sg on the ipc 2-3-12
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STUDY GUIDE ON THE INTELLECTUAL PROPERTY CODE*
I
INTELLECTUAL PROPERTY CODERA 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 RIGHTSIN 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)
* 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 DESIGNSAND 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 andRegulations 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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