056 - sapalo - outline - infringment of patents

8/12/2019 056 - Sapalo - Outline - Infringment of Patents

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Outline for Infringment of PatentsAtty. Ignacio Sapalo

(1)What are the rights conferred by a patent?Section 71. Rights Conferred by Patent. - 71.1. A patent shall confer on its owner the followingexclusive rights:

(a) Where the subject matter of a patent is a product, to restrain, prohibit andprevent any unauthorized person or entity from making, using, offering for sale, selling orimporting that product;

(b) Where the subject matter of a patent is a process, to restrain, prevent or prohibitany unauthorized person or entity from using the process, and from manufacturing,dealing in, using, selling or offering for sale, or importing any product obtained directlyor indirectly from such process.

71.2. Patent owners shall also have the right to assign, or transfer by succession the patent, and toconclude licensing contracts for the same. (Sec. 37, R.A. No. 165a)

[Note that 71 does not include exportation.]

(2)Limitation of Patent Rightsa. Section 72

[Note that 72.4 includes drug testing & medicine but not agriculture.]

"SEC. 72. Limitations of Patent Rights. - The owner of a patent has no right to prevent thirdparties from performing, without his authorization, the acts referred to in Section 71 hereof in thefollowing circumstances:

"72.1. Using a patented product which has been put on the market in the Philippines bythe owner of the product, or with his express consent, insofar as such use is performedafter that product has been so put on the said market: Provided, That, with regard todrugs and medicines, the limitation on patent rights shall apply after a drug or medicinehas been introduced in the Philippines or anywhere else in the world by the patent owner,or by any party authorized to use the invention: Provided, further, That the right toimport the drugs and medicines contemplated in this section shall be available to anygovernment agency or any private third party; [Principle of Exhaustion]

"72.2. Where the act is done privately and on a non-commercial scale or for a non-commercial purpose: Provided, That it does not significantly prejudice the economicinterests of the owner of the patent;

"72.3. Where the act consists of making or using exclusively for experimental use of theinvention for scientific purposes or educational purposes and such other activities directly

related to such scientific or educational experimental use;

"72.4. In the case of drugs and medicines, where the act includes testing, using, making orselling the invention including any data related thereto, solely for purposes reasonablyrelated to the development and submission of information and issuance of approvals bygovernment regulatory agencies required under any law of the Philippines or of anothercountry that regulates the manufacture, construction, use or sale of any product:Provided, That, in order to protect the data submitted by the original patent holder fromunfair commercial use provided in Article 39.3 of the Agreement on Trade-Related

Aspects of Intellectual Property Rights (TRIPS Agreement), the Intellectual Property


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Office, in consultation with the appropriate government agencies, shall issue theappropriate rules and regulations necessary therein not later than one hundred twenty(120) days after the enactment of this law;

72.4. Where the act consists of the preparation for individual cases, in a pharmacy or by amedical professional, of a medicine in accordance with a medical prescription or actsconcerning the medicine so prepared;

72.6. Where the invention is used in any ship, vessel, aircraft, or land vehicle of any othercountry entering the territory of the Philippines temporarily or accidentally: Provided,That such invention is used exclusively for the needs of the ship, vessel, aircraft, or land

vehicle and not used for the manufacturing of anything to be sold within the Philippines.(Secs. 38 and 39, R.A. No. 165a)

Roche v. Bolar, 733 F2d 858 (Under US law, preparatory steps taken to comply withthe United States FDA registration requirements constitute infringement but not applicable in thePhilippines per amendment to Section 72.41of the IP Code by R.A. 9502.)

Quanta Computer Inc. v. LG Electronics, 553 US 617, 2008 (applying thePrinciple of Exhaustion)

US v. Unives Lens, 316 US 241 (also applying the Principle of Exhaustion)

Amendments to 22, 26, 72, 74, 76, 94, and 95 of the IP Code by R.A. 9502, theCheaper Medicines Law

SEC. 5. Section 22 of Republic Act No. 8293, otherwise known as the Intellectual Property Code ofthe Philippines, is hereby amended to read as follows:

"SEC. 22. Non-Patentable Inventions. - The following shall be excluded from patent protection:

"22.1. Discoveries, scientific theories and mathematical methods, and in the case of drugs andmedicines, the mere discovery of a new form or new property of a known substance which doesnot result in the enhancement of the known efficacy of that substance, or the mere discovery ofany new property or new use for a known substance, or the mere use of a known process unlesssuch known process results in a new product that employs at least one new reactant.

