RIGHTS FOR SCIENTISTS AND
31 May 2011
University of San Carlos, Talamban Campus
Intellectual property is a set of legal
rights that results from intellectual
activity in the industrial, literary, scientific
and artistic fields.
They do not apply to the physical object
but instead to the intellectual creation as
Tangible vs. Intangible
Tangible property – discernible by
Intangible property – incapable of
being discerned by the senses.
Intellectual property right is an intangible right that is
separate from the physical object. It refers to the products
of human creativity, or property that is the result of human
By contrast, real property refers to land or real estate,
while personal property refers to items and things that can
be identified, such as money, cars, jewelry, etc.
Intellectual property is governed by the
Intellectual Property Code (Republic Act 8293).
Under the Intellectual Property Code, the term
intellectual property right consists of:
1. Copyright and Related Rights
2. Trademarks and Service Marks
3. Geographic Indications
4. Industrial Designs
6. Layout-Designs or Topographies of Integrated
7. Protection of Undisclosed Information
A trademark is a sign or symbol that
distinguishes the goods or services of one
enterprise from another in commerce. It is a
word, device, symbol used to indicate the origin,
quality and ownership of a product or service.
Purposes of trademark: (1) indicate the source or
origin of goods or services; (2) distinguish the
goods or services from those offered by another;
(3) assure that the goods are of a certain quality;
(4) provide consumers with a tool in making
decisions about the purchase of goods.
Businesses use marks to indicate that the
goods came from them and that the goods are
of a certain quality.
The decision of consumers to purchase one
product over another depends mostly on the
marks carried by the goods.
Copyright consists of a bundle of rights granted to authors
and artists to protect expressive works against
unauthorized reproduction or distribution by third parties.
It protects original works of authorship, including literary,
artistic and other works.
Copyright is based on the principle of idea/expression
dichotomy, which means that while the authors have the
right to their original expression, the public is encouraged
to build upon ideas conveyed by a work.
A set of rights granted to the inventor of a product or
process that is new, involves an inventive step and is
capable of industrial application.
A grant from the government that permits the owner to
exclude others from making, using, or selling an
A negative right since it affords the right to exclude
others from making, using, selling or importing a
Patents are granted by the Bureau of Patents of
the Intellectual Property Office for new, non-
obvious and useful inventions.
(Section 21, Republic Act 8293).
Typical Patent Value Chain
Idea → Experimentation and
Reduction to Practice → Patent
Application → Patent Prosecution →
Registration → Enforcement
Procedures for the registration of a patent:
1. Filing of the application
2. Formality examination
3. Classification and search
4. Publication of the application
5. Substantive examination
6. Issuance of registration
Invention Motivation Theory
This theory proposes that if there were no patent protection, there
would be no invention.
Without the prospect of property right, inventors would be unable to
recover their research and development costs because third parties
could simply copy the invention and compete with the inventor in the
Few inventions would be made if there is no patent protection
because inventions, once made, could easily be appropriated by
competitors of inventors who have not shared in the costs of
A Patent Confers a Negative Right
A certificate of patent registration confers the
exclusive right to restrain, prohibit and prevent any
unauthorized person from making, using, offering for
sale, selling or importing that product.
A patent confers a negative right, or the legal faculty
to prevent others from doing certain acts relating to
the invention, rather than a positive right with regard
to his products or processes.
A pharmaceutical patent entitles the patent
holder to prevent or prohibit its competitor from
making, using, selling or importing the drug
covered by the patent.
The patent, however, is not the document that
permits the patent holder to actually market the
drug. For the purpose of selling the drug, the
patent holder would need the Certificate of
Product Registration (CPR) from the Food and
Drug Administration (FDA).
Rights Conferred by a Patent
A patent confers on its owner the following rights:
(a) Where the subject matter of a patent is a product, to restrain,
prohibit and prevent any unauthorized person or entity from (1)
making, (2) using, (3) offering for sale, (4) selling or (5) importing
(b) Where the subject matter of a patent is a process, to restrain,
prevent or prohibit any unauthorized person or entity from using
the process, and from manufacturing, dealing in, using, selling or
offering for sale, or importing any product obtained directly or
indirectly from such process.
Making means constructing or creating from part or other
Using means utilization of the product by a third party. This concept
may include a sales demonstration,
Offering for sale includes acts aimed at commercialization of a
Selling covers transactions against payment of a price.
Importing covers the introduction of the patented product into the
country where protection is conferred, even if done for non-
commercial purposes or free of cost.
