PHILIPPINES Law and Practice Contributed by: Susan D. Villanueva, Patricia A. O. Bunye, Rowanie A. Nakan and Ritz Angelica R. Alejandro, Cruz Marcelo & Tenefrancia
3.5 Defences Against Infringement In addition to other defences available to the defendant in an action for infringement, the defendant 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 of the IP Code, as enumerated in 2.2 Third-Party Remedies to Remove the Effects of Intellectual Property ; • the restrictions on the assertion of patent rights discussed in 2.13 Restrictions on Assertion of an Intellectual Property Right ; • good faith if the defendant or the accused claims to be a prior user as discussed in 2.13 Restrictions on Assertion of an Intellectual Property Right ; and • non-essentiality of a patent in cases where the patent is alleged to be a standard essen- tial patent. 3.6 Role of Experts The role of experts in judicial proceedings is to provide their opinion on matters requiring spe- cial knowledge, skill, experience, or education. Under the Rules on Evidence, such opinions may be admitted as evidence to aid the court in resolving technical or specialised issues. For patents, the IP Code allows the appoint- ment of two or more assessors with the requisite scientific and technical expertise in the subject matter under litigation in proceedings before the RTC. These assessors assist the court in resolv- ing issues of a technical or scientific nature. Additionally, in proceedings before the IPOPHL, the IP Code allows the formation of a committee in cases involving highly technical issues. Upon the motion of any party, the Director of Legal Affairs may convene such a committee, com-
adopt measures to protect, as far as practicable, his/her manufacturing and business secrets. 3.4 Scope of Protection for an Intellectual Property Right The Supreme Court has previously used the lit- eral infringement test and doctrine of equivalents in determining the existence of patent infringe- ment. In Phillips Seafood Philippines Corporation v Tuna Processors, Inc. G.R. No 214148 (06 Febru- ary 2023), the Court discussed that “[u]nder the doctrine of equivalents test, the courts consider whether the elements in the alleged-infringing product or process are equivalent to the ele- ments expressed in the patent’s claim(s). There is patent infringement if the allegedly-infringing product or process appropriates the innovative concept of the patent, and despite the modifi- cations introduced in the infringing product or process, it still performs substantially the same functions, in the same way, to produce the same result.” The court further discussed that there are three tests that may be applied. Under the Insubstan- tial Difference Test, “there is patent infringement when the infringer appropriates the patent but adopts insubstantial changes”. Under the Triple Identity Test, “there is patent infringement if the allegedly-infringing device or process performs substantially the same function and accom- plishes substantially the same result by using substantially the same means.” Finally, under the All Elements Test, “courts consider the individual elements in a patent claim to define the scope of the patented invention, rather than considering the invention as a whole.”
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