"For the purpose of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particlesize, isomers, mixtures of isomers, complexes, combinations, and other derivatives of a knownsubstance shall be considered to be the same substance, unless they differ significantly inproperties with regard to efficacy;

"22.2. x x x;

"22.3. x x x;

1"72.4. In the case of drugs and medicines, where the act includes testing, using, making or selling the

invention including any data related thereto, solely for purposes reasonably related to the development and

submission of information and issuance of approvals by government regulatory agencies required under

any law of the Philippines or of another country that regulates the manufacture, construction, use or sale ofany product: Provided, That, in order to protect the data submitted by the original patent holder from unfair

commercial use provided in Article 39.3 of the Agreement on Trade-Related Aspects of Intellectual

Property Rights (TRIPS Agreement), the Intellectual Property Office, in consultation with the appropriate

government agencies, shall issue the appropriate rules and regulations necessary therein not later than one

hundred twenty (120) days after the enactment of this law;


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"22.4. x x x;

"22.5. x x x; and

"22.6. x x x."

SEC. 6. Section 26 of Republic Act No. 8293, otherwise known as the Intellectual Property Codeof the Philippines, is hereby amended to read as follows:

"SEC. 26. Inventive Step. - 26.1. An invention involves an inventive step if, having regard to priorart, it is not obvious to a person skilled in the art at the time of the filing date or priority date ofthe application claiming the invention. (n)

"26.2. In the case of drugs and medicines, there is no inventive step if the invention results fromthe mere discovery of a new form or new property of a known substance which does not result inthe enhancement of the known efficacy of that substance, or the mere discovery of any newproperty or new use for a known substance, or the mere use of a known process unless suchknown process results in a new product that employs at least one new reactant."

SEC. 7. Section 72 of Republic Act No. 8293, otherwise known as the Intellectual Property Code of

the Philippines, is hereby amended to read as follows:

"SEC. 72. Limitations of Patent Rights. - The owner of a patent has no right to prevent thirdparties from performing, without his authorization, the acts referred to in Section 71 hereof in thefollowing circumstances:

"72.1. Using a patented product which has been put on the market in the Philippines by the ownerof the product, or with his express consent, insofar as such use is performed after that product has

been so put on the said market: Provided, That, with regard to drugs and medicines, thelimitation on patent rights shall apply after a drug or medicine has been introduced in thePhilippines or anywhere else in the world by the patent owner, or by any party authorized to usethe invention: Provided, further, That the right to import the drugs and medicines contemplatedin this section shall be available to any government agency or any private third party;

"72.2. Where the act is done privately and on a non-commercial scale or for a non-commercialpurpose: Provided, That it does not significantly prejudice the economic interests of the owner ofthe patent;

"72.3. Where the act consists of making or using exclusively for experimental use of the inventionfor scientific purposes or educational purposes and such other activities directly related to suchscientific or educational experimental use;

"72.4. In the case of drugs and medicines, where the act includes testing, using, making or sellingthe invention including any data related thereto, solely for purposes reasonably related to thedevelopment and submission of information and issuance of approvals by government regulatoryagencies required under any law of the Philippines or of another country that regulates themanufacture, construction, use or sale of any product: Provided, That, in order to protect the data

submitted by the original patent holder from unfair commercial use provided in Article 39.3 ofthe Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), theIntellectual Property Office, in consultation with the appropriate government agencies, shall issuethe appropriate rules and regulations necessary therein not later than one hundred twenty (120)days after the enactment of this law;

72.4. Where the act consists of the preparation for individual cases, in a pharmacy or by a medicalprofessional, of a medicine in accordance with a medical prescription or acts concerning themedicine so prepared;


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"74.3. All cases arising from the implementation of this provision shall be cognizable by courtswith appropriate jurisdiction provided by law.