Exceptions and Limitations to Patent Rights
Where the act is done privately and on a non
commercial scale or for a non-commercial purpose.
Where the act consists of making or using exclusively
for experimental use of the invention for scientific
purposes or educational purposes and such other
activities directly related to such scientific or
experimental educational use;
The grant of patent in the Philippines would only
have an effect in the Philippines and not
An implication of this rule is that there could be
no global patent that may be enforced worldwide.
Patents may only be enforced in the jurisdiction
that issued the patent.
You can only protect and enforce your invention
for the duration of the term of the patent, which
shall be twenty (20) years from the filing date of
application in case of invention patents, seven (7)
years in case of utility models, and three five (5)
year-terms for industrial designs or a total of
fifteen (15) years
Ownership of Patents
For inventions created pursuant to a commission, the
person who commissioned the work shall own the patent,
unless otherwise provided in the contract.
In case the employee made the invention in the course of
his employment contract, the patent shall belong to: (a)
employee, if the inventive activity is not a part of his
regular duties even if the employee uses the time,
facilities and materials of the employer. (b) employer, if
the invention is the result of the performance of his
regularly-assigned duties, unless there is an agreement,
express or implied, to the contrary.
Remedies to Enforce Patent Rights
In the Philippines, there is no pre-grant opposition to
a patent application. But there is rule that allows third
parties to file a third party observation to a pending
Cancellation of Invention Patents
A remedy that allows any person to seek the
cancellation of an issued invention patent on the
(a) invention is not new or patentable;
(b) patent does not disclose the invention in a
manner sufficiently clear and complete for it to be
carried out by any person skilled in the art; or
(c) the patent is contrary to public order or morality.
The petition for cancellation shall be in writing,
verified by the petitioner or by any person in his
behalf who knows the facts, specify the grounds
upon which it is based, include a statement of the
facts to be relied upon, and filed with the Office.
Copies of printed publications or of patents of other
countries, and other supporting documents
mentioned in the petition shall be attached thereto,
together with the translation thereof in English, if not
in the English language.
Cancellation of Utility Model Patent
The utility model registration shall be canceled on the
(a) utility model is not patentable, or is not new or
(b) description and the claims do not comply with the
(c) any drawing which is necessary for the understanding
of the invention has not been furnished;
(d) owner of the utility model registration is not the
inventor or his successor in title.
Cancellation of Design Registration
The industrial registration shall be cancelled on any
of the following grounds:
(a) industrial design is not original ;
(b) industrial design is not new; or
(c) industrial design extends beyond the content of
the application as originally filed
Refers to the making, using, offering for
sale, selling, or importing a patented
product or a product obtained directly or
indirectly from a patented process, or the
use of a patented process without the
authorization of the patentee.
Remedies for Patent Infringement
Civil Action for Infringement
Any patentee, or anyone possessing any right, title or
interest in and to the patented invention, whose
rights have been infringed, may bring a civil action
before a court of competent jurisdiction, to recover
from the infringer such damages sustained thereby,
plus attorney's fees and other expenses of litigation,
and to secure an injunction for the protection of his
The court may order that the infringing goods,
materials and implements predominantly used in the
infringement be disposed of outside the channels of
commerce or destroyed, without compensation.
Administrative Action for Infringement
Similar to a civil action but is filed before the Bureau
of Legal Affairs of the Intellectual Property Office
The BLA-IPOPHL may issue a cease and desist
order, condemnation or seizure of products, payment
of damages, forfeiture of paraphernalia used in the
commission of the offense
Criminal Action for Repetition of Infringement
If infringement is repeated by the infringer or by
anyone in connivance with him after finality of the
judgment of the court against the infringer, the
offenders shall, without prejudice to the institution of
a civil action for damages, be criminally liable.
Upon conviction, the infringer shall suffer
imprisonment for the period of not less than six (6)
months but not more than three (3) years and/or a
fine of not less than One hundred thousand pesos
(P100,000) but not more than Three hundred
thousand pesos (P300,000), at the discretion of the
Alternatives to Litigation
Cease and Desist Letter
Licensing and/or Cross Licensing
Other Modes of Dispute Resolution
Mediation - a process where the parties to a pending
case are directed by the court to submit their dispute
to a neutral third party (the Mediator), who works with
them to reach a settlement of their controversy.
Arbitration - means a voluntary dispute resolution
process in which one or more arbitrators, appointed
in accordance with the agreement of the parties
resolve a dispute by rendering an award.
Enforcement of Patents in Other Countries
Enforcement of patent in other
countries requires filing of an
application in each and every country
where product is intended to be
manufactured and/or sold.