UST Golden Notes Intellectual Property Law PDF

UST GOLDEN NOTES 2011
INTELLECTUALPROPERTYLAWS C.TECHNOLOGYTRANSFERARRANGEMENTS

I.INTELLECTUALPROPERTYRIGHTSINGENERAL Q:Whatisatechnologytransferarrangement?

A.INTELLECTUALPROPERTYRIGHTS A: Contracts or arrangements involving the
transfer of systematic knowledge for the
Q: What are covered by intellectual property manufacture of a product, the application of the
rights? process, or rendering a service including
management contracts, and transfer, assignment
A: or licensing of all forms of intellectual property
1. CopyrightandRelatedRights rights, including licensing of computer software
2. Mark(trade,serviceandcollective) except computer software developed for mass
3. Geographicindications market.(Sec.4.2,IPC)
4. Industrialdesigns
5. Patents Q:Whatisundisclosedinformation?
6. Layout designs (Topographies) of
IntegratedCircuits A:Itisaninformationwhich:
7. Protection of Undisclosed Information.
(Sec. 4.1, Intellectual Property Code 1. Isasecretinthesensethatitisnot,asa
[IPC]) body or in precise configuration and
assembly of components, generally
B.DIFFERENCESBETWEENCOPYRIGHTS known among, or readily accessible to
TRADEMARKSANDPATENT personswithinthecirclesthatnormally
deal with the kind of information in
Q: What are the distinctions among trademark, question.
patentandcopyright?
2. Has commercial value because it is a
A: secret
INTELLECTUAL
DEFINITION
PROPERTIES 3. Hasbeensubjectedtoreasonablesteps
Anyvisiblesigncapableof underthecircumstances,bytheperson
distinguishingthegoods lawfullyincontroloftheinformation,to
(trademark)orservices(service keep it a secret. (Article 39, TRIPS
Trademark
mark)ofanenterpriseandshall Agreement)
includeastampedormarked
containerofgoods. Q: What is the nature of undisclosed
Thenameordesignation information/tradesecret?
Tradename identifyingordistinguishingan
enterprise.
A:Thosetradesecretsareofaprivilegednature.
Literaryandartisticworkswhich The protection of industrial property encourages
areoriginalintellectualcreations
investments in new ideas and inventions and
Copyright intheliteraryandartisticdomain
stimulates creative efforts for the satisfaction of
protectedfromthemomentof
humanneeds.Itspeedsuptransferoftechnology
theircreation.
Anytechnicalsolutionofa
and industrialization, and thereby bring about
probleminanyfieldofhuman social and economic progress. Verily, the
Patentable activitywhichisnew,involvesan protection of industrial secrets is inextricably
Inventions inventivestepandisindustrially linked to the advancement of our economy and
applicable.(Khov.CA,G.R.No. fosters healthy competition in trade. (Air
115758,Mar.11,2002). PhilippinesCorporationv.Pennswell,Inc.,G.R.No.
172835,Dec.13,2007)
Q:Whatisageographicindication?
II.PATENTS
A: Its an indication which identifies a good as
originatingintheterritory,whereagivenquality, Q:Whatisapatent?
reputation or other characteristic of the good is
essentially attributable to its geographical origin. A:Astatutorygrantwhichconferstoaninventor
(Art. 22, TradeRelated Aspects of Intellectual orhislegalsuccessor,inreturnforthedisclosure
PropertyRights) of the invention to the public, the right for a
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ADVISER:ATTY.AMADOE.TAYAG;SUBJECTHEAD:EARLM.LOUIEMASACAYAN;
ASST.SUBJECTHEADS:KIMVERLYA.ONG&JOANNAMAYD.G.PEADA;MEMBERS:MA.ELISAJONALYNA.BARQUEZ,ANGELIR.CARPIO,
ANTONETTET.COMIA,ALBANROBERTLORENZOF.DEALBAN,JOEBENT.DEJESUS,CHRISJARKACEM.MAO,ANNAMARIEP.OBIETA,
RUBYANNEB.PASCUA,FLORANGELAT.SABAUPAN,GIANFRANCESNICOLEC.VILCHES
INTELLECTUAL PROPERTY LAW
limited period of time to exclude others from Q: What is meant by made available to the
making, using, selling or importing the invention publicandwhatareitseffects?
withintheterritoryofthecountrythatgrantsthe
patent. A:Tobemadeavailabletothepublicmeansat
leastonememberofthepublichasbeenableto
A.PATENTABLEINVENTIONS access knowledge of the invention without any
restriction on passing that knowledge on to
Q:Whatarethepatentableinventions? others.

