INTELLECTUAL PROPERTY LAWI. INTRODUCTION

1. Basis of the IPL- RA 8293 as amendedhttp://www.lawphil.net/statutes/repacts/ra1997/ra_8293_1997.html

2. Amendments to RA 8293

a. RA 9150

http://www.lawphil.net/statutes/repacts/ra2001/ra_9150_2001.html

b. RA 9502http://www.lawphil.net/statutes/repacts/ra2008/ra_9502_2008.html

c. RA 10372http://www.lawphil.net/statutes/repacts/ra2013/ra_10372_2013.html

d. RA 10055http://www.lawphil.net/statutes/repacts/ra2010/ra_10055_2010.html

3. Importance of adopting laws protecting IP rights

The importance of protecting intellectual property was first recognized in theParis Convention for the Protection of Industrial Propertyin 1883 and theBerne Convention for the Protection of Literary and Artistic Worksin 1886. Both treaties are administered by the World Intellectual Property Organization (WIPO).

Countries generally have laws to protect intellectual property for two main reasons. One is to give statutory expression to the moral and economic rights of creators in their creations and to the rights of the public in accessing those creations. The second is to promote creativity, and the dissemination and application of its results, and to encourage fair trade, which would contribute to economic and social development.

4. Philippine Commitment to the GATT-TRIPS agreement

Tanada vs Angara

FACTSThe suit was filed to nullify the concurrence of the Philippines Senate to the Presidents Ratification of the Agreement establishing the World Trade Organization. It was contended that the agreement places nationals and products of member countries on the same footing as Filipinos and local products in contravention of the Filipino First Policy.

Petitioners maintained that this Agreement was an assault on the sovereign powers of the Philippines because it meant that Congress could not pass legislation that would be good for national interest and general welfare if such legislation would not conform to the WTO Agreement.

ISSUEWhether the provisions of the WTO Agreement and its annexes limit, restrict, or impair the exercise of legislative power by Congress.

HELDWhile sovereignty has traditionally been deemed absolute and all-encompassing on the domestic level, it is however subject to limitations and restrictions voluntarily agreed to by the Philippines as a member of the family of nations. One of the oldest and most fundamental rules in international law is pacta sunt servanda international agreements must be performed in good faith. A treaty engagement is not a mere moral obligation but creates a legally binding obligation on the parties xxx. A state which has contracted valid international obligations is bound to make in its legislation such modifications as may be necessary to ensure the fulfillment of the obligations undertaken.

By their inherent nature, treaties really limit or restrict the absoluteness of sovereignty. By their voluntary act, nations may surrender some aspects of their state power in exchange for greater benefits granted by or derived from a convention or pact. After all, states, like individuals live with coequals, and in pursuit of mutuality covenanted objectives and benefits, they also commonly agree to limit the exercise of their otherwise absolute rights.

The sovereignty of a state therefore cannot in fact and in reality be considered absolute. Certain restrictions enter into the picture: (1) limitations imposed by the very nature of membership in the family of nations and (2) limitations imposed by treaty stipulations.

5. Did RA 8293 repeal existing laws on IP?

Mirpuri vs CA

Facts:

Barbizon Corp (foreign corp) has adopted the trademark Barbizon. Thus, upon finding that Mirpuri (domiciled in the Phil) seeks to register the same trademark in the Philippines, Barbizon Corp filed its opposition. Barbizon Corp alleges its trademark is qualified as well-known and is therefore protected by the Convention of Paris for the Protection of Intellectual Property which the Philippines has bound to enforce. The Director of Patents rendered a decision giving due course to the patent application of Mirpuri. The CA, however, reversed this decision.

Issue: Whether or not the Convention of Paris for the Protection of Intellectual Propertyaffords protection to a foreign corporation against a Philippine applicant for the registration of a similar trademark.

Held: Affirmative. The Philippines and the United States of America have acceded to the WTO Agreement x x x Conformably, the State must reaffirm its commitment to the global community and take part in evolving a new international economic order at the dawn of the new millennium.

