Intellectual Property by Atty. Mae Diane Azores

Name: Intellectual Property by Atty. Mae Diane Azores
Uploaded: 2021-08-29T15:37:34.000Z
Duration: 3 h 28 min 25 s
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Intellectual Property Law Overview

Introduction to Intellectual Property

The lecture is part of a refresher course on Rayo CD Review, focusing on intellectual property law.

The speaker requests screen sharing to present the material effectively.

Defining Intellectual Property

Intellectual property (IP) refers to intangible assets resulting from creative work, including inventions and artistic works.

IP encompasses legal rights derived from creations in various fields such as industrial, scientific, literary, and artistic domains.

Purpose and Legal Basis of Intellectual Property

The Constitution mandates the protection of exclusive rights for creators like scientists and artists to encourage innovation.

The state provides protection in exchange for public benefit from inventions and artistic works, fostering creativity.

Coverage of Intellectual Property Rights

The discussion will focus on copyright, trademarks, and patents relevant for CPA Board exams; other types will not be covered to avoid information overload.

Patents: An Insightful Exploration

Introduction to Patents

Patents are one type of intellectual property that protects inventions.

Interesting Patent Examples

Michael Jackson patented his anti-gravity illusion dance move in the US.

A humorous patent involves an alarm system that drops a frame over a sleeper's head if they don't wake up when the alarm goes off.

An automatic bed maker was patented in 1999 to help people make their beds effortlessly each morning.

Unique Innovations

A "beer brella" patent exists for an umbrella designed to protect beverages from sunlight.

Apple holds a patent for an ornamental design of an electronic device simply labeled as such.

Fundamentals of Patent Principles

Purpose of the Patent System

The primary goal of the patent system is not individual reward but rather the advancement of arts and sciences through innovation.

Patent System Overview

Purpose of Patent Law

The patent system encourages the disclosure of inventions to benefit the public, fostering innovation and knowledge sharing.

It serves three main purposes:

To foster invention.

To promote the disclosure of inventions.

To ensure that inventions become part of the public domain.

Key Principles of Patents

Territorial Nature: Patent protection is only valid in the country where it is granted; applying for a patent in one country does not extend protection to others.

First to File Rule: The patent is awarded to the first inventor who files for it, regardless of who invented it first. This emphasizes timely filing over actual invention date.

Disclosure Requirement: Inventors must disclose their inventions clearly and completely to receive protection, adhering to a quid pro quo principle—protection in exchange for disclosure.

Conditional Grant: Patent rights are conditional upon meeting specific requisites for patentability before being granted.

Limited Rights: Patent rights are limited and do not grant absolute ownership over an invention indefinitely.

Criteria for Patentability

According to Section 21 of the Intellectual Property Code, an invention must be:

A technical solution to a problem.

New (novel), involving an inventive step, and industrially applicable. These criteria determine if an invention can be patented.

Novelty

An invention must be novel; it cannot form part of prior art available publicly before filing for a patent application. Prior art includes any public knowledge or use prior to filing that could invalidate novelty claims.

If something has been publicly disclosed (e.g., light bulb example), it cannot be patented again as it's no longer new.

Inventive Step

The invention should involve an inventive step that is not obvious to someone skilled in the relevant field at the time of application submission; mere modifications without significant innovation do not qualify for patents.

Industrial Applicability

Inventions must have practical applications within any industry, ensuring they serve a purpose beyond theoretical concepts or ideas; this criterion confirms utility in real-world scenarios.

Summary on Assessing Patentability

When evaluating if an invention is patentable, consider:

Is it novel?

Does it involve an inventive step?

Is it industrially applicable?

These three criteria guide whether a patent can be successfully obtained based on its merits and compliance with legal standards.

Understanding Patentability and Novelty

The Concept of Novelty in Patents

A patent can be granted if the invention is novel; anything previously disclosed to the public is not considered new and thus non-patentable.

The doctrine of non-prejudicial disclosure allows for a 12-month period before the filing date where certain disclosures do not affect novelty.