"No court, except the Supreme Court of the Philippines, shall issue any temporary restrainingorder or preliminary injunction or such other provisional remedies that will prevent its immediateexecution.

"74.4. The Intellectual Property Office (IPO), in consultation with the appropriate governmentagencies, shall issue the appropriate implementing rules and regulations for the use orexploitation of patented inventions as contemplated in this section within one hundred twenty(120) days after the effectivity of this law."


"SEC. 94. Period for Filing a Petition for a Compulsory License. - 94.1. A compulsory license maynot be applied for on the ground stated in Subsection 93.5 before the expiration of a period of four(4) years from the date of filing of the application or three (3) years from the date of the patent

whichever period expires last.

"94.2. A compulsory license which is applied for on any of the grounds stated in Subsections 93.2,93.3, 93.4, and 93.6 and Section 97 may be applied for at any time after the grant of the patent.(Sec. 34(1), R. A. No. 165)"


"SEC. 95. Requirement to Obtain a License on Reasonable Commercial Terms. - 95.1. The licensewill only be granted after the petitioner has made efforts to obtain authorization from the patentowner on reasonable commercial terms and conditions but such efforts have not been successful

within a reasonable period of time.

"95.2. The requirement under Subsection 95.1 shall not apply in any of the following cases:

"(a) Where the petition for compulsory license seeks to remedy a practice determined afterjudicial or administrative process to be anti-competitive;

"(b) In situations of national emergency or other circumstances of extreme urgency;

"(c) In cases of public non-commercial use; and

"(d) In cases where the demand for the patented drugs and medicines in the Philippines is notbeing met to an adequate extent and on reasonable terms, as determined by the Secretary of theDepartment of Health.

"95.3. In situations of national emergency or other circumstances of extreme urgency, the rightholder shall be notified as soon as reasonably practicable.

"95.4. In the case of public non-commercial use, where the government or contractor, withoutmaking a patent search, knows or has demonstrable grounds to know that a valid patent is or will

be used by or for the government, the right holder shall be informed promptly. (n)

"95.5. Where the demand for the patented drugs and medicines in the Philippines is not beingmet to an adequate extent and on reasonable terms, as determined by the Secretary of theDepartment of Health, the right holder shall be informed promptly."


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76.2. Any patentee, or anyone possessing any right, title or interest in and to the patentedinvention, whose rights have been infringed, may bring a civil action before a court of competent

jurisdiction, to recover from the infringer such damages sustained thereby, plus attorney's feesand other expenses of litigation, and to secure an injunction for the protection of his rights.

76.3. If the damages are inadequate or cannot be readily ascertained with reasonable certainty,the court may award by way of damages a sum equivalent to reasonable royalty.

76.4. The court may, according to the circumstances of the case, award damages in a sum abovethe amount found as actual damages sustained: Provided, That the award does not exceed three(3) times the amount of such actual damages.

76.5. The court may, in its discretion, order that the infringing goods, materials and implementspredominantly used in the infringement be disposed of outside the channels of commerce ordestroyed, without compensation.

76.6. Anyone who actively induces the infringement of a patent or provides the infringer with acomponent of a patented product or of a product produced because of a patented process knowingit to be especially adopted for infringing the patented invention and not suitable for substantialnon-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)

a. Who can file?Section 28. Right to a Patent. - The right to a patent belongs to the inventor, his heirs, orassigns. When two (2) or more persons have jointly made an invention, the right to a patent shall

belong to them jointly. (Sec. 10, R.A. No. 165a)

Creser Precision v. CA, 286 SCRA 13 (interpretation of section 76.22, funny case)

Section 29. First to File Rule. - If two (2) or more persons have made the invention separatelyand independently of each other, the right to the patent shall belong to the person who filed anapplication for such invention, or where two or more applications are filed for the same invention,to the applicant who has the earliest filing date or, the earliest priority date. (3rd sentence, Sec.10, R.A. No. 165a.)