Thus,the first paragraph of Article 6bisof the Paris Convention is applicable in the instant case:

This Article governs protection ofwell-known trademarks. Under the first paragraph, each country of the Union bound itself to undertake to refuse or cancel the registration, and prohibit the use of a trademark which is a reproduction, imitation or translation, or any essential part of which trademark constitutes a reproduction, liable to create confusion, of a mark considered by the competent authority of the country where protection is sought, to be well-known in the country as being already the mark of a person entitled to the benefits of the Convention, and used for identical or similar goods.

It is a self-executing provision and does not require legislative enactment to give it effect in the member country.

Samson vs Daway

Facts:The petitioner allegedly sold or offers the sale of garment product using the trademark Caterpillar to the prejudice of its previous user, private respondent in this case. The respondent filed the case to the RTC. The petitioner contended that the case should be filed with the MTC because violation of unfair competition is penalized with an imprisonment not exceeding 6 years under RA 7691.

Issue:Where do you file a suit for unfair competition?

Held:The SC held that under Sec 163 of the IPC, actions for unfair competition shall be brought before the proper courts with appropriate jurisdiction under existing laws. The law contemplated in Sec 163 of IPC is the Trademark Law. Sec 27 of Trademark Law states that action for unfair competition shall be filed with the CFI (now RTC). Since RA 7691 is a general law and IPC in relation to Trademark law is a special law, the latter shall prevail. Actions for unfair competition therefore should be filed with the RTC.* Answer to the question:We find no merit in the claim of petitioner that R.A. No. 166 was expressly repealed by R.A. No. 8293. The repealing clause of R.A. No. 8293, reads

SEC. 239.Repeals. 239.1. All Acts andparts of Actsinconsistent herewith, more particularly Republic Act No. 165, as amended;Republic Act No. 166, as amended; and Articles 188 and 189 of the Revised Penal Code; Presidential Decree No. 49, including Presidential Decree No. 285, as amended, are hereby repealed. (Emphasis added)

Notably, the aforequoted clause did not expressly repeal R.A. No. 166 in its entirety, otherwise, it would not have used the phrases parts of Actsand inconsistent herewith; and it would have simply stated Republic Act No. 165, as amended; Republic Act No. 166, as amended; and Articles 188 and 189 of the Revised Penal Code; Presidential Decree No. 49, including Presidential Decree No. 285, as amended are hereby repealed. It would have removed all doubts that said specific laws had been rendered without force and effect. The use of the phrases parts of Actsand inconsistent herewith only means that the repeal pertains only to provisions which are repugnant or not susceptible of harmonization with R.A. No. 8293.7Section 27 of R.A. No. 166, however, is consistent and in harmony with Section 163 of R.A. No. 8293. Had R.A. No. 8293 intended to vest jurisdiction over violations of intellectual property rights with the Metropolitan Trial Courts, it would have expressly stated so under Section 163 thereof.6. Intellectual property rights- Trademark, Copyright and Patents

Sec. 4.1, RA 8293

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II. PRELIMINARY MATTERS1. State policy Declaration- Sec. 2

Section 2.Declaration of State Policy. - The State recognizes that an effective intellectual and industrial property system is vital to the development of domestic and creative activity, facilitates transfer of technology, attracts foreign investments, and ensures market access for our products. It shall protect and secure the exclusive rights of scientists, inventors, artists and other gifted citizens to their intellectual property and creations, particularly when beneficial to the people, for such periods as provided in this Act.

The use of intellectual property bears a social function. To this end, the State shall promote the diffusion of knowledge and information for the promotion of national development and progress and the common good.

It is also the policy of the State to streamline administrative procedures of registering patents, trademarks and copyright, to liberalize the registration on the transfer of technology, and to enhance the enforcement of intellectual property rights in the Philippines. (n)

Twentieth Century Music Corp vs Aiken

Petitioners' copyrighted songs were received on the radio in respondent's food shop from a local broadcasting station, which was licensed by the American Society of Composers, Authors and Publishers to perform the songs, but respondent had no such license. Petitioners then sued respondent for copyright infringement. The District Court granted awards, but the Court of Appeals reversed.

