Article 163p. 163

COMMERCIAL LAWS NEGOTIABLE INSTRUMENTS, CORPORATION, INSURANCE, TRANSPORTATION, BANKING

taken of elements 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. (n)

SECTION 76. Civil Action for Infringement . — 76.1. The

making, using, offering for sale, selling, or importing a

patented

product or a product obtained directly or

indirectly from a patented process, or the use of a

patented

process

without

the

authorization

of

the

patentee constitutes patent infringement: Provided, That,

this shall not apply to instances covered by Sections 72.1

and 72.4 (Limitations of Patent Rights); Section 74 (Use of

Invention

by

Government); Section 93.6 (Compulsory

Licensing); and Section 93-A (Procedures on Issuance of a

Special Compulsory License under the TRIPS Agreement)

of this Code.(as amended by RA No 9502)

76.2. 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.

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 above the 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

implements

predominantly used in the infringement be disposed of

outside the channels of commerce or destroyed, without

compensation.

76.6. 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 knowing it to be especially adopted for

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)

SECTION 77. Infringement Action by a Foreign National .

— Any foreign national or juridical entity who meets the

requirements of Section 3 and not engaged in business in

the Philippines, to which a patent has been granted or

assigned

under

this

Act,

may

bring

an

action

for

infringement of patent, whether or not it is licensed to do

business in the Philippines under existing law. (Sec. 41-A,

R.A. No. 165a)

SECTION 78. Process Patents ; Burden of Proof . — If the

subject matter of a patent is a process for obtaining a

product, any identical product shall be presumed to have

been obtained through the use of the patented process if

the product is new or there is substantial likelihood that

the identical product was made by the process and the

owner of the patent has been unable despite reasonable

efforts,

to

determine

the

process

actually

used.

In

ordering the defendant to prove that the process to

obtain

the

identical

product

is

different

from

the

patented process, the court shall adopt measures to

protect, as far as practicable, his manufacturing and

business secrets. (n)

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 for infringement. (Sec. 43, R.A. No. 165 )

SECTION

80.

Damages ;

Requirement

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, R.A. No. 165a)

SECTION 81. Defenses in Action for Infringement . — In

an action for infringement, the defendant, in addition to

other defenses available to him, may show the invalidity

of the patent, or any claim thereof, on any of the grounds

on which a petition of cancellation can be brought under

Section 61 hereof. (Sec. 45, R.A. No. 165 )

SECTION 82. Patent Found Invalid May be Cancelled . —

In an action for infringement, if the court shall 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 the register of the Office and shall publish a notice

to that effect in the IPO Gazette. (Sec. 46, R.A. No. 165a)

SECTION 83. Assessor in Infringement Action . — 83.1.

Two (2) or more assessors may be appointed by the court.

The

assessors

shall

be

possessed

of

the

necessary

scientific

and

technical

knowledge

required

by

the

subject matter in litigation. Either party may challenge

the fitness of any assessor proposed for appointment.

83.2. Each assessor shall receive a compensation in an

amount to be fixed by the court and advanced by the

complaining party, which shall be awarded as part of his

costs should he prevail in the action. (Sec. 47, R.A. No.

165a)

SECTION

84.

Criminal

Action

for

Repetition

of

Infringement . — If infringement is repeated by the

infringer 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 not less than six (6) months but not more than

three (3) years and/or a fine of not less than One hundred

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 in three (3) years from date of the commission

of the crime. (Sec. 48, R.A. No. 165a)

CHAPTER IX Voluntary Licensing

SECTION

85.

Voluntary

License

Contract .

—

To

encourage the transfer and dissemination of technology,

prevent or control practices and conditions that may in

particular

cases

constitute

an

abuse

of

intellectual

property rights having an adverse effect on competition

and trade, all technology transfer arrangements shall

comply with the provisions of this Chapter. (n)

SECTION 86. Jurisdiction to Settle Disputes on Royalties .

— The Director of the Documentation, Information and

Technology Transfer Bureau shall exercise quasi-judicial

jurisdiction in the settlement of disputes between parties

to

a

technology

transfer

arrangement

arising

from

technology transfer payments, including the fixing of

appropriate amount or rate of royalty. (n)

SECTION 87. Prohibited Clauses . — Except in cases

under

Section

91,

the

following

provisions

shall

be

deemed

prima

facie

to

have

an adverse effect on

competition and trade:

87.1. Those which impose upon the licensee the obligation

to

acquire

from

a

specific

source

capital

goods,

intermediate

products,

raw

materials,

and

other

technologies, or of permanently employing personnel

indicated by the licensor;

87.2. Those pursuant to which the licensor reserves the

right to fix the sale or resale prices of the products

manufactured on the basis of the license;

87.3. Those that contain restrictions regarding the volume

and structure of production;

© Compiled by RGL

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