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The Philippines: Application of the doctrine of equivalents

The doctrine of equivalents is provided under Section 75.2 of the IP Code of the Philippines (Republic Act 8293). However, in deciding actions for patent cancellation and infringement, the Intellectual Property Office (IPOPHL) as well as the Supreme Court rely for the most part on American case law. The recent patent infringement case of Eddie T Dionisio v Visita International Phils, Inc and Lal K Tulsiani (IPV No 10-2013-00034, July 28 2016) citing a cancellation case also between the parties shows this.

Dionisio was the registered owner of utility model number 2-2011-000646 for a multi-purpose articulated ladder issued by the IPOPHL on June 6 2012. On December 20 2013, Dionisio filed an administrative complaint for patent infringement against Visita claiming that the latter sold ladders with specifications similar to Dionisio's patented ladders. Visita countered that there was no infringement since it had its own earlier filed utility model registration 2-2009-000166 issued on December 28 2010.

The records of the IPOPHL showed that Dionisio's 646 utility model had already been ordered cancelled in the Bureau of Legal Affairs (BLA)'s decision dated February 9 2016, in a cancellation case filed by Visita. In that cancellation case, the BLA ruled that US patent 4,842,089 of which it took judicial notice is prior art to Dionisio's 646 utility model. The BLA said of the differences that Dionisio claimed for its utility model over the US patent:

the ladder is aluminum which has screwless swedged steps; uses external elbow switching hinges which prevent hurting users; carries the detachable stabilizer footings, which provide wide base and prevent the ladder from collapsing, and for more ladder be loaded per truckload or container load for less delivery costs and container shipping, these are basically differences in character, form or shape. The ladder does the same work in substantially the same way and accomplishes the same results. While an improvement of prior utility model may be patented accordingly, the same has not been substantially shown in the instant case. The subject utility model appears substantially similar in its appearance and function." The BLA further ruled in the cancellation case that "In a judicial precedent primarily in American law, it is stated that "the essence of the doctrine of equivalents is that one may not practice a fraud on the patent by appropriating an invention through minor and insignificant changes in a device to avoid the patent. Its theory is that if two devices do the same work in substantially the same way, and accomplish the same result, they are substantially the same even though they differ in name, form or shape.

In this patent infringement case, the BLA held that since utility model 646 has been cancelled, the patent infringement case has no more legs to stand on, inasmuch as the patent holder loses all rights by reason of the cancellation of his utility model registration, which decision is immediately executed even pending appeal, unless a restraining order is issued.

Editha R Hechanova

Hechanova & Co., Inc.
Salustiana D. Ty Tower
104 Paseo de Roxas Avenue
Makati City 1229, Philippines
Tel: (63) 2 812-6561
Fax: (63) 2 888-4290


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