Held:Respondent did not infringe upon petitioners' exclusive right, under the Copyright Act, "[t]o perform the copyrighted work publicly for profit," since the radio reception did not constitute a "performance" of the copyrighted songs.Fortnightly Corp. v. United Artists,392 U. S. 390;Teleprompter Corp. v. CBS,415 U. S. 394. To hold that respondent "performed" the copyrighted works would obviously result in a wholly unenforceable regime of copyright law, and would also be highly inequitable, since (short of keeping his radio turned off) one in respondent's position would be unable to protect himself from infringement liability. Such a ruling, moreover, would authorize the sale of an untold number of licenses for what is basically a single rendition of a copyrighted work, thus conflicting with the balanced purpose of the Copyright Act of assuring the composer an adequate return for the value of his composition while, at the same time, protecting the public from oppressive monopolies. Pp.422 U. S. 154-16.

500 F.2d 127, affirmed.

Feist Publications, Inc. vs Rural Tele Servs

SyllabusRespondent Rural Telephone Service Company is a certified public utility providing telephone service to several communities in Kansas. Pursuant to state regulation, Rural publishes a typical telephone directory, consisting of white pages and yellow pages. It obtains data for the directory from subscribers, who must provide their names and addresses to obtain telephone service. Petitioner Feist Publications, Inc., is a publishing company that specializes in area-wide telephone directories covering a much larger geographic range than directories such as Rural's. When Rural refused to license its white pages listings to Feist for a directory covering 11 different telephone service areas, Feist extracted the listings it needed from Rural's directory without Rural's consent. Although Feist altered many of Rural's listings, several were identical to listings in Rural's white pages. The District Court granted summary judgment to Rural in its copyright infringement suit, holding that telephone directories are copyrightable. The Court of Appeals affirmed.

Held:Rural's white pages are not entitled to copyright, and therefore Feist's use of them does not constitute infringement. Pp.499 U. S. 344-364.

(a) Article I, 8, cl. 8, of the Constitution mandates originality as a prerequisite for copyright protection. The constitutional requirement necessitates independent creation plus a modicum of creativity. Since facts do not owe their origin to an act of authorship, they are not original, and thus are not copyrightable. Although a compilation of facts may possess the requisite originality because the author typically chooses which facts to include, in what order to place them, and how to arrange the data so that readers may use them effectively, copyright protection extends only to those components of the work that are original to the author, not to the facts themselves. This fact/expression dichotomy severely limits the scope of protection in fact-based works. Pp.499 U. S. 344-351.

(b) The Copyright Act of 1976 and its predecessor, the Copyright Act of 1909, leave no doubt that originality is the touchstone of copyright protection in directories and other fact-based works. The 1976 Act explains that copyright extends to "original works of authorship," 17 U.S.C. 102(a), and that there can be no copyright in facts, 102(b).

Page 499 U. S. 341

A compilation is not copyrightableper se,but is copyrightable only if its facts have been "selected, coordinated, or arrangedin such a waythat the resulting work as a whole constitutes an original work of authorship." 101 (emphasis added). Thus, the statute envisions that some ways of selecting, coordinating, and arranging data are not sufficiently original to trigger copyright protection. Even a compilation that is copyrightable receives only limited protection, for the copyright does not extend to facts contained in the compilation. 103(b). Lower courts that adopted a "sweat of the brow" or "industrious collection" test -- which extended a compilation's copyright protection beyond selection and arrangement to the facts themselves -- misconstrued the 1909 Act and eschewed the fundamental axiom of copyright law that no one may copyright facts or ideas. Pp.499 U. S. 351-361.

(c) Rural's white pages do not meet the constitutional or statutory requirements for copyright protection. While Rural has a valid copyright in the directory as a whole because it contains some forward text and some original material in the yellow pages, there is nothing original in Rural's white pages. The raw data are uncopyrightable facts, and the way in which Rural selected, coordinated, and arranged those facts is not original in any way. Rural's selection of listings -- subscribers' names, towns, and telephone numbers -- could not be more obvious, and lacks the modicum of creativity necessary to transform mere selection into copyrightable expression. In fact, it is plausible to conclude that Rural did not truly "select" to publish its subscribers' names and telephone numbers, since it was required to do so by state law. Moreover, there is nothing remotely creative about arranging names alphabetically in a white pages directory. It is an age-old practice, firmly rooted in tradition and so commonplace that it has come to be expected as a matter of course. Pp.499 U. S. 361-364.

