University of Cebu

Cebu City July 2, 2018 Revision

COLLEGE OF LAW
First Semester School Year 2018-2019

COURSE SYLLABUS
[ Professor Josh Carol T. Ventura]

I. COURSE NUMBER : Law 218

II. COURSE TITLE : Intellectual Property Law

III. COURSE DESCRIPTION : An in depth study of the intellectual property regime in the Philippines as regards copyright, trademarks and
patents as it relates to other types of IP like geographic indications, trade secrets, lay-out designs of
integrated circuits and traditional knowledge and the regulatory measures adopted by the state to promote and
protect IP in accordance with international conventions and the TRIPS agreement.

IV. COURSE PREREQUISITE : N/A (But it is preferred that students must have taken up Obligations and Contracts – Law 121)

V. COURSE CREDIT : 2 units

VI. COURSE OBJECTIVES :

a) To develop the critical thinking competencies of students in grasping the basics of intellectual property, its concepts and doctrines as it
relates to actual business settings;
b) To empower students to spot critical issues in the cases assigned and enable them to see through problems and hypotheticals – how a
seemingly minor change in the facts can produce a change in the outcome of the case;
c) To expose students to ethical and professional responsibility issues that lurk beneath the surface of the cases;
d) To heighten the students’ understanding of the IP regime in the Philippines vis a vis the different international conventions in IP;
e) To appreciate new IP concepts such as traditional knowledge, geographic indications , lay-out designs amidst the challenges of globalization
f) To demystify the concept of Intellectual Property so as to make the study of the law a satisfying and more enriching experience;
g) To integrate one’s learning of other laws with intellectual property.
VII. COURSE REQUIREMENTS :
1) Attendance and active participation in discussion. Yes, this course will not be a monologue by me.
2) Reading all the cases assigned. ( Please read the full text. Do not rely on case digests)
3) Participation in all class activities.
4) Taking the exams on the designated schedule (In case of conflict in exam schedule, you have to inform me in advance and coordinate with
the office. There are no removal exams in my class. )

VIII. EVALUATIVE MEASURES : A combination of the following evaluation methods shall be done for the different content items whenever
applicable and deemed more effective:

a) Oral recitation
b) Written examination
c) Simulation exercises through problem based approach which may require reporting, focus group discussion or role
playing
d) Submission of case digests

IX. GRADING SYSTEM :

Class standing – 40% ( this comprises of quizzes, prelim exam, semifinal exam, written and oral reports,
and other projects) In particular the 40 % is further subdivided into the following :
15% - prelim/semi final exam
15% - graded recitation
10% - quizzes, projects, reports, class activities

Midterm/Final Exam – 60%

The final grade is the result of the following : (Grade in the Midterm Period + Grade in the Final Period divided by 2)

X. Recommended Textbooks :
1) Essentials of Intellectual Property Law by Ernesto C. Salao, (Latest edition)
2) Intellectual Property Law by Fr. Ranhilio Aquino

XI. Useful websites : http://www.wipo.int/about-ip/en/ ; https://www.ipophil.gov.ph/

XII. COURSE OUTLINE
Topics
I. Basic Intellectual Property Information

What is IP ? WIPO Definition

An Overview of Copyright, Patents and
Trademarks

Pertinent Constitutional Provisions
o The”Benefit to the People
Proviso”– Art. XIV,Sec.13
o Art. XIV- Secs 10 and 12
o Art. XII, Sec 6 vis a vis Sec. 2 of
the IP Code
o Art XII, Secs. 14 and 19

Civil Law Basis - Arts. 712; 721;722;
724

Historical Basis

Statutory Definition of Intellectual
Property

2 Main Classes of Intellectual Property
II. Intellectual Property Office

Functions of the Office

Different Bureaus and its functions

Enforcement and Visitorial Powers

Jurisdictions of the Director General
Dates Cases /Assignments
PRELIMS
1. Pearl & Dean, Inc. v. Shoemart, Inc. and North Edsa
July 2 /3, 2018 Marketing Inc., G.RN. 148222. August 15, 2003
July 9/10
2. Air Philippines Corporation v. Pennswell, Inc., G.R. No.
172835, December 13, 2007
Please get the definitions of the following from either WIPO
website or IPO website
a) Traditional knowledge
b) Geographic/al indications
c) Lay- out designs of integrated circuits.
Also read the notes attached to this syllabus
3. Pest Management Association of the Philippines
July 9/10, 2018 vs.Fertilizer and Pesticides Authority, Secretary of DA, G.R.
NO. 156041 , February 21, 2007
III. Copyright

