The Patent Law

What is a patent?
A patent is a statutory grant, by
government, which confers to an inventor
or his legal successor, in return for the
disclosure of the invention to the public,
the right for a limited period of time to
exclude others from making, using, selling
or importing the invention within the
territory of the country that grants the
patent.

5/5/17
TOPICS FOR DISCUSSION

A. Rights of patentees
B. Infringement of patents
Rights of Patentees (Sec. 71.1 & 71.2)
What are the exclusive rights conferred to the
owner of the patent?
- the making, using offering for sale, selling or
importing:
a patented product,
a product obtained thru a patented
process or the use of a patented process.
To assign or transfer by succession the patent
and to conclude licensing contracts for the
same.
Limitations to Rights of Patentees (Sec. 72)
- Exhaustion of patent rights:
where the patented product was put on the
market in the Philippines by the owners of the
patent. (This prohibits parallel importation)
EXCEPT drugs and medicines where patent
rights are exhausted after a drug or medicine
has been introduced in the Philippines or
anywhere else in the world by the patent owner
The right to import the drugs and
medicines contemplated in this section shall be
available to any government agency or any
private party
Limitations to Rights of Patentees
Exhaustion of patent rights
US v. Univis Lens Co., et. al 316 U.S. 241
Where one has sold an uncompleted article,
which because it embodies essential features of his
patented invention, destined the article to be
finished by the purchaser in conformity to the
patent ,he has sold his invention so far as it may be
embodied in that particular article.
Limitations to the rights of
patentees
- the exploitation of the patent is exclusively for
PRIVATE USE;
- the use consists of the preparation for individual
cases, by a pharmacist or a medical professional of a
medicine in accordance with a medical prescription
and after the drug or medicines has been put in the
market by the patent owner in the Philippines or any
where else in the world.
- use in transit
Limitations to the rights of
patentees
- for scientific research and experiment

Roche v. Bolar Pharmaceutical, 773 F. 2d 858, April 23, 1984

In Roche v. Bolar Pharmaceutical, the US Court of Appeals,

Federal Circuit, ruled that the use of flurazepam hcl to
provide FDA required test data is an infringement of the
053 Patent. Unlicensed experiments conducted with a
view to the adaptation of the patented invention to the
experimentors business is a violation of the right of the
patentee to exclude others from using the patented
invention.
Limitations to the rights of
patentees
In the Philippines different rule is followed:
In case of drugs and medicines Cheaper
Medicine Law the testing, using, making of selling
the invention for the purpose related to the
development and submission of information and
issuance of government approvals required by law
will not be deemed a violation of the rights of the
patentee. (Section 72.4, Rep. Act 8293 as amended
by Rep. Act 9502).
 Limitations to the rights of
patentees

- TERRITORIALITY: those rights have force and

effect only within Philippine territory
- TERM: 20 years from date of filing; not renewable
- PRIOR USER in good faith
Any prior user, who, in good faith was using
the invention or has undertaken serious preparations to
use the invention in his enterprise or business (Sec. 73,
RA 8293)
- COMPULSORY licensing
Limitations; Compulsory Licensing

- Patents may be exploited without the

authority of the patentee through a
compulsory license (filed with the IPO
after exhausting attempts to obtain a
voluntary license) on any of these
grounds:
Limitations; Compulsory Licensing
Where there is national emergency; or is
required by national security, nutrition,
health or the development of vital sectors
of the economy; or the manner of
exploitation of the patent by the owner is
determined/ to be anti-competitive; or to
exploit a second patent which cannot be
used without infringing the first patent if
the exploitation of the second patent
involves an important technical advance of
considerable economic significance.
Special Procedure on the issuance of
Compulsory License for drugs and
medicines

Sec. 93-A. The Director General of the Intellectual Property

Office, upon the written recommendation of the Secretary of
the Department of Health, shall, upon filing of a petition, grant
a special compulsory license for the importation of patented
drugs and medicines. which shall be an additional special
alternative procedure to ensure access to quality affordable
medicines and shall be primarily for domestic consumption:
Provided, That adequate remuneration shall be paid to the
patent owner. The grantee of the license shall exercise
reasonable measures to prevent the re-exportation of the
products imported under this provision.
xxx
No court, except the Supreme Court, shall issue any
TRO, preliminary injunction, or any provisional remedy that
will prevent the grant of the special compulsory license.
 Compulsory License for the
manufacture and Export of drugs:

93-A.2. A compulsory license shall also be

available for the manufacture and EXPORT OF
DRUGS and medicines to any country having
insufficient or no manufacturing capacity in the
pharmaceutical sector to address public health
problems: Provided, That, a compulsory license
has been granted by such country or such
country has, by notification or otherwise, allowed
importation into its jurisdiction of the patented
drugs and medicines from the Philippines in
compliance with the TRIPS Agreement.
Infringement of Patents (Sec. 76)

What constitutes infringement of patents?