Disclosures made by the inventor or third parties without their knowledge within this 12-month window are permissible, as they may serve to test or verify the invention.

Non-Patentable Inventions

Certain categories are explicitly non-patentable, including plant varieties, animal breeds, aesthetic creations, scientific theories, and mathematical methods.

Methods related to mental acts, games, business practices, and non-patentable computer programs also fall under this category.

Inventions contrary to public order or morality (e.g., machines for producing counterfeit currency) cannot be patented.

Medical Treatments and Patents

Methods for treating human or animal bodies are generally not patentable due to practical concerns regarding surgical procedures requiring permission from patent holders.

New forms or properties of known medicines may not qualify for patents; however, vaccines like COVID-19 have sparked debate over their patentability.

Controversy Surrounding COVID-19 Vaccine Patents

The COVID-19 vaccine is deemed patentable since it does not constitute a method of treatment but rather an innovative product meeting patent requirements.

Ethical discussions arise around pharmaceutical companies holding patents on vaccines during a pandemic that restrict access in developing countries.

Ownership and Transfer of Patent Rights

Patent ownership typically resides with the inventor but can be inherited or assigned. Joint inventions require shared ownership among inventors.

Patent rights can be transferred through written agreements that must be notarized; financial considerations often motivate such assignments.

Understanding Patent Ownership and Application Process

First to File Rule

The patent is awarded to the individual who files an application first, emphasizing the importance of timely filing.

In some cases, the difference in filing times can be mere seconds, highlighting how critical it is to act quickly.

Commissioned Inventions

If an invention is created under a commission, the patent ownership belongs to the person or entity that commissioned the work.

For example, if a scientist invents something for a company that hired them, the patent will belong to that company unless otherwise stated in their contract.

Employment and Invention Ownership

An employee's invention may belong to their employer if it falls within their regular job duties. This includes inventions made as part of assigned tasks.

Conversely, if an employee creates an invention outside of their regular duties (e.g., as a hobby), they retain ownership of the patent even if company resources were used.

Patent Registration Process

To register a patent, one must file an application which includes detailed descriptions, drawings, claims, and abstracts of the invention. This ensures complete disclosure for examination by the Intellectual Property Office.

After submission and examination, if everything is in order, a certificate confirming the grant of the patent will be issued upon publication in a newspaper.

Grounds for Patent Cancellation

A granted patent can be canceled on several grounds:

If it is determined that the invention is not new or lacks novelty compared to existing inventions.

Insufficient disclosure during application can also lead to cancellation; patents must clearly disclose all necessary information about the invention.

Additionally, patents may be canceled if deemed contrary to public order or morality.

Patent Cancellation and Remedies for Inventors

Grounds for Patent Cancellation

A patent may be canceled if it is found to be contrary to public order or morality.

If there is an action for patent infringement, this can also lead to cancellation.

Patents that include matters outside the scope of the original application disclosure are subject to cancellation.

Remedies for True Inventors

If someone else applies for a patent on your invention, you have remedies available as the true inventor.

You can file a new application within three months after the decision on the grant of the patent has become final, claiming your rights as the true inventor.

Evidence must be submitted to prove you are the actual inventor when filing a new application or requesting cancellation of another's patent.

Filing Deadlines and Claims

The true inventor has one year from publication of the granted patent to file remedies or a new application.

You can request substitution as the patentee or seek cancellation while filing a new application, along with claims for damages due to infringement.

Rights Granted by Patent Ownership

Rights Conferred Upon Patent Grant

As a patent owner, you have exclusive rights to control how your product is made, used, sold, or imported (mnemonic: M-U-O-S-I).

For processes, similar rights apply; unauthorized use in production can be prohibited without consent from the patent owner.

Limitations on Patent Rights

Once a patented product is introduced into the market, you cannot prevent others from using it commercially in that market. This includes products like medicines once they are available globally.

Non-commercial use and experimental testing do not fall under restrictions imposed by patent ownership; these uses cannot be prevented by the owner.