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Facts.Rural Telephone Service Company, Inc. (Plaintiff) provides telephone service to several communities. Due to a state regulation, it must issue an annual telephone directory, so it published a directory consisting of white and yellow pages. The yellow pages have advertisements that generate revenue. Feist Publications, Inc. (Defendant) is a publishing company whose directory covers a larger range than a typical directory. Defendant distributes their telephone books free of charge, and they also generate revenue through the advertising in the yellow pages. Plaintiff refused to give a license to Defendant for the phone numbers in the area, so Defendant used them without Plaintiffs consent. Rural sued for copyright infringement.

Issue.Are the names, addresses, and phone numbers in a telephone directory able to be copyrighted?Held.No.Facts cannot be copyrighted, however compilations of facts can generally be copyrighted.To qualify for copyright protection, a work must be original to the author, which means that the work was independently created by the author, and it possesses at least some minimal degree of creativity. A work may be original even thought it closely resembles other works so long as the similarity is fortuitous, not the result of copying.Facts are not original. The first person to find and report a particular fact has not created the fact; he has merely discovered its existence. Facts may not be copyrighted and are part of the public domain available to every person.Factual compilations may possess the requisite originality. The author chooses what facts to include, in what order to place them, and how to arrange the collected date so they may be effectively used by readers. Thus, even a directory that contains no written expression that could be protected, only facts, meets the constitutional minimum for copyright protection if it features an original selection or arrangement. But, even though the format is original, the facts themselves do not become original through association. The copyright on a factual compilation is limited to formatting. The copyright does not extend to the facts themselves.To establish copyright infringement, two elements must be proven: ownership of a valid copyright and copying of constituent elements of the work that are original. The first element is met in this case because the directory contains some forward text. As to the second element, the information contains facts, which cannot be copyrighted. They existed before being reported and would have continued to exist if a telephone directory had never been published. There is no originality in the formatting, so there is no copyrightable expression. Thus, there is no copyright infringement.

Discussion.Facts cannot be subject to copyright laws; otherwise there would be no spreading of information or learning. Subjecting facts to copyright laws would mean that any time a person used a fact found in a book, be it in a school paper, newspaper, or another book, that person would be guilty of piracy.2. Effect on International Conventions and on Principle of reciprocity

Sec. 3 and 231

Section 3.International Conventions and Reciprocity. - Any person who is a national or who is domiciled or has a real and effective industrial establishment in a country which is a party to any convention, treaty or agreement relating to intellectual property rights or the repression of unfair competition, to which the Philippines is also a party, or extends reciprocal rights to nationals of the Philippines by law, shall be entitled to benefits to the extent necessary to give effect to any provision of such convention, treaty or reciprocal law, in addition to the rights to which any owner of an intellectual property right is otherwise entitled by this Act. (n)

Section 231.Reverse Reciprocity of Foreign Laws. - Any condition, restriction, limitation, diminution, requirement, penalty or any similar burden imposed by the law of a foreign country on a Philippine national seeking protection of intellectual property rights in that country, shall reciprocally be enforceable upon nationals of said country, within Philippine jurisdiction. (n)Mipuri vs CA