- the making, using offering for sale,
selling or importing:
a patented product,
or a product obtained from a
patented process
without the authorization of the
patentee.
Infringement of Patents
Disclosure and description of the
invention:
The application shall disclose the invention in a
manner sufficiently clear and complete for it to be
carried out by a person skilled in the art (Sec. 35).
It shall contain an enabling disclosure i.e. a
detailed description of at least one way of doing
the invention using working examples.

With respect to application relating to biological

molecules and microorganisms, a culture of
microorganisms should be deposited in a
recognized international depository authority.
Infringement of Patents
The claims:
The application shall contain one or more claims
which shall define the matter for which protection
is sought. Each claim shall be clear and concise
and shall be supported by the description (Sec.
36.1).
Infringement of Patents
Extent of protection and interpretation
of claims. (Sec. 75)
The extent of protection conferred by the patent
shall be determined by the claims, to be
interpreted in the light of the description and
drawings.taking into account the element,
which are equivalent to the elements expressed
in the claims. So that a claim shall be
considered to cover not only all the elements as
expressed therein, but also equivalents. (please
read Winans v. Denmeed, 56 U.S. (15 How) 330.
Doctrine of Equivalents
An infringement takes place when a device
appropriates a prior invention by
incorporating its innovative concept, and
although with some modification and
change, performs substantially the same
function in substantially the same way to
achieve substantially the same result.
(Graver Tank & Manufacturing v. Linde Air
Products, 339 US 605, 1950; Godines v.
Court of Appeals, 226 SCRA 338; Smith
Kline v. CA, 409 SCRA 33).
Doctrine of Equivalents
Illustrative Case
Gsell v. Yap G.R. No. L 4720, Jan. 19, 1909

In the manufacture of canes and umbrella with a

curved handle by means of a lamp or blowpipe,
the defendant fed the lamp with alcohol in place
of mineral oil or petroleum which the patentee,
used and cited that change of fuel as defense
against the case for infringement. Finding that
alcohol is a well-known equivalent to petroleum
or mineral oil the defendant was held liable for
infringement.
Doctrine of Equivalents
Illustrative Case
Smith Kline Beckman v. Court of Appeals G.R. No. 126627.
August, 2003.

In action for infringement Smith Kline claims that the active

ingredient albendazole of defendent drug imjoregnon is
equivalent to its patented compound, both being sold to
combat worm or parasite infestation in animals. The court
dismissed the case because apart from showing that both are
anthelmintic agents, Smith Kline did not substantiate the
method or means by which albendazole weeds out parasites in
animals thus giving no information on whether that method
works in substantially, the same way as Smith Klines
compounds. Identity of result by itself does to prove that the
two compound are equivalent.
Graver Tank & Mfg. Co. v. Linde Air Products Co.
339 U.S. 605 (1950), U.S. Supreme Court

1. The essence of the doctrine of equivalents is that one may not practice
a fraud on a patent. P. 339 U.S. 608.

2. The doctrine of equivalents is founded on the theory that, if two

devices do the same work in substantially the same way and
accomplish substantially the same result, they are the same, even
though they differ in name, form or shape Pp. 339 U.S. 608-609.

3. In determining equivalents, consideration must be given to the

purpose for which an ingredient is used in a patent, the qualities it has
when combined with other ingredients, the functions which it is
intended to perform, and whether persons reasonably skilled in the art
would have known of the interchangeability of an ingredient not
contained in the patent with one that was, P. 339 U.S. 609.

4. A finding of equivalence is a determination of fact to be made by the

trial court, and the trial courts decision should not be disturbed unless
clearly erroneous. Pp. 339 U.S. 609-610.
Graver Tank & Mfg. Co. v. Linde Air Products Co.
339 U.S. 605 (1950), U.S. Supreme Court

5. On the record is this case, for infringement,

involving a claim for an electric welding process
and for fluxes consisting of a combination of
alkaline earth metal silicate and calcium fluoride,
the trial court was justified in finding that the
substitution in the accused composition of
manganese silicate (which is not an alkaline earth
metal. In place of silicate for magnesium silicate
(which is an alkaline earth metal silicate), where
the two compositions were substantially identical
in operation and result, was so insubstantial, in
view of the technology and the prior art, that the
patent was infringed under the doctrine of
equivalents. Pp. 339 U.S. 610-612.
Limitations to the Principle of Equivalents
Prosecution History Estoppel: Festo Corp. v. Shoketzu Konzoku
Koqyo 535 U.S. 722

The doctrine of patent history estoppel bars a patent holder from

applying the principle of equivalents to expand the scope of the claims to
include those claims which were surrendered during the process of the
prosecution of the patent.

