BACKGROUND READING MATERIAL ON THE INTELLECTUAL PROPERTY SYSTEM OF THE PHILIPPINES WORLD INTELLECTUAL PROPERTY ORGANIZATION 1993 WIPO PUBLICATION No. 686/PH (E) ISBN: 92-805-0404-5 WIPO 1993 PREFACE The World Intellectual Property Organization (WIPO) is a specialized agency within the United Nations system of organizations. It is responsible for the promotion and protection of intellectual property throughout the world. WIPO is cooperating with the developing countries of Asia and the Pacific in a comprehensive program of activities to facilitate the establishment and strengthening of intellectual property systems in the region. One of the components of this development cooperation program is the preparation and publication of guides, manuals and other training and information aids in the field of intellectual property. In 1988 WIPO issued, under a development cooperation project funded by the United Nations Development Programme (UNDP) for countries of Asia and the Pacific, a publication entitled Background Reading Material on Intellectual Property. The publication consisted of a collection of reading materials on various aspects of intellectual property law, administration and practice and was prepared as a reference work for university students, government officials, lawyers and businessmen. To complement that basic reference work, WIPO has commissioned a number of leading intellectual property scholars in the Asian and Pacific region, each to write a commentary on the intellectual property laws of his own country as a "national supplement" to the Background Reading Material on Intellectual Property. The author of the present book, entitled Background Reading Material on the Intellectual Property System of the Philippines, is Attorney Ignacio S. Sapalo, Director, Bureau of Patents, Trademarks and Technology Transfer (BPTTT), Department of Trade and Industry, Manila. While primarily intended for law students, this book may also be of use as a reference work for government officials, attorneys and businessmen concerned with intellectual property law or its administration in the Philippines. WIPO wishes to record its deep appreciation to Attorney Sapalo for his contribution which should significant! y increase understanding of the working of the intellectual property system of the Philippines. The publication of this book has been financed by funds made available to WIPO by UNDP, for which WIPO is grateful, especially to UNDP's Regional Bureau for Asia and the Pacific. Arpad Bogsch Director General World Intellectual Property Organization Geneva, October 1993 TABLE OF CONTENTS Page Preface . iii 1. Patents . 1 1.1 Introduction . 3 1.1.1 The Spanish Period . 3 1.1.2 The American Period . 3 1.1.3 Republic Act No. 165 and Philippine Accession to the Paris Conven- tion for the Protection of Industrial Property . 4 1.2 Conditions of Patentability . 6 1.2.1 The Provisions of Law . 6 1.2.2 Decisions of the Director of Patents. 6 1.2.3 Novelty. 7 1.2.4 Inventive Step . II 1.2.5 Industrial Applicability .. 16 1.2.6 Patentable Subject Matter. 17 1.3 Procedure for Grant of Patents . 18 1.3.1 Formal Examination . 18 1.3.2 Substantive Examination. 20 1.4 The Patent Application . 29 1.4.1 Who May Apply for an Invention Patent?........................ 29 1.4.2 The Application for an Invention Patent . 30 1.5 Scope of Exclusive Rights . 34 1.6 Duration of Protection . 35 1.7 Infringement . 36 1. 7.1 Actions and Remedies for Infringement . 36 I. 7.2 Criminal Action for Repetition of Infringement . 37 1.8 Contributory Infringement . 37 I.9 Defenses to Infringement and Revocation . 37 1.9.1 Cancellation of Patents . 37 1.10 Compulsory Licensing . 39 1.10.1 Grounds for Compulsory Licensing...... ....... ...... ... .... 39 1.11 Utility Models . 41 1.11.1 Introduction . 41 1.1I.2 Conditions for Protection . 42 1.11.3 Formal Requirements for and Examination of Applications for Patents for Utility Models . 47 1.11.4 Duration.............. ........ ... ..................... 47 1.11.5 Infringement. 48 2. Patent Information and Documentation. 53 2.I Range of Patent Documentation . 55 2.1.1 In the Philippines. 55 vi PHILIPPINES 2.2 Content of Patent Documents. 56 2.2.1 Introduction . 56 2.2.2 Bibliographic Information . 57 2.2.3 Technical Information . 57 2.2.4 Search Report. 58 2.2.5 Form of Documents. 58 2.3 Patent Documents as a Source of Technological Information. 58 2.4 Role of Patent Information in the Transfer of Technology . 60 2.4.1 Introduction . 60 2.4.2 Use by Government Authorities...... ........ ....... ...... ..... 61 2.4.3 Use by Research and Development Institutions . 62 2.4.4 Use by Universities. 62 2.4.5 Use by Industry . 63 3. Trademarks . 67 3.1 Introduction . 69 3.1 .1 Historical Notes. 69 3.1.2 Act No. 666 vis-a-vis United States Federal Trademark Law. 69 3.1.3 Act No. 666 and Republic Act No. 166 Compared . 70 3.1.4 Accession of the Philippines to the Paris Convention . 70 3.2 Scope of Republic Act No. 166, the Philippine Trademark Law . 71 3.2.1 Trademark Distinguished from Trade Name.............. ..... ... 71 3.3. Criteria of Protectability. 72 3.3.1 Criteria of Registrability of Trademarks or Trade Names . 72 3.3.2 Requirements of Distinctiveness . 73 3.3.3 Requirement of Absence of Misleading Character and of Absence of Violation of Public Order or Morality . 75 3.3.4 Special Cases . 75 3.4 Acquisition of Trademark Rights. 77 3.4.1 Acquisition of Rights Through Use. 77 3.4.2 Acquisition of Rights Through Registration . 82 3.5 Removal of Trademarks from the Register for Non-Use. .. ... ..... ... .. 83 3.6 Abandonment of Trademarks for Non-Use. 84 3.7 Conflict with Prior Rights. 84 3.7 .1 Conflict of Trademarks Which Are Not Identical. 85 3.7.2 Conflict of Trademarks Which Do Not Relate to the Same Products or Services ... ...... .. ... .. .................................. 88 3.7.3 Conflict of a Trademark and a Trade Name and Vice Versa ........ 90 3.7.4 Conflict with Copyright ................ .. ................... 91 3.8 Registration Procedure...................... .... .................... 91 3 .8.1 Application for Registration . 91 3.8.2 Examination as to Form . 95 3.8.3 Examination as to Substance . 96 3.8.4 Registration on the Principal Register. 96 3.8.5 Interference . 97 3.8.6 Opposition . 98 3.9 Certificate of Registration . ..