Historical Background

What is copyright?
- Concept of originality
- Bundle of rights (economic and
moral rights)
- Amendments to the IP Code

Copyrightable Works
- Literary and Artistic Works
- Derivative Works

Unprotected Subject Matter

Copyright Law Principles
- Principle of Automatic Protection
- Principle of Conceptual
Separability
(Denicola Test)
- First Sale Doctrine
- Fair Use Doctrine

Rules of Ownership of Copyright -
Secs. 180-183
- Transfer or assignment of
copyright
- Sale or lease of work (Sec. 200)

Limitations on Copyright

Term of Copyright

Neighboring Rights

Infringement and Remedies - Secs
216-226
- Differentiate Plagiarism and
Infringement
- Landlord liability and vicarious
infringement

Evidentiary Considerations (Affidavit
evidence)
July 9/10 4. Joaquin v. Drilon G.R No. 108946, 28 Jan 1999)
5. Ching v. Salinas, GRN. 161295, June 29, 2005
6. United Feature Syndicate Inc., vs. Munsingwear
July 16/17 Manufacturing
Company, G.R. No. 76193 November 9, 1989
7. Feist Publications v. Rural Telephone – 499 US 340
(1991)
8. Manly Sportwear Manufacturing vs. Dadodette GR.N.
165306, September 20, 2005
9. Brandir Int'l Inc., vs. Cascade Pacific Lumber
Company,
844 F 2D. 1142, U.S CA Second Circuit, Dec. 2, 1987
10. Lotus v. Borland – US Court of Appeals No. 93-2214
11. Triad Systems vs.Southeastern Express Co USC, 8th
Circuit
August 31, 1995
12. Los Angeles News Service vs. Frank Tullo, 973F. 2D 791
13. Campbell vs. Acuff-Rose Music, - US Court of Appeals
for the 6th Circuit, March 7, 1994
14. Bayanihan Music vs. BMG, Jose Mari Chan, GR No.
166337, March 7, 2005
July 23/24 15. Filscap v. Tan ( 148 SCRA 461, 16 March 1987)
16. ABS CBN Corp vs. Gozon, Duavit, et.al, G.R. No. 195956
March 11, 2015
17. Habana vs. Robles,GRN 131522, July 19, 1999
18. Sambar vs. Levi Strauss & Co./, GR No. 132604, ( March 6,
PRELIM EXAM 2002)
July 30/31
19. Sony Corp. v. Universal City Studios, Inc. 464 US 417, SC
984
August 7
20. NBI- Microsoft Corp. vs. Judy Hwang, et., al, G.R. No.
147043, June 21, 2005
III. Law on Trademarks MIDTERMS

Definition of Marks August 6/7 21. Mirpuri vs. CA, G.R No. 114508, November 19, 1999,
- Trademarks 22. Unno Commercial vs. Gen Milling Corp, 205 Phils.707
- Service marks 23. La Chemise Lacoste S.S vs. Fernandez, (GR. No. L6559,
- Collective marks May 21, 11984
- Trade names 24. Ang v. Teodoro, GRN. L-48226, December 14, 1942
- Container marks 25. Mc Donald's Corp. vs. LC Big Mak Burger, GR No.

Functions of a Mark 243993,August 18, 2004

Concept of Origin 26. Mc Donald's Corp. vs. MacJoy Fastfood Corporation,GR No

Spectrum of Distinctiveness 16615, February 2, 2007

How rights to a Mark are Acquired 27. Asia Brewery Inc, vs.the Honorable Court of Appeals and
a) under Sec. 2 of RA 166 San Miguel Corp, GRN 103543, July 5, 1993
b) under Sec. 122 of RA 8293 28. Superior Commercial Enterprises Inc. vs. Kunnan
c) under RA 623 Enterprises and Sports Concept and Distributors Inc.,

How Rights to a Tradename are G.R. No. 169974, April 20, 2010
Acquired 29. FREDCO Manufacturing Corp. vs. President and Fellows

Non-registrable marks of Harvard College, GRN 185917, June 1, 2011

Principles in trade marks August 13/14 30. Coffee Partners, Inc. vs. San Francisco Coffee & Roastery,
- Well known marks doctrine Inc., GRN. 2010 G.R. No. 169504 March 3, 2010
( Sec 123.1 (e); Art. 6bis of the 31. Shangrila Hotels vs. DGCI, GR No. 159938, March 31,
Paris Convention 2006
- same goods 32. Skechers, U.S.A Inc. v. Inter Pacific Industrial Trading
- dissimilar goods Corporation, GRN. 164321, March 23,2011
-Theory of Dilution 33. Del Monte Corporation vs. Court of Appeals,GRN. L-78325,
January 25, 1990