Our conclusion that prosecution history estoppel arises when a claim is

narrowed to comply with 112 gives rise to the second question presented:
Does the estoppel bar the inventor from asserting infringement against any
equivalent to the narrowed element or might some equivalents still infringe?

Though prosecution history estoppel can bar challenges to a wide range

of equivalents, its reach requires an examination of the subject matter
surrendered by the narrowing amendment. The complete bar avoids his
inquiry by establishing a per se rule; but that approach is inconsistent with
the purpose of applying the estoppel in the first place --- to hold the inventor
to representations made during the application process and to the inferences
that may reasonably be drawn from the amendment. By amending the
application, the inventor is deemed to concede that the patent does not
extend as far as the original claim.
Limitations to the Principle of Equivalents
Facts: Warner Jenkinson v. Hilton Davis Chemicals Co. 520 U.S. 17
(1997). The 746 patent was issued to Hilton Davis in 1985. As relevant to this
case, the patent claims as its invention an improvement in the ultrafiltration
process as follow:

in a process for the purification of a dye the improvement which

comprises: subjecting an aqueous solutionto ultrafiltration through a
membrane having a nominal pore diameter of 5-15 Angstroms under a
hydrostatic pressure of approximately 200 to 400 p.s.i.g., at a p H from
approximately 6.0 to 9.0, to thereby cause separation of said impurities from
said dye App. 36-37 (emphasis added).

The inventors added the phrase at a pH from approximately 6.0 to 9.0

during patent prosecution. At a minimum, this phrase was added to
distinguish a previous patent (the Booth patent) that disclosed an
ultrafiltration process operating at a pH above 9.0. The parties disagree as
to why the low end pH limit of 6.0 was included as part of the claim.

In 1986, Warner Jenkinson developed an ultrafiltration process that operated

with membrane pore diameters assumed to be 5-15 Angstroms, at pressures
of 200 to nearly 500 p.s.i.g., and a pH of 5.0. Warner Jenkinson did not learn
of the 746 patent until after it had begun commercial use of its ultrafiltration
process. Hilton Davis eventually learned of Warner
Limitations to the Principle of Equivalents
In this case, the patent examiner objected to the patent claim due
to a perceived overlap with the Booth patent, which revealed an
ultrafiltration process operating at a pH above 9.0. In response to
this objection, the phrase at a pH from approximately 6.0 to 9.0
was added to the claim. While it is undisputed that the upper limit
of 9.0 was added in order to distinguish the Booth patent, the
reason for adding the lower limit of 6.0 is unclear. The lower limit
certainly did not serve to distinguish the Booth patent, which
said nothing about pH level below 6.0. Thus, while a lower limit of
6.0 by its mere inclusion, became a material element of the claim,
that did not necessarily preclude the application of the doctrine
of equivalents as to that element. See Hubbell v. United States,
179 U.S. 77, 82 (1900) ( [A]II [specified elements] must be
regarded as material, though it remains an open question
whether an omitted part is supplied by an equivalent device or
instrumentality (citation omitted)). Where the reason for the
change was not related to avoiding the prior art, the change may
introduce a new element, but it does not necessarily preclude
infringement by equivalents of that element.
Limitations to the Principle of Equivalents
We think the better rule is to place the burden on the patent holder to establish the
reason for an amendment required during patent prosecution. The court then
would decide whether that reason is sufficient to overcome prosecution history
estoppel as a bar to application of the doctrine of equivalents to the element
added by that amendment. Where no explanation is established, however, the
court should resume that the PTO had a substantial reason related to patentability
for including the limiting element added by amendment. In those circumstances
prosecution history estoppel would bar the application of the doctrine equivalents
as to the element.