Prior User Rights and Their Implications

Understanding Prior User Rights

Individuals who began using an invention in good faith before its official filing date retain rights to continue using it even after a patent is granted to another party.

These rights can only be transferred alongside their business operations and cannot simply be assigned freely among different parties involved in similar inventions.

Invention and Patent Rights

Independent Inventions and Patent Grants

Inventor 2 developed a similar idea to Inventor 1 independently, enhancing it with GPS technology. Despite the similarities, Inventor 2's invention was more advanced and he successfully filed for a patent.

Good Faith Use of Inventions

Even though Inventor 2 holds a granted patent, he cannot prevent Inventor 1 from using his invention because Inventor 1 acted in good faith, unaware of the existing patent.

Prior User Rights

Although lacking rights to the patent, Inventor 1 can continue using his invention since he is considered a prior user in good faith.

Government Use of Patents

The government has the right to exploit patented inventions without consent from the owner for public interest or national emergencies, reflecting the principle that "the state is king."

Doctrine of Exhaustion

Once a patent owner sells their product, they exhaust their rights to control its distribution. Subsequent sales by others cannot be prevented as all rights are exhausted after the first sale.

Patent Infringement Explained

Definition of Patent Infringement

Patent infringement occurs when someone uses, offers for sale, sells, or imports a patented product without permission from the patentee.

Types of Infringement: Literal vs. Equivalents

Literal infringement happens when an infringing product falls directly within the scope of properly interpreted claims. For example, if both products share identical compositions despite minor variations.

The doctrine of equivalents applies when there are slight modifications in ingredients but both products perform substantially the same function and achieve similar results.

Functionality Test for Equivalence

To determine equivalence under this doctrine, one must assess whether both products incorporate innovative concepts and perform similarly regarding function and result.

Remedies for Patent Owners

If an infringement occurs, patent owners can file civil actions for damages or criminal actions if infringements are repeated. The prescriptive period for such actions is three years.

Intellectual Property Rights: Understanding Patents and Trademarks

Patent Infringement Defenses

If accused of patent infringement, one can argue that the patent is invalid or has grounds for cancellation.

Possible defenses include claims of lack of novelty, insufficient disclosure, or that the patent contradicts public order or morality.

The time limit for filing a claim may also be cited as a defense against alleged infringement.

Introduction to Trademarks

Transitioning from patents to trademarks, humorous examples of trademark imitation are presented, such as "Joy Rolby" mimicking Jollibee.

A trademark is defined as any visible sign capable of distinguishing goods or services from others.

Characteristics of Trademarks

For registration, a trademark must be visible and distinguishable; it can include words, letters, numerals, figures, shapes, colors, logos, or three-dimensional objects.

Non-visible elements like sounds and scents are not recognized as trademarks in the Philippines currently.

Types of Trademarks

Distinctiveness is crucial; fanciful trademarks (e.g., invented words like "Kodak") are the strongest type.

Arbitrary trademarks use common words unrelated to their products (e.g., "Apple" for computers).

Suggested trademarks describe product characteristics while generic terms cannot be registered as trademarks.

Trademark Registration Process

To secure rights over a trademark, registration with the Intellectual Property Office is necessary; unregistered marks do not provide legal protection against use by others.

Trade names identify businesses (e.g., Nestle), while trademarks distinguish specific goods/services associated with those businesses.

Collective Marks and Their Importance

Collective marks associate products with groups/organizations (e.g., halal certification ensures compliance with dietary laws).

Practical Application for Business Owners

Business owners must register their unique logos and branding elements to prevent unauthorized use by competitors.

Registration grants exclusive rights to use the mark in commerce; without it, there’s no legal recourse against similar uses.

Trademark Registration and Ownership

Importance of Trademark Registration

Filing for trademark registration is essential to protect your business's logo or distinguishing marks, as ownership is acquired upon registration.

Registration confers trademark rights, establishing legal protection for the mark.