Section 30. Inventions Created Pursuant to a Commission.

30.1. The person who commissions the work shall own the patent, unless otherwise provided inthe contract.

30.2. In case the employee made the invention in the course of his employment contract, thepatent shall belong to:

(a) The employee, if the inventive activity is not a part of his regular duties even if theemployee uses the time, facilities and materials of the employer.

(b) The employer, if the invention is the result of the performance of his regularly-assignedduties, unless there is an agreement, express or implied, to the contrary. (n)

Infringment by a Foreign National

276.2. Any patentee, or anyone possessing any right, title or interest in and to the patented invention,

whose rights have been infringed, may bring a civil action before a court of competent jurisdiction, to

recover from the infringer such damages sustained thereby, plus attorney's fees and other expenses of

litigation, and to secure an injunction for the protection of his rights.


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

Section 77. Infringement Action by a Foreign National. - Any foreign national or juridical entitywho meets the requirements of Section 3 and not engaged in business in the Philippines, to whicha patent has been granted or assigned under this Act, may bring an action for infringement ofpatent, whether or not it is licensed to do business in the Philippines under existing law. (Sec. 41-

A, R.A. No. 165a)

Rules of Court apply the rule of real-party-in-interest.

b. Contributory Infringment76.6. 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 knowingit to be especially adopted for infringing the patented invention and not suitable for substantialnon-infringing use shall be liable as a contributory infringer and shall be jointly and severallyliable with the infringer. (Sec. 42, R.A. No. 165a)

Dawson Chemical v. Rohm & Haas Company, 206 USPQ 385 (SupremeCourt, 1980); 448 US 176, 100 Supreme Court 2601) (if process, shortcut, reverse

burden of proof)

The contributory infringement doctrine exists to protect patent rights from subversion by thosewho, without directly infringing the patent themselves, engage in acts designed to facilitateinfringement by others. This protection is of particular importance in situations, as shown in the

Wallace case, where enforcement against direct infringers would be difficult, and where thetechnicalities of patent law make it relatively easy to profit from another's invention withoutrisking a charge of direct infringement. In the Mercoid Corp. cases, the Court held that anyattempt to control the market for unpatented goods would constitute patent misuse, even if thosegoods had no use outside a patented invention."

C.R. Bard v. Advance Cardiovascular System, 991 F2d 670

To establish the direct infringement, it requires a two step analysis. First is a determination of thescope of the claim at issue. Second is an examination of the evidence before the court to ascertain

whether use of the device would infringe the claim as interpreted.

It would appear that three possible fact patterns may arise in the course of using the ACS catheterduring a PTCA. The first pattern involves positioning the catheter such that all of its side openingsare located only in the aorta. This is clearly contemplated by the prior art '725 patent cited by the

examiner. In the second of the possible fact patterns, all of the side openings are located withinthe coronary artery. This situation appears to have been contemplated by the '017 patent, themethod patent at issue. In this situation, it correctly can be said that blood flowing through themain lumen will "fluidly connect locations within [the] coronary artery surrounding [the]proximal and distal portions of [the] tube." In the third fact pattern, some of the side openings arelocated in the aorta and some are located in the artery.The fact that ACS has added extra holes further from the balloon does not affect the conclusion ofinfringement, as the patent does not require that all holes be "immediately adjacent" the balloon,nor that the blood flowing through the balloon come solely from the coronary artery.


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Aro Manufacturing Company v. Convertible Top Company, 377 US 476

Doctrine: The reconstruction of a patented entity, comprised of unpatented elements, is limited tosuch a true reconstruction of the entity as to "in fact make a new article," after the entity, viewedas a whole, has become spent.

When a purchaser of a patented product replaces some components of that product (eitherbecause they wore out or became unsatisfactory to the owner) should they have to pay royalties tothe patentee? In other words, is it a permissible repair or an impermissible reconstruction?