Today we adhere to the doctrine of equivalents. The determination of equivalence

should be applied as an objective inquiry on an element by element basis.
Prosecution history estoppels continues to be available as a defense to
infringement, but if the patent holder demonstrates that an amendment required
during prosecution had a purpose undrelated to patentabilty, a court must
consider that purpose in order to decide whether an estoppel is precluded. Where
the holder is unable to establish such a purpose, a court should presume that the
purpose behind the required amendment is such that prosecution history estoppel
would apply. Because the Court of Appeals for the Federal Circuit did not
consider all of the requirements as described by us today, particularly as related
to prosecution history estoppel and the preservation of some meaning for each
element in a claim, we reverse and remand for further proceedings consistent with
this opinion.
Infringement of patents; contributory
infringement (Sec. 76.6, R.A. 8293)
Anyone who actively induces the
infringement of a patent or provides the infringer
with a component of a patented product or of a
product produced because of a patented
process knowing it to be specially adopted for
infringing the patented invention and not
suitable for substantial non-infringing the
patented invention and not suitable for
substantial non-infringing use shall be liable as
a contributory infringer and shall be jointly and
severally liable with the infringer. (Sec. 42, R.A.
No. 165a).
Infringement of patents; contributory
infringement 271 (c) & (d) Patent Code (US)
(c) Whoever sells a component of a patented machine, manufacture,
combination or composition, or a material or apparatus for use in
practicing a patented process, constituting a material part of the invention,
knowing the same to be especially made or especially adapted for
use in an infringement of such patent, and not a staple article or
commodity of commerce suitable for substantial noninfringing use, shall
be liable as a contributory infringer.

(d) No patent owner otherwise entitled to relief for infringement or

contributory infringement of a patent shall be denied relief or deemed
guilty of misuse or illegal extension of the patent right by reason of his
having done one or more of the following: (1) derived revenue from
acts which if performed by another without his consent would
constitute contributory infringement of the patent; (2) licensed or
authorized another to perform acts which if performed without his
consent would constitute contributory infringement of the patent:
(3) sought to enforce his patent rights against infringement or contributory
infringement.
Infringement of patents; contributory
infringement (Sec. 76.6)
Please read:

1. ARO Manufacturing Co v. Convertible Top Replacement Co., Inc.,

337 US 476

Facts: Respondent Convertible Top Replacement Co., Inc. (CTR)

acquired by assignment from the Automobile Body Research Corporation
(AB) all rights for the territory of Massachusetts in United States Patent
No. 2,569,724, known as the Mackie-Duluk patent. This is combination
patent covering embodying the patented combination were included as
original equipment in 1952 --- 1954 models of convertibles manufactured by
the General Motors Corporation and the Ford Motor Company. They were
included in the General Motors cars by authority of license granted to
General Motors by AB; Ford, however, had no license during the 1952 ---
1954 period, and no authority whatever under the patent until July 21, 1955,
when it entered into an agreement, discussed later, with AB; Fords
manufacture and sale of the automobiles in question therefore infringed the
patent. Petitioner Aro Manufacturing Co., Inc. (Aro), which is not licensed
under the patent, procedures fabric components designed as replacements
for wornout fabric portions of convertible tops.
Infringement of patents; contributory
infringement (Sec. 76.6)
It is admitted that petitioners (Aro) know that the purchasers intend to
use the fabric for replacement purposes on automobile convertible tops
which are covered by the claims of respondents combination patent,
and such manufacture and sale with that knowledge might well
constitute contributory infringement under 271.
Infringement of patents; contributory
infringement (Sec. 76.6)
We turn next to the question whether Aro, as supplier of replacement
fabrics for use in the infringing repair by the Ford car owners, was a
contributory infringer under 271 (c) of the Patent Code. That section
provides:

Whoever sells a component of a patented machine,

manufacture, combination or composition, or a
material or apparatus for use in practicing a patented
process, constituting a material part of the invention
knowing the same to be especially made or
especially adapted for use in an infringement of such
patent, and not a staple article or commodity of
commerce suitable for substantial noninfringing use,
shall be liable as a contributory infringer.
Infringement of patents; contributory
infringement (Sec. 76.6)
Held: We think Aro was indeed liable under this provision.

Such a result would plainly have obtained under the contributory-

infringement case law that 271 (c) was intended to codify. 6
Indeed, most of the law was established in cases where, as here,
suit was brought to hold liable for contributory infringement a
supplier of replacement parts specially designed for use in the
repair of infringing articles.

2. Bard Inc. v. Advanced Cardio Vascular Systems, 911 F. 2d 670

Facts: Invalidation of the Monsanto patent for propanil a

herbicide particularly well suited for the cultivation of rice, cleared
the way for Rohm & Haas, respondent here, to obtain a patent on
the method or process for applying propanil.
Infringement of patents; contributory
infringement (Sec. 76.6)
Petitioners, too, are chemical manufacturers. They have manufactured
and sold propanil for application to rice crops since before Rohm & Haas
received its patent. They market the chemical in containers on which are
printed directions for application in accordance with the method claimed
in the Wilson patent. Petitioners did not cease manufacture and sale of
propanil after that patent issued, despite knowledge that farmers
purchasing their products would infringe on the patented method by
applying the propanil to their crops. Accordingly, Rohm & Haas filed this
suit, in the United States District Court for the Southern District of Texas,
seeking injunctive relief against petitioners on the ground that their
manufacture and sale propanil interfered with its patent rights.