Intellectual and industrial property rights cases are not simple property cases.Trademarks deal with the psychological function of symbols and the effect of these symbols on the public at large.[75]Trademarks play a significant role in communication, commerce and trade, and serve valuable and interrelated business functions, both nationally and internationally.For this reason, all agreements concerning industrial property, like those on trademarks and tradenames, are intimately connected with economic development.[76]Industrial property encourages investments in new ideas and inventions and stimulates creative efforts for the satisfaction of human needs.They speed up transfer of technology and industrialization, and thereby bring about social and economic progress.[77]These advantages have been acknowledged by the Philippine government itself.The Intellectual Property Code of the Philippines declares that "an effective intellectual and industrial property system is vital to the development of domestic and creative activity, facilitates transfer of technology, it attracts foreign investments, and ensures market access for our products."[78]The Intellectual Property Code took effect on January 1, 1998 and by its express provision,[79]repealed the Trademark Law,[80]the Patent Law,[81]Articles 188 and 189 of the Revised Penal Code, the Decree on Intellectual Property,[82]and the Decree on Compulsory Reprinting of Foreign Textbooks.[83]The Code was enacted to strengthen the intellectual and industrial property system in the Philippines as mandated by the country's accession to the Agreement Establishing the World Trade Organization (WTO).[84]The WTO is a common institutional framework for the conduct of trade relations among its members in matters related to the multilateral and plurilateral trade agreements annexed to the WTO Agreement.[85]The WTO framework ensures a "single undertaking approach" to the administration and operation of all agreements and arrangements attached to the WTO Agreement.Among those annexed is the Agreement on Trade-Related Aspects of Intellectual Property Rights or TRIPs.[86]Members to this Agreement "desire to reduce distortions and impediments to international trade, taking into account the need to promote effective and adequate protection of intellectual property rights, and to ensure that measures and procedures to enforce intellectual property rights do not themselves become barriers to legitimate trade." To fulfill these objectives, the members have agreed to adhere to minimum standards of protection set by several Conventions.[87]These Conventions are:the Berne Convention for the Protection of Literary and Artistic Works (1971), the Rome Convention or the International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations, the Treaty on Intellectual Property in Respect of Integrated Circuits,and the Paris Convention (1967),as revised in Stockholm on July 14, 1967.[88]A major proportion of international trade depends on the protection of intellectual property rights.[89]Since the late 1970's, the unauthorized counterfeiting of industrial property and trademarked products has had a considerable adverse impact on domestic and international trade revenues.[90]The TRIPs Agreement seeks to grant adequate protection of intellectual property rights by creating a favorable economic environment to encourage the inflow of foreign investments, and strengthening the multi-lateral trading system to bring about economic, cultural and technological independence.[91]The Philippines and the United States of America have acceded to the WTO Agreement.This Agreement has revolutionized international business and economic relations among states, and has propelled the world towards trade liberalization and economic globalization.[92]Protectionism and isolationism belong to the past.Trade is no longer confined to a bilateral system.There is now "a new era of global economic cooperation, reflecting the widespread desire to operate in a fairer and more open multilateral trading system."[93]Conformably, the State must reaffirm its commitment to the global community and take part in evolving a new international economic order at the dawn of the new millenium.

3. Coverage of Intellectual Property Rights. Indifferences- Sec. 4.1Kho vs CA

Elidad Kho is the owner of KEC Cosmetics Laboratory and she was also the holder of copyrights overChin Chun SuanditsOval Facial Cream Container/Case.She also bought the patent rights over theChin Chun Su & DeviceandChin Chun Sufor medicated cream from one Quintin Cheng, who was the assignee of Shun Yi Factory a Taiwanese factory actually manufacturingChin Chun Suproducts.

Kho filed a petition for injunction against Summerville General Merchandising and Company to enjoin the latter from advertising and selling Chin Chun Su products, in similar containers as that of Kho, for this is misleading the public and causing Kho to lose income; the petition is also to enjoin Summerville from infringing upon Khos copyrights.

Summerville in their defense alleged that they are the exclusive and authorized importer, re-packer and distributor of Chin Chun Su products; that Shun Yi even authorized Summerville to register its trade name Chin Chun Su Medicated Cream with the Philippine Patent Office; that Quintin Cheng, from home Kho acquired her patent rights, had been terminated by Shun Yi.

ISSUE:Whether or not Kho has the exclusive right to use the trade name and its container.

HELD:No. Kho has no right to support her claim for the exclusive use of the subject trade name and its container. The name and container of a beauty cream product are proper subjects of a trademark (not copyright like what she registered for) inasmuch as the same falls squarely within its definition. In order to be entitled to exclusively use the same in the sale of the beauty cream product, the user must sufficiently prove that she registered or used it before anybody else did. Khos copyright and patent registration of the name and container would not guarantee her the right to the exclusive use of the same for the reason that they are not appropriate subjects of the said intellectual rights. Consequently, a preliminary injunction order cannot be issued for the reason that the petitioner has not proven that she has a clear right over the said name and container to the exclusion of others, not having proven that she has registered a trademark thereto or used the same before anyone did.