This case involves convertible tops found in sports cars and other vehicles. Over time, owners ofconvertibles wanted to replace to fabric portion of the top because they became torn ordiscolored, often due to bird shit. Rather than buy an entire new top (which would be quiteexpensive) they just wanted to replace the fabric part of it. Aro Manufacturing is a corporation

which supplies replacement cloth tops that fit various car models. However, the convertible topswere covered by a patent and because Aro declined to pay a royalty to the patentee, patentinfringement litigation followed.

Issues:1. W/N the replacement of the fabric on a convertible top constituted repair or reconstruction.

Held/Ratio:1. REPAIR.

The decisions of this Court require the conclusion that reconstruction of a patented entity,comprised of unpatented elements, is limited to such a true reconstruction of the entity as to "infact make a new article," after the entity, viewed as a whole, has become spent. In order to call themonopoly, conferred by the patent grant, into play for a second time, it must, indeed, be a secondcreation of the patented entity. ...Mere replacement of individual unpatented parts, one at a time,

whether of the same part repeatedly or different parts successively, is no more than the lawfulright of the owner to repair his property. Measured by this test, the replacement of the fabricinvolved in this case must be characterized as permissible "repair," not "reconstruction."

c. Infringement if Process PatentSection 78. Process Patents; Burden of Proof . - If the subject matter of a patent is a process forobtaining a product, any identical product shall be presumed to have been obtained through theuse of the patented process if the product is new or there is substantial likelihood that theidentical product was made by the process and the owner of the patent has been unable despitereasonable efforts, to determine the process actually used. In ordering the defendant to prove thatthe process to obtain the identical product is different from the patented process, the court shalladopt measures to protect, as far as practicable, his manufacturing and business secrets. (n)

d. Criminal Action for Repetition of InfringementSection 84. Criminal Action for Repetition of Infringement. - If infringement is repeated by theinfringer or by anyone in connivance with him after finality of the judgment of the court against

the infringer, the offenders shall, without prejudice to the institution of a civil action for damages,be criminally liable therefor and, upon conviction, shall suffer imprisonment for the period of notless than six (6) months but not more than three (3) years and/or a fine of not less than Onehundred thousand pesos (P100,000) but not more than Three hundred thousand pesos(P300,000), at the discretion of the court. The criminal action herein provided shall prescribe inthree (3) years from date of the commission of the crime. (Sec. 48, R.A. No. 165a)

e. Remediesi. Injunction


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76.2. Any patentee, or anyone possessing any right, title or interest in and to the patentedinvention, whose rights have been infringed, may bring a civil action before a court of competent


ii. Damages76.2. Any patentee, or anyone possessing any right, title or interest in and to the patentedinvention, whose rights have been infringed, may bring a civil action before a court of competent


76.3. If the damages are inadequate or cannot be readily ascertained with reasonable certainty,the court may award by way of damages a sum equivalent to reasonable royalty.

76.4. The court may, according to the circumstances of the case, award damages in a sum abovethe amount found as actual damages sustained: Provided, That the award does not exceed three(3) times the amount of such actual damages.

Section 79. Limitation of Action for Damages. - No damages can be recovered for acts of

infringement committed more than four (4) years before the institution of the action forinfringement. (Sec. 43, R.A. No. 165)

Section 80. Damages, Requirement of Notice. - Damages cannot be recovered for acts ofinfringement committed before the infringer had known, or had reasonable grounds to know ofthe 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 advertisingmaterial relating to the patented product or process, are placed the words "Philippine Patent"

with the number of the patent. (Sec. 44, R.A. No. 165a)

iii. The infringing goods, materials, and implements dominantlyused in the infringement be disposed of outside the channels ofcommerce or destroyed without compensation

76.5. The court may, in its discretion, order that the infringing goods, materials and implementspredominantly used in the infringement be disposed of outside the channels of commerce ordestroyed, without compensation.

iv. patent found invalid may be cancelledSection 82. Patent Found Invalid May be Cancelled. - In an action for infringement, if the courtshall find the patent or any claim to be invalid, it shall cancel the same, and the Director of Legal

Affairs upon receipt of the final judgment of cancellation by the court, shall record that fact in theregister of the Office and shall publish a notice to that effect in the IPO Gazette. (Sec. 46, R.A. No.165a)

(4)Extent of protection and Interpretation of claimsa. Extent of protection shall be determined by the claims and are to be

interpreted in the light of a description and drawings

Section 75. Extent of Protection and Interpretation of Claims. - 75.1. The extent of protectionconferred by the patent shall be determined by the claims, which are to be interpreted in the lightof the description and drawings.

