RFBT - INTELLECTUAL PROPERTY CODE Flashcards
1
Q
What is a Patentable Invention?
A
Patentable Invention is any technical solution of a problem in any field of human activity which is NEW, involves an INVENTIVE STEP, and is INDUSTRIALLY APPLICABLE shall be patentable. It may be or may relate to a PRODUCT, PROCESS, or an IMPROVEMENT OF ANY OF THE FOREGOING.
2
Q
What inventions are Non-Patentable?
A
The following shall be excluded from patent protection:
- ) Discoveries, scientific theories and mathematical methods
- ) Schemes, rules, and methods of performing mental acts, playing games or doing business, and programs for computers
- ) Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body.
- ) Plant varieties or animal breeds or essentially biological processes for the production of plants or animals. THIS PROVISION DOES NOT APPLY TO MICROORGANISMS and NON-BIOLOGICAL AND MICROBIOLOGICAL PROCESSES.
- ) Aesthetic creations
- ) Anything which is contrary to public order or morality
3
Q
If an invention forms part of a prior art, can it be considered new?
A
No.
4
Q
What consists “Prior arts” as mentioned in the Intellectual Property Code?
A
Prior arts consists of:
- ) Everything which has been made AVAILABLE TO THE PUBLIC ANYWHERE IN THE WORLD before the filing date or the priority date of the application claiming the invention
- ) The whole contents of an application for a patent, utility, model or industrial design registration published in accordance with the act.
5
Q
To whom does the right to a patent belong to?
A
It belongs to the INVENTOR, his heirs or assigns.
When 2 or more persons have jointly made an invention, the right to a patent shall belong to them JOINTLY.
6
Q
What happens when two or more persons have made the invention separately and independently of each other?
A
The right to a patent shall belong to the person WHO FILED AN APPLICATION FOR SUCH INVENTION,
7
Q
What happens when two or more persons have made the invention separately and independently of each other and both have filed for a patent?
A
The right to a patent shall belong to the person WHO HAS THE EARLIEST FILING DATE OR THE EARLIEST PRIORITY DATE.
8
Q
What are the rules when inventions are created pursuant to a commission?
A
- ) The person who commissions the work shall own the patent, UNLESS provided in the contract.
- ) In case the employee made the invention IN THE COURSE OF HIS EMPLOYMENT CONTRACT, the patent shall belong to:
a. ) THE EMPLOYEE - if the INVENTIVE ACTIVITY IS NOT PART OF HIS REGULAR DUTIES even though the employer paid for the time/facilities/materials.
b. ) THE EMPLOYER - if the INVENTION IS THE RESULT OF THE PERFORMANCE OF HIS REGULARLY ASSIGNED DUTIES, UNLESS there is an agreement to the contrary.
9
Q
What are the rights conferred by a patent?
A
A patent shall confer on its owner the following exclusive rights:
a. ) If patent is for a PRODUCT - to restrain/prohibit/prevent any unauthorized person or entity from making/using/offering for sale/selling/importing such product
b. ) If patent is for a PROCESS - to restrain/prohibit/prevent any unauthorized person or entity from using the process and from manufacturing/dealing in/using/selling/offering for sale/importing any product obtained directly or indirectly from the process.
c. ) The right to ASSIGN/TRANSFER BY SUCCESSION the patent and to conclude licensing contracts for the same.
10
Q
What is a Mark?
A
Mark means any visible sign capable of distinguishing the goods (TRADEMARK) or services (SERVICE MARK) of an enterprise and shall include a STAMPED OR MARKED CONTAINER.
11
Q
What is a collective mark?
A
It means any visible sign designated as such in the application for registration and capable of distinguishing the origin of the good/service
12
Q
What is a Trade name?
A
It means the name/designation identifying or distinguishing an enterprise.
13
Q
What is the duration of a Trademark?
A
The certificate of registration of a trademark/service mark shall remain in force FOR 10 YEARS, provided that the registrant has FILED A DECLARATION OF ACTUAL USE and its actual evidence WITHIN 1 YEAR FROM THE 5TH ANNIVERSARY of the date of the registration of the mark.
14
Q
What happens if a trademark/service mark holder does not file a declaration of actual use and supporting evidence within the allotted time?
A
The mark shall be removed from the Register.
15
Q
A certificate of registration for a mark can be renewed for?
