Written Report

Commercial Law Review

1. Enumerate the elements of incontestability clause and defenses not barred by the
said clause in life insurance.

Incontestability Clause refers to the clause stipulates that the policy shall be
incontestable after a stated period.

The following are the Requisites of incontestability clause as provided in Sec. 48:
a. The policy is a life insurance policy; and
b. It is payable on the death of the insured; and it has been in force during the
lifetime of the insured for at least two years from its date of issue or of its last
reinstatement. The incontestability clause is a mandatory provision in life
policies (Sec. 227(b)).

The following are the defenses not barred by the said clause in life insurance:

a. That the person taking the insurance lacked insurable interest;

b. That the cause of the death of the insured is an excepted risk;
c. That the premiums have not been paid;
d. That the conditions of the policy relating to military or naval service have
been violated;
e. That the fraud is vicious;
f. That the beneficiary failed to furnish proof of death or to comply with any
condition imposed by the policy after the loss has happened;
g. That the action was not brought within the time specified within the policy of
insurance;

2. Discuss inter partes proceedings before the Intellectual Property Office

involving conflicting claims on trademarks, tradenames, service marks and other
marks of ownership.

The Inter Partes Proceedings are the proceedings conducted at the Board to
review the patentability of one or more claims in the patent cases and trademark
cases. Under the said law, the following are the remedies available to a person
may bring in reviewing the patentability of claims, to wit:

1. Patent Cases:

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a. Petition to cancel an invention patent, utility model registration,
industrial design registration, or any claim or parts of a claim;
b. Petition for Compulsory Licensing or a license to exploit a patented
invention.
2. Trademark Cases:
a. Opposition against the registration of a mark published for opposition;
and
b. Petition to cancel the registration of a mark.

In the same vein, the following are the parties in inter partes proceedings,
namely: The Petitioner in a cancellation proceeding and in a compulsory licensing
proceeding; and the Opposer in an opposition proceeding shall be deemed to be
in the position of a plaintiff while, the Respondent in a cancellation, compulsory
licensing or opposition proceeding shall be in the position of defendant, with
respect thereto.

The Director of the IPO shall have original jurisdiction over inter partes
proceedings. Such inter partes proceedings shall be heard before the Director, any
Hearing Officer or other ranking official of the Bureau designated by the Director
but all decisions and final orders shall be signed by the Director.

3. Summarize the rulings of the Supreme Court in the case of Asia Brewery, Inc. vs.
CA and Smith vs. CA, 368 SCRA 9

Asia Brewery, Inc. vs. Court of Appeals and San Miguel Corporation (G.R. No.
103543 July 5, 1993)

Issue:
Are the words PALE PILSEN as part of ABIs trademark constitute
infringement of SMCs trademark?

Ruling:

No. The Supreme Court said it does not constitute an infringement as the
words PALE PILSEN, which are part of Asia Brewery Inc. (ABI) trademark, are
generic words descriptive of the color (pale), of a type of beer (pilsen), which
is a light bohemian beer with a strong hops flavor that originated in the City of
Pilsen, Czechislovakia and became famous in the Middle Ages.

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The Supreme Court further said that the words "pale pilsen" may not be
appropriated by SMC for its exclusive use even if they are part of its registered
trademark. No one may appropriate generic or descriptive words. They belong to
the public domain.

Petitioner ABI has neither infringed SMC's trademark nor committed

unfair competition with the latter's SAN MIGUEL PALE PILSEN product.

SMITH V. CA (G.R. No. L-56294, May 20, 1991)

Ruling:

When the language of the claim is clear and distinct, the patentee is
bound thereby and may not claim anything beyond them.

In the case at hand, the language of the Letter of Patents issued to the
petitioner failed to yield anything that it includes Respondent Albendazole. The
doctrine of equivalents does not apply in the case at bar because it requires that
for infringement to take place, the device should appropriate a prior invention by
incorporating its innovative concept and although there are some modifications
and change they perform substantially the same results. The petitioners evidence
failed to adduce that substantial sameness on both the chemicals they used. While
both compounds produce the same effects of neutralizing parasites in animals, the
identity of result does not amount to infringement. The petitioner has the burden
to show that it satisfies the function-means-and-result-test required by the doctrine
of equivalents. Nothing has been substantiated on how Albendazole can weed the
parasites out from animals which is similar to the manner used by the petitioner in
using their own patented chemical compound.

Hence, the respondent is not guilty of patent infringement.

4. What are the remedies available to a person deprived of the patent without his
consent or fraud?

The following are the available remedies to a person deprived of the

patent without his consent or fraud?

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a. Petition to cancel an invention patent, utility model registration,
industrial design registration, or any claim or parts of a claim;
b. Petition for Compulsory Licensing or a license to exploit a patented
invention.

5. When can an invention be considered as not new or novel?

Patentable Inventions 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, or process,
or an improvement of any of the foregoing. [Sec. 21, RA 8293]

An invention shall not be considered new if it forms part of a prior art.

[Sec. 23, RA 8293]

Prior art shall consist of:

1. 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; [Sec. 24.1, RA 8293]
2. The whole contents of an application for a patent, utility model, or industrial
design registration, published in accordance with this Act, filed or effective in the
Philippines, with a filing or priority date that is earlier than the filing or priority
date of the application: Provided, That the application which has validly claimed
the filing date of an earlier application under Section 31 of this Act, shall be prior
art with effect as of the filing date of such earlier application: Provided further,
That the applicant or the inventor identified in both applications are not one and
the same. [Sec. 24.2, RA 8293]

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