Auto Giro Company of America v. The US, 384 F2d 391


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The determination of patent infringement is a two step-process First, the meaning of the claims inissue must be determined by a study of all relevant patent documents. Second, the claims must beread on the accused structures.

[The following is interesting to know:

In deriving the meaning of a claim, the felt meaning of the claim shall be reached after all usefuldocuments are inspected. In seeking this goal, three parts of the patent are used: 1) specification;2) drawings; 3) file wrapper.

Specification. Section 112 of the 1952 Patent Act requires the specification to describe the mannerand process of making and using the patent so that any person skilled in the art may utilize it. Thespecification sets forth the best mode contemplated by the inventor of carrying out his invention.Claim interpretation must not make use of the best mode terms inasmuch as the patentee neednot guard against infringement by listing every possible infringing device in the specification.

Drawings. Where a visual representation can flesh out words, drawings may be used in the samemanner and with the same limitations as the specification.

File wrapper. The file wrapper contains the entire record of the proceedings in the Patent Office

from the first application papers to the issued patent. One use of the same is file wrapperestoppel, which is thus illustrated: When the application is rejected, the applicant will insertlimitations and restrictions for the purpose of inducing the Patent Office to grant his patent.

When the patent is issued, the patentee cannot disclaim these alterations and seek aninterpretation that ignores them. File wrapper estoppel serves two functions: the applicantsstatements not only define terms, but also set the barriers within which the claims meaning must

be kept.]

Smith-Kline Beckman v. CA, 409 SCR 33

When the language of its claims is clear and distinct, the patentee is bound thereby and may notclaim anything beyond them. And so are the courts bound which may not add to or detract fromthe claims matters not expressed or necessarily implied, nor may they enlarge the patent beyondthe scope of that which the inventor claimed and the patent office allowed, even if the patenteemay have been entitled to something more than the words it had chosen would include.

When two or more inventions are claimed in a single application but are of such a nature that asingle patent may not be issued for them. The applicant thus is required to divide, that is, to limitthe claims to whichever invention he may elect, whereas those inventions not elected may bemade the subject of separate applications which are called divisional applications.

b. IRR of Patents, Utility Models and Industrial DesignsRule 204. Prior Art. Prior art shall consist of:(a) Everything made available to the public anywhere in the world by means of a

written or oral disclosure, by use, or in any other way, before the filing date or the priority date ofthe application claiming the invention. Information is deemed available to the public when it is

not confidential or restricted to the use by a selective group. Prior use and oral disclosure,whether within or outside the Philippines, must be proven with substantial evidence.(b) The whole contents of an earlier application for a patent, utility model, or industrial designregistration, published by the Intellectual Property Office of the Philippines, filed or effective inthe Philippines, with a filing or priority date that is earlier than the filing or priority date of theapplication; Provided, that the application which has validly claimed the filing date of an earlierapplication under Section 31 of the IP Code, shall be prior art with effect as of the filing date ofsuch earlier application; Provided further, that the applicant or the inventor of the inventionidentified in both applications are not one and the same (Sec. 24, IP Code).


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(c)The whole contents of corresponding foreign applications disclosing substantially the sameinvention, or a description thereof, published before the filing date of the application. Inventionsare considered substantially the same if the composition of all important particulars, excludingmere formal, unimportant or obvious variations, define the invention.(d) Where two or more applications are independently filed with respect to the same invention,and the later applications are filed before the first application or earlier application is published,the whole contents of the first or earliest filed application published in accordance with Section 44of the IP Code on or after the filing date or priority date of the later filed application shall benovelty destroying with respect to the later application filed.Rule 204.1. Equivalents. A strict identity test is required to be applied in assessing novelty. Asingle prior art reference must disclose each and every element of a claimed invention in order todestroy novelty. Equivalents are considered only in assessing inventive step.