A
For 10 years, within 6 months before expiration or after 6 months after such expiration upon payment of an additional fee.
16
Q
What are the rights conferred upon the owner of a registered mark?
A
- ) Owner shall have the EXCLUSIVE RIGHT to prevent all 3rd parties not having the owner’s consent from using in the course of trade identical or similar signs.
- ) EXCLUSIVE RIGHT of owner EXTENDS TO GOODS AND SERVICES which are not similar to those in respect of which the mark is registered provided that:
a.) Use of the mark would indicate a connection
between those goods/services and the owner
b.) Interests of the owner are likely to be damaged by
such use.
17
Q
What is a well known mark?
A
A well known mark is identical with/ or confusingly similar to, or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be well-known internationally and locally, whether or not registered here.
18
Q
What are Literary and Artistic works?
A
Literary and Artistic works are original intellectual creations in the literary and artistic domain protected from the moment of their creation.
19
Q
What are the rights granted to the author of works?
A
- ) Publish his work
- ) Copyright consisting of the right of reproduction of the typographical arrangement of the published edition of the work.
- ) Assign the copyright in whole or in part.
20
Q
What are the Copyright ownership rules?
A
1.) Single author - belongs to the author
- ) Joint/Co-authorship
a. ) Work cannot be used separately - co-authors shall be the original owners of the copyright and IN THE ABSENCE OF AGREEMENT, THEIR RIGHTS SHALL BE GOVERNED BY THE RULES ON CO-OWNERSHIP
b.) Work can be used separately and author of each part can be identified - The author of each part shall be the original owner of the copyright of the part that he has created.
21
Q
What are the unprotected subject matters under the IPC?
A
- any idea
- procedure
- system
- method/operation
- concept
- principle
- Discovery of mere data
- news of the day
- other miscellaneous facts having the character of mere items of press information
- any official text of a legislative, administrative, or legal nature, as well as any official translation thereof.
22
Q
What is the term of a copyright?
A
The rights of an author shall last during his lifetime and for fifty years after his death AND SHALL NOT BE ASSIGNABLE OR SUBJECT TO LICENSE.
The persons to be charged with posthumous enforcement of these rights SHALL BE NAMED IN WRITING to be filed with the NATIONAL LIBRARY.
In default of such persons, such enforcement shall DEVOLVE UPON EITHER THE AUTHOR’S HEIRS, and upon their default, THE DIRECTOR OF THE NATIONAL LIBRARY.
23
Q
The “test of dominancy” in Trademarks is a way to determine whether there exists an infringement on a trademark by?
A
Focusing on the similarity of the prevalent features of the competing marks which might create confusion.
24
Q
Compulsory Licensing of Inventions which are duly patented may be dispensed with or will be allowed exploitation even without agreement of the patent
owner under certain circumstances, like national emergency, for reason of public interest, like national security, etc. The person who can grant such
authority is -
A
Director of Legal Affairs of the Intellectual Property Office
25
Under the Intellectual Property Code, lectures, sermons, addresses or dissertations prepared for oral delivery, whether or not reduced in writing
or other material forms, are regarded as?
Original Works
26
What marks cannot be registered?
(a) Consists of immoral, deceptive or scandalous matter, or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute;
(b) Consists of the flag or coat of arms or other insignia of the Philippines or any of its political subdivisions, or of any foreign nation, or any simulation thereof;
(c) Consists of a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the Philippines, during the life of his widow, if any, except by written consent of the widow;
(d) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of:
(i) The same goods or services, or
(ii) Closely related goods or services, or
(iii) If it nearly resembles such a mark as to be likely to deceive or cause confusion;
(e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here, as being already the mark of a person other than the applicant for registration, and used for identical or similar goods or services: Provided, That in determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark;
(f) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph, which is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for: Provided, That use of the mark in relation to those goods or services would indicate a connection between those goods or services, and the owner of the registered mark: Provided, further, That the interests of the owner of the registered mark are likely to be damaged by such use;
(g) Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the goods or services;
(h) Consists exclusively of signs that are generic for the goods or services that they seek to identify;
(i) Consists exclusively of signs or of indications that have become customary or usual to designate the goods or services in everyday language or in bona fide and established trade practice;
(j) Consists exclusively of signs or of indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time or production of the goods or rendering of the services, or other characteristics of the goods or services;
(k) Consists of shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value;
(l) Consists of color alone, unless defined by a given form; or
(m) Is contrary to public order or morality.