* Trademark, copyright and patents are different intellectual property rights that cannot be interchanged with one another. A trademark is any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods.[12]In relation thereto, a trade name means the name or designation identifying or distinguishing an enterprise.[13]Meanwhile, the scope of a copyright is confined to literary and artistic works which are original intellectual creations in the literary and artistic domain protected from the moment of their creation.[14]Patentable inventions, on the other hand, refer to any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable.[15]Pearl & Dean Inc. vs Shoemart Inc.Pearl and Dean Inc. is a corporation engaged in the manufacture of advertising display units called light boxes. In January 1981, Pearl and Dean was able to acquire copyrights over the designs of the display units. In 1988, their trademark application for Poster Ads was approved; they used the same trademark to advertise their light boxes.

In 1985, Pearl and Dean negotiated with Shoemart Inc. (SM) so that the former may be contracted to install light boxes in the ad spaces of SM. Eventually, SM rejected Pearl and Deans proposal.

Two years later, Pear and Dean received report that light boxes exactly the same as theirs are being used by SM in their ad spaces. They demanded SM to stop using the light boxes and at the same time asked for damages amounting to P20 M. SM refused to pay damages though they struck down the light boxes. Pearl and Dean eventually sued SM. SM argued that it did not infringe on Pearl and Deans trademark because Pearl and Deans trademark is only applicable to envelopes and stationeries and not to the type of ad spaces owned by SM. SM also averred that Poster Ads is a generic term hence it is not subject to trademark registration. SM also averred that the actual light boxes are not copyrightable. The RTC ruled in favor of Pearl and Dean. But the Court of Appeals ruled in favor of SM.

ISSUE:Whether or not the Court of Appeals is correct.

HELD:Yes. The light boxes cannot, by any stretch of the imagination, be considered as either prints, pictorial illustrations, advertising copies, labels, tags or box wraps, to be properly classified as a copyrightable; what was copyrighted were the technical drawings only, and not the light boxes themselves. In other cases, it was held that there is no copyright infringement when one who, without being authorized, uses a copyrighted architectural plan to construct a structure. This is because the copyright does not extend to the structures themselves.

On the trademark infringement allegation, the words Poster Ads are a simple contraction of the generic term poster advertising.In the absence of any convincing proof that Poster Ads has acquired a secondary meaning in this jurisdiction, Pearl and Deans exclusive right to the use of Poster Ads is limited to what is written in its certificate of registration, namely, stationeries.

Trademark, copyright and patents are different intellectual property rights that cannot be interchanged with one another.A trademark is any visible sign capable of distinguishing the goods(trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods. In relation thereto, a trade name means the name or designation identifying or distinguishing an enterprise. Meanwhile,the scope of a copyright is confined to literary and artistic workswhich are original intellectual creations in the literary and artistic domain protected from the moment of their creation.Patentable inventions, on the other hand, refer to any technical solution of a problem in any field of human activitywhich is new, involves an inventive step and is industrially applicable.4. The Intellectual Property Office- Sec. 5 to 16 as amendedPest management Ass of the Phil vs Fertilizer and Pesticide Authority

There is no encroachment upon the powers of the IPO granted under R.A. No. 8293, otherwise known as theIntellectual Property Code of the Philippines.Section 5 thereof enumerates the functions of the IPO.Nowhere in said provision does it state nor can it be inferred that the law intended the IPO to have the exclusive authority to protect or promote intellectual property rights in thePhilippines. On the contrary, paragraph (g)of said Section even provides that the IPO shall [c]oordinatewith other government agencies and the private sector efforts to formulate and implement plans and policies to strengthen the protection of intellectual property rights in the country. Clearly, R.A. No. 8293 recognizes that efforts to fully protect intellectual property rights cannot be undertaken by the IPO alone.Other agencies dealing with intellectual property rights are, therefore, not precluded from issuing policies, guidelines and regulations to give protection to such rights.

There is also no evidence whatsoever to support petitioner's allegation that the grant of protection to proprietary data would result in restrainingfree trade.Petitioner did not adduce any reliable data to prove its bare allegation that the protection of proprietary data would unduly restrict trade on pesticides.Furthermore, as held inAssociation of Philippine Coconut Desiccators v. Philippine Coconut Authority,[6]despite the fact that our present Constitution enshrines free enterprise as a policy, it nonetheless reserves to the government the power to intervene whenever necessary to promote the general welfare.There can be no question that the unregulated use or proliferation of pesticides would be hazardous to our environment.Thus, in theaforecitedcase, the Court declared that free enterprise does not call for removal ofprotective regulations.[7]More recently, inCoconut Oil Refiners Association, Inc. v. Torres,[8]the Court held that [t]he mere fact that incentives and privileges are granted to certain enterprises to the exclusion of others does not render the issuance unconstitutional for espousing unfair competition.It must be clearly explained and proven by competent evidence just exactly how such protective regulation would result in the restraint of trade.