Confusion of good vs. confusion of 34. Berries Agricultural Co., Inc vs. Norvy Abyadang, GR. No.
business August 20/21 183404, October 13, 2010

Tests to determine confusing similarity 35. 246 Corporation v. Hon. Reynaldo B. Daway, G.R No.
between marks 157216, November 20 2003
- Dominancy test 36. Mighty Corp. vs. E.J Gallo Winery [G.R. No. 154342July
- Holistic test 14, 2004"]

Nice Classification 37. Emerald Garment Manufacturing Corporation vs. Court of

Sec. 20 of RA 166 vs. Sec. 138 of the Appeals, 251 SCRA 600, 1995
IP Code 38. Sta. Ana vs. Maliwat ([G.R. No. L23023. August 31,1968

Application for Registration - 39. SocietedesProduits,NESTLE,SA vs. Martin Dy. G.R. No.

Maintenance/Renewal of 172276 ,August 8, 2010
registration(Sec. 146) MIDTERM EXAM 40. Faberge vs. IAC, 215 SCRA 316

Rights conferred by registration (Sec.
147-150) Aug 27-Sept 1, 41. (2007) Sehwani Inc., vs. In-N-Out Burger, GRN. 171053,

Rights by third parties of names 2018 Oct. 15, 2007
similar to registered mark 42. (2009) Prosource International vs. Horphag Research

Cancellation of Registration Management, SA, GRN 180073, Nov. 25, 2009

License Contracts – Section 150 43. Levi Strauss vs. Clinton Aparelle,GR No. 138900,Sept

Remedies Sept 3 and 4, 2018 20,2005
- Trademark infringement (Sec. 155) 44. Republic Gas Corporation, et al. v. Petron Corporation,
- Damages et.al, G.R No. 1940652, June 17, 2003
- Border Control measures
- Unfair competition
- Criminal penalties for infringement
,unfair competition, false designation of
origin, and false description or
misrepresentation

Jurisdictional issues

IV. Law on Patents 45. Aguas vs. de Leon, 111 SCRA 238 ,1982
Sept. 3and 4, 2018
46. Maguan vs. CA, 146 SCRA 107 , 1986

Purpose of the Patent System 47. Godines vs. CA, GR No. 97343, Sept. 13, 1993

Patentable Inventions 48. Schuartz vs. CA, GR No. 113407, July 12, 2000

Non-Patentable Inventions 49. Creser Precision System vs.CA, GR No. 118708,Feb. 2,

Ownership of a Patent 1998
- Right to a patent 50. G. Sell v. Yap Jue, 12 Phil 519, 1909
- First-to-file rule 51. Smith Kline v. CA, 409 SCRA 33 (2003)
- Inventions created pursuant to a 52. Philippine Pharmawleath, Inc. vs. Pfizer Inc and Pfizer In
- Commission G.RN. 167715, Nov. 17, 2010
- Right of priority 53. Roma Druc and Romeo Rodriguez, as Proprietor of Drug

Application for a Patent Sept. 10 and 11, vs. The Regional Trial Court of Guagua,Pampanga, The
2018 Provincial Prosecutor of Pampanga, Bureau of Food and

Grounds for Cancellation of a Patent Drugs (BFAD) and Glaxo Smithkline, G.R No. 149907, April

Remedy of the true and actual 16, 2009
Inventor 54. Graham, et al.v. Joh Deere Co.of Kansas City, et.al,383,

Rights Conferred by a Patent U.S . 1 (1966)

Limitations of Patent Right

Prior user

Use by the Government

Utilty Models Sept. 17 and 18,
2018

Registrability

Rights of holder

Industrial Design
Patent infringement SEMI FINAL EXAM
o Tests in patent infringement October 1 and 2,

Literal infringement 2018

Doctrine of equivalents
o Civil and criminal action
o Prescriptive period
o Defenses in action for October 8 and 9,
2018
o infringement

Licensing
o Voluntary
o Compulsory

7.14 Assignment and transmission of
rights

V. Rules of Procedure on IP Cases October 15 and 16,

Search Warrants and IP Rights 2018

October 22 -23,2018
VI. Emerging Trends in IP
FINAL EXAM
Oct. 29- Nov. 8,2018

Prepared by: Atty. Josh Carol T. Ventura

Approved by: Dean Baldomero Estenzo