STUDY GUIDE ON THE INTELLECTUAL PROPERTY CODE*

I INTELLECTUAL PROPERTY CODE

RA 8923 (1997), as amended by RA 9150 (2001) and RA 9502 (2008).

THE TRIPS AGREEMENT 1.1 Topics International agreements on intellectual property The WTO and TRIPS Agreements 1.2 Case WTO Agreement not unconstitutional Taada, et al. vs. Angara, et al., G.R. No. 118295, May 2, 1997 INTELLECTUAL PROPERTY OFFICE 1.3 Topics Structure and functions (Secs. 5-19) Jurisdiction over IP disputes and appeals (Secs. 7.1[b] and [c], and 10-11) Administrative penalties (Sec. 10.2[b]) Prescriptive period of actions for damages (Secs. 79 and 226) INTELLECTUAL PROPERTY RIGHTS IN GENERAL 1.4 Topics State policies (Sec. 2) Intellectual property rights (Sec. 4.1) Technology transfer arrangements (Sec. 4.2) Reverse reciprocity (Sec. 231) Writ of search and seizure (SC Rule on Search and Seizure in Civil Actions for Infringement of Intellectual Property Rights [A.M. No. 02-1-06-SC, January 30, 2002]) PATENTS 1.5 Topics Amendments to the IPC made by the Universally Accessible Cheaper and Quality Medicines Act of 2008 (RA 9502) Patent exhaustion (national exhaustion vs. international exhaustion)
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Prepared by Prof. Tristan A. Catindig as of May 21, 2011. All rights reserved.

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Parallel importation Evergreening Patentable inventions (Sec. 21) Novelty (Sec. 23) Prior art (Sec. 24) Inventive step or non-obviousness (Secs. 26 and 26.2) Industrial applicability (Sec. 27) Non-patentable inventions (Secs. 22 and 22.1) Programs for computers (Sec. 22.2) Patentability of live, artificially-engineered microorganism (Diamond v. Chakrabarty, 447 U.S. 303 [1980]) Right to a patent (Sec. 28) First-to-file rule (Sec. 29) Commisioned inventions and inventions by employees (Sec. 30) Right of priority (Sec. 31) Contents of application (Secs. 33-37) Description of invention Claim(s) Procedure for grant of patent (Secs. 40-60) Rights conferred by patent (Sec. 71) Term (Sec. 54) Grounds for cancellation of patents (Sec. 61) Remedies of the true and actual inventor (Sec. 68) Limitations on the rights of patentees (Secs. 72, 72.1, 72.3, 72.4, and 74) Patent infringement (Sec. 76.1) Civil action (Sec. 76) Defenses (Secs. 79-81) Burden of proof in infringement of process patent (Sec. 78) Criminal action for repetition of infringement (Sec. 84) Voluntary licensing Prohibited clauses (Sec. 87) Mandatory provisions (Sec. 88) Unenforceability of non-complying technology transfer agreement (Sec. 92) Compulsory licensing Grounds for grant of compulsory license (Sec. 93) Meaning of working a patented invention in the Philippines Interdependence of patents (Sec. 97) Terms and conditions of grant (Sec. 100) Licensees exemption from liability (Sec. 102) Assignment or transfer of patent Form (Sec. 105) Need for recording to bind third parties (Sec. 106.2) Utility models (Sec. 109.1[a]); term (Sec. 109.3) Industrial design (Secs. 112-113); term (Sec. 118) 1.6 Cases
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Tests of infringement Godines v. CA, G.R. No. 97343, September 13, 1993. Compulsory licensing Smith Kline & French Laboratories, Ltd. vs. CA, et al., G.R. No. 121867, July 24, 1997. Patent infringement Creser Precision Systems, Inc. vs. CA, et al., G.R. No. 90828, September 5, 2000. Prohibition against importation or possession of unregistered imported drugs under RA 8203 abrogated by RA 9502 Roma Drug, et al. vs. RTC Guagua, Pampanga, et al., G.R. 149907, April 16, 2009 INDUSTRIAL DESIGNS AND LAYOUT DESIGNS (TOPOGRAPHIES) OF INTEGRATED CIRCUITS 1.7 Topics Definitions of industrial design, integrated circuits, and layout design (Sec. 112 Substantive conditions for protection (Sec. 113) Term (Sec. 118) Rights conferred on registered owner of layout design (Sec. 119[4]) TRADEMARKS 1.8 Topics Concept of distinctiveness Generic marks From inception As a consequence of dilution Inherently distinctive marks Arbitrary marks Fanciful marks Suggestive marks Definitions of marks, collective marks, and trade names (Sec. 121) Acquisition of ownership of marks (Sec. 122) and trade names (Sec. 165) Non-registrable marks (Sec. 123.1) Declaration of actual use (Secs. 124.2 and 145) Tests to determine confusing similarity between marks (Sec. 123.1[d]) Well-known marks (Secs. 123.1[e] and [f], and 147.2) Application requirements and procedure (Secs. 124-144) Classification of goods and services (Secs. 124.1[k] and 144) Disclaimer (Sec. 126) Priority right (Sec. 131) Term (Secs. 145-146) Rights conferred by registration (Sec. 147)
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Use by third parties of names, etc. similar to registered mark (Sec. 148) Assignment and transfer of mark (Sec. 149) Cancellation of registration (Sec. 151) Infringement and remedies (Secs. 155-160) What constitutes infringement (Sec. 155) Damages (Sec. 156) Notice requirement (Sec. 158) Limitations on actions for infringement (Sec. 159) Unfair competition or passing-off (Sec. 168) Trade names or business names (Sec. 165) Collective marks (Sec. 167) Cross-border protection of marks and trade names (Secs. 166 and 169.2) Criminal penalties for infringement, unfair competition, etc. (Sec. 170) 1.9 Cases Holistic test Del Monte Corporation, et al. vs. CA, G.R. 78325, January 25, 1990. Test of dominancy

