by the registration
o How would you know that a product is patented? Product must of the mark: Pay the required fee and within 30 days after the
indicate that it is patented. When you produce a similar product, publication of the application for the registration of the mark, file
that is already registered, there is already a presumption of with the IPO an opposition to the application for the registration of
infringement. the mark.
o Trademark Infringement: Esso Standard v. CA
What are the defenses available in infringement? o When does trademark infringement exist? When the goods are so
related that the public may be or is actually deceived and misled
Can a criminal action be maintained? Yes. Sec. 84 that they came from the same maker or manufacturer.
copyright, it must be something more than that. It may include o Trademarks relate to distinguishing marks, names and signs that
paintings, sculpture, and writings. identify a product.
o When does protection for original intellectual creations Actual use before application is no longer required
commence? From the moment of their creation. Before, the rule was you have to have your trademark
o What are included in the protection? used in commerce before you can register. Now there is
Take note of ABS-CBN v. Gozon, which involves TV such rule is NO LONGER controlling.
footages. Are they covered by copyright? Term of grant is 10 years BUT renewable. It’s as if you
o What works are not protected? Sec. 175 have a perpetual right over your trademark.
o Can government works be protected? Sec. 176. Affidavit of actual use is required to be filed within 3
o Two kinds of copyrights? Economic (Sec. 177) and Moral Rights years from filing of application.
o If there was PAYMENT for the playing of the song, there is Penalty for trademark infringement
copyright infringement if there was no prior approval. However, if
it was just played while you were eating where no fees were o Copyright relates to works on literary and artistic domain.
charged, then there is no infringement. Registration is not an absolute necessity.
o Who owns the copyright over letters? In respect of letters, the Term of protection is the entire lifetime of the creator plus
copyright shall belong to the writer subject to the provisions of Art. 50 years after his death.
723 of the CC. Covers 2 kinds of rights:
Mr. Garcia and Mr. Aquino became lovers. They wrote Economic Rights
several letters for four years til they broke up. Mr. Garcia Moral Rights
asked for the return of the letters. Mr. Aquino told Mr. Ex: Rosanna Roces used to pose nude for
Garcia that the letters exchanged belong to her because painters. The usual agreement provides that
“it reminds her of Mr. Garcia”. Who owns the letters? The after Miss Roces is painted, the painting
letters belong to the one to whom it is addressed (Art. belongs to her. What is the so-called economic
723). right in this example? The economic right
o What is the nature of copyright infringement? Columbia Pictures belongs to the painter such that the painter can
v. CA say, “You cannot copy my creation. That’s my
o Is it a valid defense for the infringer that he did not know that he painting.” But the actual painting itself belongs
was infringing a copyright? No. Habana v. Robles to Rosanna Roces.
o What is the difference between letters of patent and copyright? Penalty for infringement
Pearl & Dean v. Shoemart
An inventor wrote a book about the creation of a certain
medicine. Someone manufactured medicine similar to
the one described in the book. Was there infringement?
None. Registration only covers the book not the formula.
LETTERS OF CREDIT & TRUST RECEIPTS items, he should return to the owner whatever amount derived from the
same.
Imagine a situation like this (Transnational Business Transaction):
Letters of Credit
What is a LC? PNB v. SMC, 2014
C – Issuing Bank (IB) o “It is an instrument issued by a bank in behalf of a customer
authorizing the beneficiary to draw a draft or drafts which should
A – Importer B – Supplier be honored upon presentation to the bank, if drawn in accordance
Medical equipments – CitiScan Machine US-Based Company with the terms and conditions specified in the LC”.
o Purpose: To insure certainty of payment by substituting the
undertaking of the bank with the undertaking of the customer of
Collecting Bank/Notifying Bank the bank under the underlying contract.
o Does the IB have any discretion? Can it refuse payment on the Trust Receipt Law
basis of a notice issued by the buyer? No. PD 115 is the governing law.
o Dispute between B and S should not affect the LC.
o Take note three relationships: (1) B & S; (2) B & IB; (3) IB & S. What is a TR? Written or printed document signed by the entrustee in favor
Each one is independent of the other. If there is an issue between of the entruster whereby thre latter releases goods/documents/instruments
the parties, it should not affect the other relationships. In over which he holds absolute title or security interest to the possession of
construing independence principle, have a good handle of the 3 the former, upon the trustee’s promise to hold said goods in trust for the
relationships. entruster and to sell or dispose of the goods.