Proof of Ownership

Even after registration, the owner must prove that they created the mark and did not copy it from another business.

Exclusive rights are granted post-registration; prior use is no longer a requirement, but actual use must be demonstrated within three years.

Declaration of Actual Use

A Declaration of Actual Use (DAO) must be filed with the Intellectual Property Office within three years to show that the trademark is in use.

Failure to file this declaration can result in losing the trademark rights.

Duration and Renewal of Trademark Protection

Trademark registrations last for 10 years and can be renewed indefinitely every 10 years.

Additionally, a DAO must be filed every five years following the initial filing anniversary to maintain trademark status.

Non-Registrable Marks

Categories of Non-Registrable Marks

Marks that are immoral, deceptive, or scandalous cannot be registered as trademarks.

Misleading Connections

Trademarks suggesting false connections with other businesses or persons will not be granted. For example, a salon named "Starbuhawks" would likely confuse consumers with "Starbucks."

Public Order and Morality Considerations

Marks contrary to public order or morality are also non-registerable. This includes names or portraits of living individuals without consent.

Identical or Confusingly Similar Marks

Restrictions on Similarity

Trademarks identical to existing registered marks cannot be registered if they pertain to similar goods/services that could deceive consumers.

First-to-File Principle

The first entity to file for a trademark generally receives priority over others seeking similar marks.

Understanding Trademark Registration and Rights

Trademark Basics

A trademark (TM) indicates that a product has a registered trademark. If it is still in the application process, it may not yet be officially issued.

Non-registerable marks include misleading marks and generic terms; for example, you cannot register a trademark for an event using your own name if it's too generic.

Limitations on Trademark Registration

Colors alone cannot be trademarked; for instance, the word "red" or specific shapes are also non-registerable.

Descriptive terms are similarly not eligible for trademark registration.

Internationally Well-Known Marks

Marks that are internationally recognized, like Louis Vuitton, cannot be registered in certain jurisdictions because they are already well-known to consumers.

Even without applying for trademarks in the Philippines, brands like Louis Vuitton maintain protection against confusion with their marks.

Rights of Trademark Owners

Trademark owners have exclusive rights to use their mark; no one else can create identical or similar logos without consent.

Trademark registration is territorial; a registered mark in one country does not automatically extend to others unless it’s well-known globally.

Infringement and Legal Protections

Trademark infringement occurs when someone uses a reproduction or imitation of a registered mark without permission.

Businesses aggressively protect their trademarks as they represent significant financial value; examples include cases involving Jollibee and McDonald's over similar names/products.

Elements of Trademark Infringement

To establish infringement, there must be:

A registered trademark being reproduced or counterfeited.

No consent from the owner.

Likelihood of consumer confusion regarding the source of goods/services.

The likelihood of confusion is assessed based on various circumstances surrounding the trademarks involved.

Understanding Counterfeiting vs. Imitation

Colorable imitation refers to products that resemble another but aren't exact copies; this can still lead to consumer confusion.

Counterfeiting involves direct replicas often found in markets selling fake goods, while colorable imitations may just look similar enough to cause confusion among consumers.

Trademark Infringement and Confusion

Understanding Trademark Infringement

The concept of trademark infringement is illustrated through the example of a fake product that alters the Nike logo to "Hike," demonstrating how slight modifications can still lead to consumer confusion.

Even minor variations in products can constitute trademark infringement due to existing legal limitations on trademarks.

Types of Confusion

There are two types of confusion: confusion of goods (referring to the products themselves) and confusion of business (referring to the source or origin of those products).

An example is given where "Colgate" is used for soap instead of toothpaste, which could mislead consumers into thinking Colgate offers soap, thus causing confusion about the brand's offerings.

Testing for Confusion

To assess confusion, two tests are utilized: dominancy test and totality test. The dominancy test focuses on prevailing features between competing marks.

A case involving "Papa Ketcharaap" and "Papa Boy Lechon Sauce" illustrates how dominant words in trademarks can lead to legal disputes over their use.