Rule 415. Claims. (a) The patent application must conclude with a claim, particularly pointing out anddistinctly claiming the part, improvement, or combination which the applicantregards as his invention.(b) The application may contain one (1) or more independent claims in the samecategory (product, process, apparatus, or use), where it is not appropriate, having regard to thesubject matter of the application, to cover this subject matter by a single claim which shall define

the matter for which protection is sought. Each claim shall be clear, concise, and supported by thedescription.(c) One (1) or more claims may be presented in dependent form, referring back and furtherlimiting another claim(s) in the same application. Any dependent claim which refers to more thanone other claim (multiple dependent claim) shall refer to such other claims in the alternative only.

A multiple dependent claim shall not serve as a basis for any other multiple dependent claim.(d) The claims must conform to the invention as set forth in the description and the terms andphrases used in the claims must find clear support or antecedent basis in the said description sothat the meaning of the terms may be ascertainable by reference to the description. Claims shallnot, except where absolutely necessary, rely in respect of the technical features of the invention,on reference to the description or drawings. In particular, they shall not rely on references suchas, As described in part xxx of the description or As illustrated in figure xxx of the drawings.(e) If the invention relates to an improvement, the claim or claims should specifically point outand distinctly claim the improvement in combination with a preamble statement indicating theprior art features which are necessary for the definition of the claimed subject matter.

Rule 416. Form and Contents of the Claims. The claim shall define the matter for whichprotection is sought in terms of technical features of the invention. Wherever appropriate, theclaims shall contain:(a) A statement indicating the designation of the subject matter of the invention and thosetechnical features which are necessary for the definition of the claimed subject matter but which,in combination, are part of the prior art;(b) A characterizing portion preceded by the expression, characterized in that or characterized

by, stating the technical features which, in combination with the features stated in subparagraph(a), it is desired to protect.(c) If the application contains drawings, the technical features mentioned in the claims shallpreferably, if the intelligibility of the claim can thereby be increased, be followed by reference

signs relating to these features and placed between parentheses. These reference signs shall notbe construed as limiting the claim.

c. Principle of Equivalents75.2. For the purpose of determining the extent of protection conferred by the patent, due accountshall be taken of elements which are equivalent to the elements expressed in the claims, so that aclaim shall be considered to cover not only all the elements as expressed therein, but alsoequivalents. (n)


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US decisionsWienam v. Denmead, 56 US 330Graver Tank Mfg. Co. v. Linde Air Products Co., 339 US 605.

Wener Jenkinson Company v. Hilton Davis Chemical Co., 520 US 17Festo Corporation v. Shoketsu Kinzoku Kogyo Kabushiki Company

Limitedm 535 US 722 (The Principle of File Wrapper Estoppel)RP Cases on the Doctrine of Equivalents

Gsell Yapjue, 12 Phil 712Godinez v. CA, 226 SCRA 338Del Rosario v. CA, 255 SCRA 152

(5)Defenses in action for infringementSection 61. Cancellation of Patents. - 61.1. Any interested person may, upon payment of therequired fee, petition to cancel the patent or any claim thereof, or parts of the claim, on any of thefollowing grounds:

(a) That what is claimed as the invention is not new or Patentable;(b) That the patent does not disclose the invention in a manner sufficiently clear andcomplete for it to be carried out by any person skilled in the art; or(c) That the patent is contrary to public order or morality.

61.2. Where the grounds for cancellation relate to some of the claims or parts of the claim,cancellation may be effected to such extent only. (Secs. 28 and 29, R.A. No. 165a)

Section 81. Defenses in Action for Infringement. - In an action for infringement, the defendant, inaddition to other defenses available to him, may show the invalidity of the patent, or any claimthereof, on any of the grounds on which a petition of cancellation can be brought under Section 61hereof. (Sec. 45, R.A. No. 165)

056 - sapalo - outline - infringment of patents

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