(a) Asia Brewery vs. CA and San Miguel, G.R. 103543, July 5, 1993; (b) McDonalds vs. Macjoy Fastfood Corporation, G.R. 166115, February 2, 2007.
Protection limited to goods specified in registration certificate (a) Faberge, Inc. vs. IAC and Co Beng Kay, G.R. 71189, November 4, 1992; (b) Canon Kabushiki Kaisha vs. CA, et al., G.R. 120900, July 20, 2000. Trademark infringement, unfair competition, and well-known marks (a) Mighty Corporation, et al. vs. E. J. Gallo Winery, et al., G.R. 154342, July 14, 2004; (b) McDonalds, et al. vs. L. C. Big Mak Burger, Inc., et al., G.R. 143993, August 18, 2004. Hoarding of competitors product containers not unfair competition Coca-Cola Bottlers Phils., Inc. vs. Gomez, G.R. 154491, November 14, 2008. Ginebra San Miguel vs. Ginebra Kapitan Tanduay Distillers, Inc. vs. Ginebra San Miguel, Inc., G.R. 164324, August 14, 2009. Infringement of trade name Coffee Partners, Inc. vs. San Francisco Coffee, G.R. 169504, March 3, 2010. Harvard as both trade name and trademark Fredco Manufacturing vs. President and Fellows of Harvard, G.R. 185917, June 1, 2011.

COPYRIGHTS 1.10 Topics

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Basic principles of copyright (Sec. 181) Works are protected by the sole fact of their creation (Sec. 172.2) Copyright protection shall extend only to expressions of an idea, not to the idea itself (Sec. 175) Copyright is distinct from the material object subject to it (Sec. 181) Copyrightable works Original works (Sec. 172) Derivative works (Sec. 173) Non-copyrightable works (Secs. 175-176) Rights of copyright owner Copyright or economic rights (Sec. 177) Right to proceeds of subsequent transfers or droite de suite (Secs. 200-201) Moral rights (Secs. 193-199) Rules on ownership of copyright (Secs. 178-179) Work created by an employee (Sec. 178.3) Work commissioned by non-employer (Sec. 178.4) Audiovisual work (Sec. 178.5) Letters (Sec. 178.6; Art. 723, Civil Code) Transfer or assignment of copyright (Secs. 180-183) Limitations on copyright (Secs. 184-190) Doctrine of fair use (Sec. 185) Decompilation (Sec. 185.1) Work of architecture (Sec. 186) Notice of copyright (Sec. 192) Neighboring or related rights (Secs. 202-212) Term (Secs. 213-215) Infringement of copyright or copying vs. plagiarism Defense of lack of access Remedies for infringement (Sec. 216) Criminal penalties (Sec. 217) 1.11 Cases Format of a show not copyrightable Joaquin, Jr., et al. vs. Drilon, et al., G.R. No. 108946, January 28, 1999. Copyright infringement Habana, et al. vs. Robles, et al., G.R. 131522, July 19, 1999. Name and container of beauty cream product not proper subjects of copyright and patent Kho vs. CA, G. R. No. 115758, March 19, 2002. Meaning of originality of copyrighted material; proof of copying; no copyright protection for works of applied art or industrial design Ching vs. Salinas, Sr., et al., G.R. No. 161295, June 29, 2005.

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GEOGRAPHICAL INDICATIONS Article 22, TRIPS Agreement UNDISCLOSED INFORMATION Rule 1(o), IPO Rules and Regulations on Voluntary Licensing; Section 1(o), IPO Rules and Regulations on Settlement of Disputes Involving Technology Transfer Payments and the Terms of a License Involving the Authors Right to Public Performance or Other Communication of His Work, both dated October 2, 1998.

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