Legal Precedents

The Supreme Court ruled that UFC exclusively owns the word "Papa" due to its prominence in both trademarks, leading to potential consumer confusion.

Another example involves Philips light bulbs versus Feel Lights; both contain similar dominant words, indicating possible trademark issues.

Totality Test vs. Dominancy Test

The totality test considers overall impressions including presentation, font, and tone rather than just dominant features.

This comprehensive approach helps determine if there’s a likelihood of confusion among consumers regarding different brands or products.

Consumer Perception and Market Impact

Questions posed about whether two brands appear similar encourage audience engagement regarding consumer perception.

A discussion reveals differing opinions on whether certain brands are perceived as belonging to the same company based on visual similarities.

Case Studies in Trademark Confusion

A case involving Lee jeans versus Stylistic Mr. Lee highlights how price points affect consumer decision-making and perceptions of brand similarity.

The court concluded that because high-priced items require careful selection by buyers, there was no significant confusion between these brands despite some similarities.

Conclusion on Trademark Cases

Legal considerations include examining word effects when read aloud; examples like Pico Genon show how phonetic similarities can lead to infringement claims.

Trademark and Copyright Insights

Understanding Trademark Concepts

The discussion begins with the complexity of word combinations in trademark disputes, emphasizing that even simple phrases can lead to significant legal battles.

Introduction of the doctrine of secondary meaning, which allows descriptive or geographical terms to be trademarked if they have gained distinctiveness through long-term use.

Example provided: "ang tibay" (the durability), a descriptive term for sandals. Despite its generic nature, it has acquired secondary meaning due to prolonged usage by a brand named Antibai.

A case involving Delasal Montessori International highlights how the name "Dela Sal" is contested. The Supreme Court ruled against its use due to existing associations with De La Salle University.

The court noted that while "De La Sal" refers to a French word for classroom, it has become associated with the De La Salle Brothers, thus preventing its appropriation by others.

Case Studies on Trademark Conflicts

Discussion on another case regarding the term "Lysium," where the Supreme Court denied trademark registration because it is considered generic for universities in the Philippines.

Mention of St. Francis Square's legal conflict with Shangri-La over using "St. Francis." The court ruled that since it's a geographical name, it cannot be trademarked as it lacks distinctiveness.

Clarification that geographical names like Saint Francis Street do not acquire secondary meaning quickly enough to warrant trademark protection under current laws.

Distinguishing Between Trademark Infringement and Unfair Competition

Explanation of unfair competition as an act of passing off goods in a way that deceives consumers about their origin or quality.

Key differences highlighted: Trademark infringement involves unauthorized use of a registered mark, while unfair competition focuses on misleading practices without necessarily requiring registration.

Notably, one can file for unfair competition even without prior registration of a trademark; this provides broader protection against deceptive practices in commerce.

Remedies and Jurisdiction in Trademark Issues

Legal remedies available include civil actions and criminal actions against trademark infringement or unfair competition claims.

Overview of Copyright Protection

Transition into copyright law; copyright protects literary and artistic works from the moment they are created without needing formal registration.

Examples given include video lectures and written materials being automatically protected upon creation; sharing these does not negate copyright rights unless authorized by the creator.

Distinction made between copyright and other intellectual property forms (like trademarks); copyrights cover various creative expressions including books, lectures, musical compositions, and computer programs.

Understanding Copyrightable Works

Copyright applies to various forms of creative expression, including photos, artworks, dramas, choreography, and adaptations like those on Netflix. Scholarly works such as dissertations are also protected under copyright.

Certain materials are not copyrightable; for instance, laws and news reports cannot be copyrighted. Unofficial texts of laws can be photocopied without infringing copyright.

Telephone directories (e.g., Yellow Pages) are not copyrightable because they lack creativity; they merely compile information without artistic value.

Rights of Copyright Owners

As a copyright owner, you possess economic rights that allow you to control reproduction and distribution of your work. This includes the right to create derivative works based on your original creation.