o The relationship between the S and the IB
- Example: Suppose the LC indicates that certain TR Law defines a TR as a transaction between the entruster and entrustee
documents have to be submitted in its original form, and whereby the entruster who owns or holds absolute title or secure interest
the S provided the IB the documents but could not over certain goods/documents/instruments, releases them to the entrustee
produce anymore the original. The goods, however, were upon execution of the document called TR, where the latter binds himself
delivered to the warehouse of the B. Nung ayaw ibigay to sell or dispose of the goodd/documents/instruments and use the
nung banko, the S contacted B and told him not to get proceeds to pay the amount due the entruster.
the goods because it hasn’t been paid by the IB. Is S
correct? No. Independence Principle. B does not care One of its most important purposes is “to declare the misuse and/or
about the agreement between S and IB. missapropriation of goods/proceeds realized from the sale of goods,
o The LC is separate and distinct from the underlying transaction. documents or instruments released under TR as a criminal offense
(PNB v. SMC) punishable under the law”.
Fraud Principle is the exception. It exists when the S (beneficiary) for the Violation of TR gives rise to a criminal charge of Estafa.
purpose on drawing on the credit, fraudulently presents to the confirming
bank, documents that contain expressly/impliedly material representations TR Transaction: Sec. 4, PD 115
of fact that to his knowledge are untrue.
o What is the effect of the B’s failure to procure thre LC to the main TR Transaction: Anthony Ng v. Pp
contract? Can the buyer rescind the contract? No. The LC is o Money received under the obligation involving the duty to turn it
independent from the Contact of Sale (CoS). Failure of the buyer over to the owner of the merchandise sold.
to open the LC does not prevent birth of the CoS. o Merchandise received under the obligation to return it to the
o In case the buyer was not able to pay its obligation under the LC, owner.
can the bank take possession of the goods covered by the said
LC? No. The opening of the LC did not vest ownership of the Principal parties: Entruster & Entrustee
goods in the bank in the absence of a TR agreement. (Transfield
v. Hydro Corp)
Entruster: Ching v. SoJ. It is entitled to the proceeds of the goods
o LoC v. Guarantee: these two commercial devices share a
common purpose. In guarantee, upon the obligor’s default, the
Who is the owner of the articles subject of trust receipt? Entrustee. Loan
guarantor or the surety undertakes to complete the obligor’s
and security features. To consider the entruster the owner from the
performance. Notice of default is not required in the case of the
inception of the transaction would be to disregard the loan feature thereof.
LC. (Prudential Bank v. IAC)
(Rosario Textile Mills Corp v. Home Bankers Savings)
o Insure the goods for their total value against loss, fire, theft,
pilferage or other casualties; What is the effect of novation of a TR agreement? Philippine Bank v. Ong
o Keep said goods or the proceeds therefrom whether in money or Can deposits in savings account opened by the buyer subsequent to the
whatever form, separate and capable of indentification as property TR be applied to outstanding obligation under the TR account? No.
of the entruster; Metrobank v. Tonda, 2000.
o Return the goods, documents or instruments in the event of non-
sale or upon demand of the entruster; In a TR transaction, can the entruster (w/ actual and juridical possession of
o Observe all other terms and conditions of the TR not contrary to the goods) subsequently avail of the right to demand from the entrustee the
the provisions of the decree. deficiency of the account covered by the TR? Yes. Entruster may cancel
(Ching v. SoJ) the trust, take possession of the goods/documents/instruments subject of
the trust.
BAR: There is an agreement between S and B. There was a TR issued.
While in the process of delivering the goods to the entrustee, the goods Mere possession does not amount to foreclosure.
were hijacked. The entrustee is claiming that it doesn’t have liability
because there is no act of dominion of the goods due to non-delivery. If at If a trust receipt was issued for the purchase of construction of materials to
all, there was an act of God. The law requires that if you are the entrustee, be used for the construction of an immovable property, will the transaction
you need to insure the goods. So B’s failure to insure the goods will not be considered a loan or a TR transaction? Loan not a trust receipt (LBP v.
allow him to escape the provisions of the PD 115. Perez, 2012)
If you are the borrower, pag nabenta ung isang unit ng Camry at yun ay
fini-nance ng Metrobank, huwag mo ibayad kay BDO kasi Metrobank
nagbayad niyan.
What is the effect of the violation of any of the undertakigs of the decree?
Metrobank v. Gonzales, 2009
What is the loan & security feature of the TR transaction? A bank extends
a loan covered by the LC, with the TR as a security transaction. TR is the
security agreement pursuant to which the bank acquires security interest
over the goods. (Sps. Vintola v. Insular Bank)