27
What is a colorable imitation?
It denotes such a close or ingenious imitation as to be calculated to deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary purchaser, giving such attention as a purchaser usually gives and to cause him to purchase the one supposing it to be the other.
28
What is a generic term?
Those which constitute the common descriptive name of an article or substance, or comprise the genus of which the particular product is a species, or are commonly used as the name or description of a kind of goods (PARACETAMOL)
29
What is a descriptive term?
It forthwith conveys the characteristics, functions, qualities or ingredients of a product to one who has never seen it and does not know what it is
30
What is a suggestive term?
Those which require imagination, thought and perception to reach a conclusion as to the nature of the goods.
31
Explain the doctrine of secondary meaning.
Under this doctrine, a word or phrase originally incapable of exclusive appropriation with reference to an article in the market, because geographical or otherwise descriptive might nevertheless have been used so long and so exclusively by one producer with reference to this article that, in that trade and to that group of the purchasing public, the word or phrase has come to mean that the article was his produce.
Doctrine of Secondary meaning is a word of phrase originally incapable of exclusive appropriation, might nevertheless have been used so long and so exclusively by one producer with reference to his article that, in trade and to that branch of the purchasing public, the word or phrase has come to mean that the article was his product.
EXAMPLE: LYCEUM CASE, Lyceum generally refers to a school or an institution of learning and it is natural to use this word to designate an entity which is organized and operating as an educational institution.
32
What is a certificate of registration?
A certificate of registration is shall be a prima facie evidence of:
1. The validity of the registration
2. The registrant's ownership of the mark
3. The registrant's exclusive right to use the same in connection with the goods or services and those that are related thereto specified in the certificate
33
What is a priority claim? How and when must it be filed?
It is a local application of a trademark when an earlier application is filed abroad. It must be filed:
1. Within 6 months from filing of priority application
2. Certified copy of priority application within 3 months from the filing date
3. Failure to file is treated as a waiver of priority claim
34
Explain the process of a declaration of actual use, and the effects of noncompliance with the DAU.
1. Within 3 years from filing date of application, extendible for another 6 months; otherwise, it shall be deemed and abandonment of the application
2. Another DAU within 1 year from the 5th anniversary of the registration of the mark; otherwise the mark shall be removed from the Register
3. Another DAU within 1 year from date of renewal of the trademark registration
Noncompliance will be deemed as abandonment of the application or the registration will be cancelled.
35
T or F
Theory of Dilution states that the exclusive right of the owner of a well-known mark which is registered in the PH shall extend to goods and services which are similar to those in respect of which the mark is registered.
False
Theory of Dilution states that the exclusive right of the owner of a well-known mark which is registered in the PH shall extend to goods and services which are NOT SIMILAR to those in respect of which the mark is registered.
For example, the unauthorized use of FERRARI as a brand of harmonicas may not be trademark infringement, but it may be trademark dilution, even though harmonicas and luxury automobiles are so unrelated that consumers are unlikely to believe Ferrari harmonicas come from the famous automaker. Trademark dilution protects marks that are so well-known, highly reputable, or famous that jurisdictions have decided they deserve protection whether or not their unauthorized use is likely to cause consumer confusion.
36
What are the tests to determine infringement?
1. Holistic/Totality test
| 2. Dominancy test
37
What is holistic/totality test?
It considers the entirety of the marks in question
Example: Del Monte may sue Sunshine Sauce when Sunshine Sause used a logo similar to that of Del Monte. Here the totality test was applied, since the consumer depends upon his recollection of the appearance of the product purchased.
A mark is considered as a whole and not as dissected
38
What is the dominancy test?
It focuses on the prevalent or dominant features. Confusing similarities is to be determined not only on the visual but also aural and overall impressions between the two trademarks.
Example: Mcdonald's may sue LC BigMak on its burgers since it could cause confusion in the identity of the burgers. (Mcdonald's BigMac vs BigMak)
39
What are the remedies of a trademark owner?
1. Recover damages based on reasonable profit that would have been made or the profit which the defendant actually made. If damages cannot be readily ascertained, courts may base the damage upon a certain percentage upon gross sales of defendant
2. Seek injunction
3. Seek destruction of infringing materials
40
T or F
| Trademark infringement is broader unfair competition.