The complaint alleged not only that petitioners contributed to

infringement by farmers who purchased and used petitioners propanil,
but also that they actually induced such infringement by instructing
farmers hot to apply the herbicide. See 35 U.S.C. 271 (b) and (c).
Petitioners responded to the suit by requesting licenses to practice the
patented method. When Rohm & Haas refused to grant such licenses,
however petitioners raised a defense of patent misuse and
counterclaimed for alleged antirust violations by respondent.
Infringement of patents; contributory
infringement (Sec. 76.6)
Held: The critical inquiry in this case is how the enactment of 271
affected the doctrines of contributory infringement and patent misuse.
Viewed against the backdrop of judicial precedent, we believe that the
language and structure of the statute lend significant support to Rohm &
Haas contention that, because 271 (d) immunizes its conduct from the
charge of patent misuse, it should not be barred from seeking relief. The
approach that Congress took toward the codification of contributory
infringement and patent misuse reveals a compromise between those two
doctrines and their competing policies patentees to exercise control over
nonstaple articles used in their inventions.

Section 271 (c) identifies the basic dividing line between contributory
infringement and patent misuse. It adopts a restrictive definition of
contributory infringement that distinguishes between staple and
nonstaple articles of commerce. It also defines the class of nonstaple
items narrowly. In essence, this provision places materials like the dry
ice of the Carbice case outside the scope of the contributory infringement
doctrine. As a result, it is no longer necessary to resort to the doctrine of
patent misuse in order to deny patentees control over staple goods used
in their inventions.
Infringement of patents; contributory
infringement (Sec. 76.6)
Since our present task is one of statutory construction, questions of
public policy cannot be determinative of the outcome unless specific
policy choices fairly can be attributed to Congress itself. In this instance,
as we have already stated, Congress chose a compromise between
competing policy interests. The policy of free competition runs deep in
our law. It underlies both the doctrine of patent misuse and the general
principle that the boundary of a patent monopoly is to be limited by the
literal scope of the patent claims. But the policy of stimulating invention
that underlies the entire patent system runs no less deep. And the
doctrine of contributory infringement, which has been called an
expression both of law and morals, Mercoid I, 320 U.S., at 677
(Frankfurter, J., dissenting), can be of crucial importance in ensuring that
the endeavors and investments of the inventor do not go unrewarded.

In accord with our understanding of that statue, we hold that Rohm &
Haas has not engaged in patent misuse, either by its method of selling
propanil, or by its refusal of license others to sell that commodity. The
judgement of the Court of Appeals is therefore affirmed.
Requirement of notice to recover damages
(Sec. 80)

Damages; Requirements of Notice. Damages

cannot be recovered for acts of infringement
committed before the infringer had known, or
had reasonable grounds to know of the patent.
It is presumed that the infringer had known of
the patent if on the patented product, or on the
container or package in which the article is
supplied to the public, or on the advertising
material relating to the patented product or
process, are placed the words Philippine
Patent with the number of the patent (Sec. 44,
RA No. 165a).
Infringement of Patents

Defenses against patent infringement

1. Use of the patent is covered by any of the a
limitations (see Sec. 72) to the rights of the
patentees;
2. Grounds for cancellation of the patent, viz:
the invention is not new or patentable;
insufficient and incomplete disclosure of the
invention thus failing to enable the person skilled
in the art to carry out the invention;
the patent is contrary to public order or morality
(Sec. 61, RA 8293).
Who may file an infringement action?

Cresser v. Court of Appeals, 286 SCRA 13

Only the patentee can institute an action

for patent infringement. The phase anyone
possessing any right, title or interest in and
to the patented invention in Section 76.2
refers to the patentees successors interest,
assignees or grantees.

As to who possesses the Right to a Patent,

please refer to Sections 28, 29 and 30 of RA
8293.
Infringement of Patents
What are the remedies against
infringers?

- Civil action for infringement for

injunction and damages.
- Criminal action for
infringement.
- Administrative remedy.
Infringement of Patents

Criminal action for infringement

It is only after the infringement is
repeated that the infringer shall be
criminally liable (prescription:3 yrs from the
commission of the second infringement).
Infringement of Patents

Administrative remedy
Instead of filing the infringement
action with the Court it may be filed with
Bureau of Legal Affairs (BLA) of the IPO if
the amount of damages claimed is not less
than P200.000. The Department of Trade
and Industrys Office of legal affairs and its
Regional Offices have also jurisdiction to
try this case regardless of the amount of
damages claimed.