PHILIPPINES Trends and Developments Contributed by: Susan D. Villanueva, Patricia A. O. Bunye, Rowanie A. Nakan and John Patrick M. Santos, Cruz Marcelo & Tenefrancia
the latter hired a former employee of an affiliate of TPI which was directly involved in the use of the patented process and said former employee constructed two smoke machines which used the patented process in the curing of Phillips’ tuna products. The IPOPHL’s Bureau of Legal Affairs (IPO-BLA) granted the prayer for a writ of preliminary injunc- tion, ordering Phillips to cease and desist from using the patented process for 90 days. It was only after the full-blown trial on the main case when the IPO-BLA ruled in favour of Phillips and dismissed the complaint and TPI’s entitlement to any injunction. The appeal was likewise dis- missed by the Office of the Director General of the IPOPHL (IPO-ODG) but the Court of Appeals reversed said dismissal. The final appeal with the Supreme Court was filed by Phillips, hence the instant case. Patent infringement cases in the Philippines are generally resolved using the two primary tests: (i) the literal infringement test; and (ii) the doctrine of equivalents test. To facilitate its discussion on the doctrine of equivalents test, the Supreme Court examined decisions in the following cases: • Carlos Gsell v Valeriano Veloso Yap-Jue, G.R. No L-4720 (19 January 1909); • Roberto L. Del Rosario v Court of Appeals and Janito Corporation, G.R. No 115106 (15 March 1996); and • Smith Kline Beckman Corporation v Court of Appeals and Tryco Pharma Corporation, G.R. No 126627 (14 August 2003). The Supreme Court has likewise taken instruc- tion from the US case of Warner-Jenkinson v Hilton Davis, 520 U.S. 17 (1997) and concluded that, in addition to the Philippine cases above, the Philippines subscribes to the following tests
to determine if the patented product or patent is being infringed through the doctrine of equiva- lents test: • Insubstantial Difference Test: “There is patent infringement when the infringer appropriates the patent but adopts insubstantial changes.” • Triple Identity Test: “There is patent infringe- ment if the allegedly infringing device or process performs substantially the same function and accomplishes substantially the same result by using substantially the same means.” • All Elements Test: “Courts consider the indi- vidual elements in a patent claim to define the scope of the patented invention, rather than considering the invention as a whole.” While the insubstantial difference test and triple identity test have been used in Philippine juris- prudence, the Supreme Court still emphasised that the all elements test finds a basis in Section 75.2 of the Philippine Intellectual Property Code which states that “in determining the extent of protection conferred by a patent, elements in the allegedly-infringing device or process which are equivalent to the elements expressed in the Meanwhile, the Philippine Congress has recently enacted the Internet Transactions Act of 2023 (ITA) with the policy of, among others, upholding intellectual property rights in the internet mar- ketplace sphere, which has been a booming industry in the Philippines in recent years. The ITA covers business-to-business and business- to-consumer internet transactions wherein one of the parties is situated in the Philippines or where the digital platform, e-retailer, or online merchant is availing themselves of the Philippine market and has minimum contacts therein. claims should also be considered.” Internet Transactions Act of 2023
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