Article 166p. 166

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

100.5.

The

license

may

be

terminated

upon proper

showing that circumstances which led to its grant have

ceased to exist and are unlikely to recur: Provided , That

adequate protection shall be afforded to the legitimate

interest of the licensee; and

100.6. The patentee shall be paid adequate remuneration

taking into account the economic value of the grant or

authorization, except that in cases where the license was

granted to remedy a practice which was determined after

judicial or administrative process, to be anti-competitive,

the need to correct the anti-competitive practice may be

taken into account in fixing the amount of remuneration.

(Sec. 35-B, R.A. No. 165a)

SECTION 101. Amendment , Cancellation , Surrender of

Compulsory License . — 101.1. Upon the request of the

patentee or the licensee, the Director of Legal Affairs may

amend the decision granting the compulsory license,

upon proper showing of new facts or circumstances

justifying such amendment.

101.2. Upon the request of the patentee, the said Director

may cancel the compulsory license:

(a) If the ground for the grant of the compulsory license

no longer exists and is unlikely to recur;

(b) If the licensee has neither begun to supply the

domestic market nor made serious preparation therefor;

(c) If the licensee has not complied with the prescribed

terms of the license;

101.3. The licensee may surrender the license by a written

declaration submitted to the Office.

101.4. The said Director shall cause the amendment,

surrender, or cancellation in the Register, notify the

patentee, and/or the licensee, and cause notice thereof to

be published in the IPO Gazette. (Sec. 35-D, R.A. No. 165a)

SECTION 102. Licensee ' s Exemption from Liability . —

Any person who works a patented product, substance

and/or

process

under

a

license

granted

under

this

Chapter, shall be free from any liability for infringement:

Provided , however , That in the case of voluntary licensing,

no collusion with the licensor is proven. This is without

prejudice to the right of the rightful owner of the patent

to recover from the licensor whatever he may have

received as royalties under the license. (Sec. 35-E, R.A. No.

165a)

CHAPTER XI Assignment and Transmission of

Rights

SECTION 103. Transmission of Rights . — 103.1. Patents or

applications for patents and invention to which they

relate, shall be protected in the same way as the rights of

other property under the Civil Code.

103.2. Inventions and any right, title or interest in and to

patents and inventions covered thereby, may be assigned

or transmitted by inheritance or bequest or may be the

subject of a license contract. (Sec. 50, R.A. No. 165a)

SECTION

104.

Assignment

of

Inventions .

—

An

assignment may be of the entire right, title or interest in

and to the patent and the invention covered thereby, or of

an undivided share of the entire patent and invention, in

which event the parties become joint owners thereof. An

assignment may be limited to a specified territory. (Sec.

51, R.A. No. 165 )

SECTION 105. Form of Assignment . — The assignment

must be in writing, acknowledged before a notary public

or other officer authorized to administer oath or perform

notarial acts, and certified under the hand and official

seal of the notary or such other officer. (Sec. 52, R.A. No.

165 )

SECTION 106. Recording . — 106.1. The Office shall record

assignments, licenses and other instruments relating to

the transmission of any right, title or interest in and to

inventions, and patents or application for patents or

inventions to which they relate, which are presented in

due form to the Office for registration, in books and

records kept for the purpose. The original documents

together with a signed duplicate thereof shall be filed,

and the contents thereof should be kept confidential. If

the

original

is

not

available, an authenticated copy

thereof in duplicate may be filed. Upon recording, the

Office shall retain the duplicate, return the original or the

authenticated copy to the party who filed the same and

notice of the recording shall be published in the IPO

Gazette.

106.2.Such instruments shall be void as against any

subsequent

purchaser

or

mortgagee

for

valuable

consideration and without notice, unless, it is so recorded

in the Office, within three (3) months from the date of

said instrument, or prior to the subsequent purchase or

mortgage. (Sec. 53, R.A. No. 165a)

SECTION 107. Rights of Joint Owners . — If two (2) or

more persons jointly own a patent and the invention

covered thereby, either by the issuance of the patent in

their joint favor or by reason of the assignment of an

undivided share in the patent and invention or by reason

of the succession in title to such share, each of the joint

owners shall be entitled to personally make, use, sell, or

import

the

invention

for

his

own

profit:

Provided ,

however , That neither of the joint owners shall be entitled

to grant licenses or to assign his right, title or interest or

part thereof without the consent of the other owner or

owners, or without proportionally dividing the proceeds

with such other owner or owners. (Sec. 54, R.A. No. 165 )

CHAPTER XII Registration of Utility Models

SECTION 108. Applicability of Provisions Relating to

Patents . — 108.1. Subject to Section 109, the provisions

governing patents shall apply, mutatis mutandis , to the

registration of utility models.

108.2. Where the right to a patent conflicts with the right

to a utility model registration in the case referred to in

Section 29, the said provision shall apply as if the word

"patent" were replaced by the words "patent or utility

model registration". (Sec. 55, R.A. No. 165a)

SECTION

109.

Special

Provisions Relating to Utility

Models . — 109.1. (a) An invention qualifies for registration

as a utility model if it is new and industrially applicable.

(b) Section 21, "Patentable Inventions", shall apply except

the

reference

to

inventive

step

as

a

condition

of

protection.

109.2. Sections 43 to 49 shall not apply in the case of

applications for registration of a utility model.

109.3. A utility model registration shall expire, without any

possibility of renewal, at the end of the seventh year after

the date of the filing of the application.

109.4. In proceedings under Sections 61 to 64, the utility

model registration shall be canceled on the following

grounds:

(a)

That the claimed invention does not qualify for

registration as a utility model and does not meet the

requirements of registrability, in particular having regard

to Subsection 109.1 and Sections 22, 23, 24 and 27;

(b) That the description and the claims do not comply

with the prescribed requirements;

(c)

That

any

drawing

which

is

necessary

for

the

understanding of the invention has not been furnished;

(d) That the owner of the utility model registration is not

the inventor or his successor in title. (Secs. 55, 56, and 57,

R.A. No. 165a)

SECTION

110.

Conversion of Patent Applications or

Applications for Utility Model Registration . — 110.1. At

any time before the grant or refusal of a patent, an

applicant

for

a

patent

may,

upon

payment

of

the

prescribed fee, convert his application into an application

for registration of a utility model, which shall be accorded

the filing date of the initial application. An application

may be converted only once.

© Compiled by RGL

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