You have the authority over public display and performance of your work. For example, covering a song requires permission from the original artist unless otherwise agreed upon.

Duration of Economic Rights

The general duration for economic rights is 50 years after the author's death. This period begins on January 1 following their passing.

To extend protection beyond an author’s lifetime, co-authorship or registration with heirs can be utilized so that rights last until 50 years after the last surviving author’s death.

Moral Rights Explained

Moral rights include the right to attribution and integrity preservation of a work. Authors cannot alter their name association with a piece nor change its integrity without consent.

While moral rights are perpetual (e.g., Shakespeare retains attribution), some aspects like alteration may expire alongside economic rights.

Transition to Public Domain

Once copyright expires (after 50 years post-author's death), works enter the public domain allowing anyone to use them freely—this includes alterations or adaptations into new formats like films or series.

Ownership Considerations

Generally, ownership belongs to the creator unless specified otherwise in contracts. In commissioned works (like lectures), ownership typically resides with the commissioning party unless stated differently in writing.

The Impact of Copyright Law on Commercial Transactions

Understanding Copyright Ownership

The ownership of copyright in an article depends on whether the work is assigned to the employee or part of their regular duties.

If a work is created outside regular duties, it belongs to the employee; if within, it typically belongs to the employer unless otherwise agreed.

For personal letters, such as love letters, the copyright remains with the writer while the physical letter belongs to the recipient.

Defining Copyright Infringement

Copyright infringement occurs when exclusive economic rights are exercised without consent. Fair use can be an exception but must meet specific criteria.

Infringement requires both unauthorized and unfair use of copyrighted material.

Examples of Copyright Infringement

A derivative work, like transforming a photograph into a sculpture without permission, constitutes copyright infringement.

Playing movies on buses without authorization also qualifies as copyright infringement.

Fair Use Exceptions

Fair use may apply for criticism, comment, news reporting, teaching (limited copies), scholarship, and research purposes.

Copying an entire book for classroom use does not qualify as fair use due to substantial copying.

Evaluating Fair Use Criteria

Factors determining fair use include purpose and character of use, nature of copyrighted work, amount copied, and effect on market value.

Liability for Infringement

All parties involved in infringing activities can be held liable—this includes those who benefit from or contribute materially to infringing conduct.

Distinguishing Between Copyright Infringement and Plagiarism

Definitions and Differences

Copyright infringement involves unauthorized and unfair usage; plagiarism refers to using another's work without proper acknowledgment.

Remedies for Copyright Infringement

Possible remedies include filing injunctions, claiming damages (legal costs or lost profits), destroying infringing copies without compensation, impounding documents, and seeking moral damages.

Understanding Different Intellectual Property Types: Copyright vs. Trademark vs. Patent

Key Distinctions

Patents protect technical solutions that are new and industrially applicable; trademarks distinguish goods or services through visible signs.

Intellectual Property Law Overview

Types of Intellectual Property Protection

Patents are protected for 20 years from the filing date and are non-extendable.

Trademarks have a protection term of 10 years, which can be renewed indefinitely for additional 10-year periods.

Copyright is automatically granted upon creation; registration is optional but recommended at the National Library Office or ITO.

Practical Application: Distinguishing IP Types

The discussion shifts to practical examples to test understanding of patents, copyrights, and trademarks.

Using the iPhone as an example, participants are asked to identify copyrightable elements within its design and software.

Identifying Copyrightable Elements

The operating system of the iPhone is confirmed as copyrightable material.

The form factor (design) of the iPhone is also identified as potentially copyrightable.

Trademark and Patent Considerations

Logos (like Apple's logo) and wordmarks associated with products can be trademarked.

For patents, aspects such as design features or unique functionalities (e.g., camera technology in iPhones) can be patented.

Advanced Patent Topics

Additional patentable features discussed include Siri functionality and biometric recognition technologies like fingerprint and facial recognition.

The session concludes with an invitation for questions regarding intellectual property law concepts covered.