False, UC is broader than TI.
41
T or F
| There can still be trademark infringement without unfair competition
True, such as when infringer discloses on labels containing the mark that he manufactured the goods
42
T or F
| Trademark infringement is a form of unfair competition
True.
43
What is public lending?
It is the transfer of possession of the original or copy of a work for a limited period for non-profit purposes
44
When does protection of an original work commence?
From the moment of creation, irrespective of the mode or form expression as well as content, quality and purpose.
45
T or F
| Derivative works are also protected by copyright
True, it shall be protected as NEW WORKS, which shall not affect the force of any subsisting copyright upon the original works
46
T or F
| No copyright shall subsist in any work of the Government of the Philippines
True, however, prior approval of the government agency/office where the work is created shall be necessary for exploitation of such work for profit.
47
What are the economic rights of an author?
To authorize or prevent:
1. Reproduction of work
2. Dramatization/adaptation/translation/other transformation
3. First public distribution
4. Rental
5. Public Display
6. Public Performance
7. Other communication
48
Rose commissioned Jack to draw a portrait of her for 100,000. Who shall own and have copyright of the painting?
Copyright belongs to Jack as the author, Rose shall own the painting.
49
T or F
| Copyright may be assigned in whole or in part mortis causa
False, Copyright may be assigned in whole or in part INTER VIVOS ONLY IF THERE IS A WRITTEN INDICATION OF SUCH INTENTION
50
What are the limitations on copyright?
The following acts shall not constitute infringement of copyright:
(a) the recitation or performance of a work, once it has been lawfully made accessible to the public, if done privately and free of charge or if made strictly for a charitable or religious institution or society; (Sec. 10(1), P. D. No. 49)
(b) The making of quotations from a published work if they are compatible with fair use and only to the extent justified for the purpose, including quotations from newspaper articles and periodicals in the form of press summaries: Provided, That the source and the name of the author, if appearing on the work, are mentioned; (Sec. 11, Third Par., P. D. No. 49)
(c) The reproduction or communication to the public by mass media of articles on current political, social, economic, scientific or religious topic, lectures, addresses and other works of the same nature, which are delivered in public if such use is for information purposes and has not been expressly reserved: Provided, That the source is clearly indicated; (Sec. 11, P. D. No. 49)
(d) The reproduction and communication to the public of literary, scientific or artistic works as part of reports of current events by means of photography, cinematography or broadcasting to the extent necessary for the purpose; (Sec. 12, P. D. No. 49)
(e) The inclusion of a work in a publication, broadcast, or other communication to the public, sound recording or film, if such inclusion is made by way of illustration for teaching purposes and is compatible with fair use: Provided, That the source and of the name of the author, if appearing in the work, are mentioned;
(f) The recording made in schools, universities, or educational institutions of a work included in a broadcast for the use of such schools, universities or educational institutions: Provided, That such recording must be deleted within a reasonable period after they were first broadcast: Provided, further, That such recording may not be made from audiovisual works which are part of the general cinema repertoire of feature films except for brief excerpts of the work;
(g) The making of ephemeral recordings by a broadcasting organization by means of its own facilities and for use in its own broadcast;
(h) The use made of a work by or under the direction or control of the Government, by the National Library or by educational, scientific or professional institutions where such use is in the public interest and is compatible with fair use;
(i) The public performance or the communication to the public of a work, in a place where no admission fee is charged in respect of such public performance or communication, by a club or institution for charitable or educational purpose only, whose aim is not profit making, subject to such other limitations as may be provided in the Regulations; (n)
(j) Public display of the original or a copy of the work not made by means of a film, slide, television image or otherwise on screen or by means of any other device or process: Provided, That either the work has been published, or, that original or the copy displayed has been sold, given away or otherwise transferred to another person by the author or his successor in title; and
(k) Any use made of a work for the purpose of any judicial proceedings or for the giving of professional advice by a legal practitioner.
51
T or F
| Copyrights are protected during the life of the author and for fifty years after his death.
True.
52
T or F
The economic rights in copyrights where there is joint authorship is protected during the life of the LAST SURVIVING AUTHOR and for 50 years after his death
True.
53
How long is works of applied art protected?
25years from the date of making
54
How long is photographic/audiovisual works protected?