In sum, the assailed provision in the 1987 Pesticide Regulatory Policies and Implementing Guidelines granting protection to proprietary data is well within the authority of the FPA to issue so as to carry out its purpose ofcontrolling, regulating and developing the pesticide industry.

In-N-Out Burged Inc. vs Sehwani, Incorporated and/or Benitas Frites

In-N-Out Burger, Inc vs Sehwani, IncG.R. No. 179127 :December 24, 2008Facts:Petitioner IN-N-OUT BURGER, INC., a business entity incorporated under the laws of US, which is a signatory to the Convention ofParis on Protection of Industrial Property and the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS). Petitioner isengaged mainly in the restaurant business, but it has never engaged in business in the Philippines. Respondents Sehwani, Incorporatedand Benita Frites, Inc. are corporations organized in the Philippines.On 2 June 1997, petitioner filed trademark and service mark applications with the Bureau of Trademarks (BOT) of the IPO for "IN-N-OUT"and "IN-N-OUT Burger & Arrow Design." Petitioner later found out, through the Official Action Papers issued by the IPO on 31 May 2000,that respondent Sehwani, Incorporated had already obtained Trademark Registration for the mark "IN N OUT (the inside of the letter "O"formed like a star)." Petitioner eventually filed on 4 June 2001 before the Bureau of Legal Affairs (BLA) of the IPO an administrativecomplaint against respondents for unfair competition and cancellation of trademark registration. Respondents asserted therein that theyhad been using the mark "IN N OUT" in the Philippines since 15 October 1982. Respondent then filed with the BPTTT an application for theregistration of the mark. BPTTT approved its application and issued the corresponding certificate of registration in favor of the respondent.On Dec 22, 2003, IPO Director of Legal Affairs rendered a decision in favor of petitioner stating petitioner had the right to use itstradename and mark in the Philippines to the exclusion of others. However, the decision also includes that respondent is not guilty ofunfair competition.Upon appeal by petitioner, the new IPO Director General declared that respondents were guilty ofunfair competitionon December 23, 2005. On 18 July 2006, the Court of Appeals promulgated a Decision reversing the Decision dated 23 December 2005 ofthe IPO Director General. The appellate court declared that Section 163 of the Intellectual Property Code specifically confers upon theregular courts, and not the BLA-IPO, sole jurisdiction to hear and decide cases involving provisions of the Intellectual Property Code,particularly trademarks. Hence, the present petition.Issue:(1) Whether the IPO (administrative bodies) have jurisdiction to cases involving unfair competition(2) Whether respondent Sehwani is liable of unfair competitionHeld: (1) Yes. Sec. 160 and 170, which are found under Part III of the IP Code, recognize the concurrent jurisdiction of civil courts and theIPO over unfair competition cases. Therefore, the IPO Director of Legal Affairs have jurisdiction to decide the petitioner's administrativecase against respondents and the IPO Director General have exclusive jurisdiction over the appeal of the judgment of the IPO Director ofLegal Affairs.(2) Yes. The evidence on record shows that the respondents were not using their registered trademark but that of the petitioner. Further,respondents are giving their products the general appearance that would likely influence purchasers to believe that these products arethose of the petitioner. The intention to deceive may be inferred from the similarity of the goods as packed and offered for sale, and, thus,action will lie to restrain such unfair competition. Also, respondents use of IN

-N-OUT BURGER in busineses signages reveals fraudulentintent to deceive purchasers.N.B.The essential elements of an action for unfair competition are 1) confusing similarity in the general appearance of the goods and (2) intentto deceive the public and defraud a competitorPhil Pharmawealth Inc. vs Pfizer Inc and Pfizer Inc.