50 years from publication; if unpublished, 50 years from making
55
How long is performers and producers of sound recordings copyright protected?
50 years from end of year in which performance took place if not incorporated in recordings
50 years from end of recording if recorded
56
How long are broadcasts copyright protected?
20 years from the date the broadcast took place
57
How does one commit copyright infringement?
A person infringes a right protected when:
1. Directly commits an infringement
2. Benefits from infringing activity of another person
3. Contributes to the infringing activity of another
58
What is a utility model?
It is a protection option designed to protect innovations that are not sufficiently inventive to meet the inventivet threshold required for standard patents and is ENTITLED TO 7 YEARS PROTECTION FROM DATE OF FILING, without renewal.
59
What is an industrial design?
It is any composition of lines or 3D forms, that can serve as pattern for an industrial product or handicraft, which shall be VALID FOR 5 YEARS FROM DATE OF FILING OF THE APPLICATION and MAY BE RENEWED FOR NOT MORE THAN 2 CONSECUTIVE PERIODS OF 5 YEARS EACH.
60
What are the kinds of patent?
1. Invention Patent
2. Design Patent
3. Utility Model
61
What are invention patents?
Any technical solution of a problem in any field of human activity which is new and is industrially applicable shall be patentable.
62
What are the elements of a patent?
1. Novelty - Invention shall not be considered new if it forms part of a prior art.
2. Inventive step - it is not obvious to a person skilled in the art
3. Industrial applicability - can be produced and used in any industry.
63
Explain the application process of filing a patent
1. Filing date requirements/payment of fees
2. Formal examination
3. Search for prior art
4. 1st Publication
a. w/in 18 months from filing date
b. Interested parties may inspect documents after 1st publication
c. Publication may be prohibited if prejudicial to national interests
d. After publication, applicant acquires rights of a patentee
e. No action can be filed until the grant of the patent
5. Substantive Examination (w/in 6 months of 1st publication)
6. Publication of patent
64
If 2 or more persons separately made the same invention, to whom shall the priority to filebe given?
First-to-file rule - the one who filed for application first
65
What are the remedies of an actual inventor whose invention is used/copied by another?
1. If the application is still pending - file an action in court to prove that he is the real inventor WITHIN 1 YEAR FROM FIRST PUBLICATION. Once he is declared true inventor:
a. Request that the application of the fake inventor be refused
b. File a new application and the filing date will retroact to original filing date
2. If patent already granted - Within 1 year from publication of patent, he can either:
a. Be substituted as patentee
b. Seek cancellation of patent
66
T or F
| The person who commissions the work shall own the patent unless otherwise provided in the contract.
True, as compared to that of copyright where the person who does the work has copyright over the thing while the person who commissioned the work owns the thing.
67
T or F
The employee shall own the patent if the inventive activity is not part of his regular duties even if the employee uses the time/facilities/resources of the employer.
True
68
T or F
The employer shall own the patent if the inventive activity of the employee is part of his regular duties, unless otherwise agreed upon.
True.
69
What is the term of a patent?
20 years from the filing date of the application
70
What are the kinds of patent infringement?
1. LITERAL INFRINGEMENT
a. Exactness Rule - the item being sold, made or used conforms exactly to the patent claim of another
b. Addition Rule - one makes/uses or sells an item that has all the elements of the patent claim of another plus other elements
2. Doctrine of Equivalents - with some modification and change but substantially the same:
a. function
b. Way/means/principle/operation
c. Result
71
What is the Doctrine of Equivalents?
It provides that an infringement takes place when a device appropriates a prior invention by incorporating its innovative concept with some modification and change.
72
T or F
Identity of result does not amount to infringement of patent unless the invention questioned operates in substantially the same way or by substantially the same means as the patented one.
True. The principle of operation or mode must be substantially the same.
73
What are the remedies of a patentee?
1. Civil action to recover damages plus attorney's fees and other expenses of litigation
2. Injunction for the protection of rights
3. The courts may order that the infringing goods be disposed of
4. Criminal Action for repetition of infringement
74
What is the penalty for criminal repetition of patent infringement? What is the prescription period for this crime?
1. Not less than 6 months but not more than 3 years
AND/OR
2. Fine of not less than 100,000 but not more than 300,000 at the discretion of courts.
The prescriptive period for this crime is 3 YEARS.