The Supreme Court of the Philippines was recently faced with an intriguing issue: Is it permissible to grant an injunction in respect of a patent post-expiration of the patent term? The Supreme Court also had the opportunity to opine on another interesting issue, that of forum shopping. Without jumping the gun by stating how the Supreme Court dealt with the issues, it may be pertinent to briefly dwell on what transpired and how the issues arose inPhil Pharmawealth, Inc v. Pfizer, Inc and Pfizer (Phil) Inc.A Peek into How the Events UnfurledThe case involved Philippines Letters Patent No 21116, coveringAmpicillin sodium/ Sulbactam sodium (Sulbactam Ampicillin)[SA], a substance which was marketed under the brand name Unasyn. The subject patent was issued on July 16, 1987, and under the old patents regime it had a term of protection of 17 years reckoned from the date of issuance, viz. until July 16, 2004.

Sometime in 2003, Pfizer came to know that Phil Pharmawealth (Pharmawealth) had submitted bids for the supply of SA to several hospitals without Pfizers consent. Following an unsuccessful attempt to prevent the hospitals from accepting Pharmawealths bids, Pfizer filed a complaint for patent infringement with the Bureau of Legal Affairs of the Intellectual Property Office (BLA-IPO). A preliminary injunction was issued for a period of 90 days.

Prior to the expiration, Pfizer filed a Motion for Extension of Writ of Preliminary Injunction, which was denied. Aggrieved, Pfizer filed a special civil action for certiorari with the Court of Appeals assailing the resolution of the BLA-IPO and praying for the issuance of a preliminary mandatory injunction for the reinstatement and extension of the writ of preliminary injunction issued by the BLA-IPO. Meanwhile, Pfizer filed a complaint before the Regional Trial Court of Makati City, alleging infringement and unfair competition and praying for the issuance of a temporary restraining order and preliminary injunction.

Pharmawealth then filed a Motion to Dismiss before the Court of Appeals on the ground of forum shopping, contending that the case filed with the Regional Trial Court had the same objective. On January 18, 2005, the Court of Appeals issued the questioned resolution directing the issuance of a temporary restraining order conditioned upon Pfizers filing of a bond. To which, Pharmawealth filed its Second Motion to Dismiss for being moot and academic, contending that Pfizers patent had already lapsed. The patent right sought to be protected by the temporary restraining order has been extinguished.

Determination by the Supreme CourtPharmawealth brought this matter to the Supreme Court and questioned the propriety of the Court of Appeals Resolution dated January 18, 2005; the Supreme Court ruled that the patent owners exclusive rights can only be enforced during the patents term of protection.

Period of Monopoly granted by a PatentPfizers exclusive rights to monopolize the product subject of the Patent only exist within the term of the patent or until July 16, 2004. After this period, Pfizer no longer possess any right of monopoly, and as such, there is no more basis for the issuance of a restraining order or injunction. Since the patent, which was initially the basis of the BLA-IPO for issuing the injunction, was no longer valid, any issue as to the propriety of extending the life of the injunction was already moot and academic. Section 37 of RA 166 is clear thatthe exclusive right of a patentee to make, use and sell a patented product, article or process exist only during the term of the patent.

Forum Shopping?Antecedent to the main issue, was the claim of forum shopping, to which the Supreme Court found Pfizer guilty for having instituted separate actions before the IPO and the Regional Trial Court, praying for the same relief.It appears that the ultimate objective which Pfizer seeks to achieve in their separate complaints filed with IPO-BLA and then the Regional Trial Court Makati is to ask for damages for the alleged violation of their right to exclusively sell SA products and to permanently prevent Pharmawealth from selling said products.

Ampicillin sodium is derived from the penicillin nucleus, 6-aminopenicillanic acid. Chemically, it is monosodium (2S, 5R, 6R)-6-[(R)-2-amino-2-phenylacetamido]- 3,3-dimethyl-7-oxo-4-thia-1-azabicyclo[3.2.0]heptane-2-carboxylate and has a molecular weight of 371.39. Its chemical formula is C16H18N3NaO4S. The structural formula is:

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ADOPTION OF INTELLECTUAL PROPERTY POLICIES

"SEC. 230.Adoption of Intellectual Property (IP) Policies. Schools and universities shall adopt intellectual property policies that would govern the use and creation of intellectual property with the purpose of safeguarding the intellectual creations of the learning institution and its employees, and adopting locally-established industry practice fair use guidelines. These policies may be developed in relation to licensing agreements entered into by the learning institution with a collective licensing organization."

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