A:Anytechnicalsolutionofaprobleminanyfield GR: When a work has already been made
of human activity which is new, involves an available to the public, it shall be non
inventivestepandisindustriallyapplicable.Itmay patentableforabsenceofnovelty.
be,ormayrelateto,aproduct,orprocess,oran
improvementofanyoftheforegoing.(Sec.21) XPN: Nonprejudicial disclosure the
disclosure of information contained in the
Q:Whataretheconditionsforpatentability? applicationduringthe12monthperiodbefore
the filing date or the priority date of the
A:NIA applicationifsuchdisclosurewasmadeby:
1. Novelty An invention shall not be
considered new if it forms part of a 1. Theinventor;
priorart.(Sec.23,IPC)
2. Apatentofficeandtheinformationwas
2. Involves an inventive step if, having contained:
regardtopriorart,itisnotobvioustoa a. In another application filed by the
person skilled in the art at the time of inventorandshouldhavenothave
the filing date or priority date of the beendisclosedbytheoffice,or
applicationclaimingtheinvention. b. In an application filed without the
knowledge or consent of the
3. Industrially Applicable An invention inventor by a third party which
that can be produced and used in any obtained the information directly
industry, shall be industrially applicable orindirectlyfromtheinventor;
(Sec.27,IPC).
3. A third party which obtained the
Q:Whatispriorart? information directly or indirectly from the
inventor.(Sec.25,IPC)
A:
1. Everything which has been made Q: Who has the burden of proving want of
available to the public anywhere in the noveltyofaninvention?
world, before the filing date or the
prioritydateoftheapplicationclaiming A: The burden of proving want of novelty is on
theinvention him who avers it and the burden is a heavy one
whichismetonlybyclearand satisfactoryproof
2. The whole contents of a published which overcomes every reasonable doubt.
application, filed or effective in the (Manzanov.CA,G.R.No.113388.Sept.5,1997)
Philippines,withafilingorprioritydate
that is earlier than the filing or priority Q:Whatisinventivestep?
date of the application. Provided, that
the application which has validly A:
claimed the filing date of an earlier GR:Aninventioninvolvesaninventivestepif,
applicationunderSection31oftheIPC, havingregardtopriorart,itisnotobviousto
there shall be a prior art with effect as a person skilled in the art at the time of the
of the filing date of such earlier filing date or priority date of the application
application: Provided further, that the claimingtheinvention.(Sec.26,IPC)
applicant or the inventor identified in
both applications are not one and the XPN:Inthecaseofdrugsandmedicines,there
same.(Sec.24,IPC) is no inventive step if the invention results
fromthemerediscoveryofanewformornew
propertyofaknownsubstancewhichdoesnot
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VICECHAIRSFORLAYOUTANDDESIGN:EARLLOUIEM.MASACAYAN&THEENAC.MARTINEZ

result in the enhancement of the known some or all of the interconnections of
efficacy of that substance. (Sec. 26.2, as an integrated circuit, or such a three
amendedbyR.A.9502) dimensionaldispositionpreparedforan
integrated circuit intended for
Q:Whatisthetestofnonobviousness? manufacture. Registration is valid for
10yearswithoutrenewalcountedfrom
A:Ifanypersonpossessingordinaryskillintheart dateofcommencementofprotection.
was able to draw the inferences and he
constructsthatthesupposedinventordrewfrom 4. Utility model A name given to
priorart,thenthelatterdidnotreallyinvent. inventionsinthemechanicalfield

Q:Whoisconsideredapersonofordinaryskill? Q: When does an invention qualify as a utility
model?
A:Apersonwhoispresumedto:
1. Be an ordinary practitioner aware of A:Ifitisnewandindustriallyapplicable.Amodel
what was common general knowledge of implement or tools of any industrial product
intheartattherelevantdate. even if not possessed of the quality of invention
2. Have knowledge of all references that butwhichisofpracticalutility.(Sec.109.1,IPC)
are sufficiently related to one another
and to the pertinent art and to have Q:Whatisthetermofautilitymodel?
knowledge of all arts reasonably
pertinent to the particular problems A: 7 years from date of filing of the application
withwhichtheinventorwasinvolved. (Sec.109.3,IPC).
3. Have had at his disposal the normal
means and capacity for routine work B.NONPATENTABLEINVENTIONS
and experimentation. (Rules and
RegulationsonInventions,Rule207) Q:Whatarenotpatentableinventions?

Q: What are other forms of patentable A:PADSCAD
inventions?
1. Discoveries, scientific theories and
A: mathematicalmethods
1. Industrial design Any composition of
linesorcolorsoranythreedimensional 2. In the case of Drugs and medicines,
form, whether or not associated with mere discovery of a new form or new
lines or colors. Provided that such property of a known substance which
composition or form gives a special does not result in the enhancement of
appearancetoandcanserveaspattern theefficacyofthatsubstance
for an industrial product or handicraft.
(Sec.112,IPC) 3. Schemes, rules and methods of
performing mental acts, playing games
Note:Generallyspeaking,anindustrialdesignisthe or doing business, and programs for
ornamental or aesthetic aspect of a useful article. computers
(Vicente Amador, Intellectual Property
Fundamentals,2007) 4. Methodsfortreatmentofthehumanor
Animalbody
2. IntegratedcircuitAproduct,initsfinal
form,oranintermediateform,inwhich 5. Plant varieties or animal breeds or
theelements,atleastoneofwhichisan essentially biological process for the
active elements and some of all of the production of plants or animals. This
interconnections are integrally formed provision shall not apply to micro
inandoronapieceofmaterial,andin organisms and nonbiological and
which is intended to perform an microbiologicalprocesses
electronicfunction.
6. Aestheticcreations
3. Layout design/topography The three
dimensional disposition, however
expressed,oftheelements,atleastone
of which is an active element, and of
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7. Anything which is Contrary to public tothepatentshallbelongtotheperson

order or morality. (Sec. 22, IPC as who filed an application for such
amendedbyR.A.9502) invention,or
2. Where two or more applications are
Q:Arecomputerprogramspatentable? filed for the same invention, to the
applicant whi has the earliest filing
A: date.(Sec.29,IPC)
GR: Computer programs are not patentable
butarecopyrightable. Q: Cheche invented a device that can convert
rainwater into automobile fuel. She asked
XPN: They can be patentable if they are part Macon, a lawyer, to assist in getting her
ofaprocess(e.g.businessprocesswithastep invention patented. Macon suggested that they
involvingtheuseofacomputerprogram). form a corporation with other friends and have
thecorporationapplyforthepatent,80%ofthe
C.OWNERSHIPOFAPATENT shares of stock thereof to be subscribed by
Cheche and 5% by Macon. The corporation was
Q:Whoisentitledtoapatent? formed and the patent application was filed.
However,Chechedied3monthslaterofaheart
A: attack. Franco, the estranged husband of
1. Inventor,hisheirs,orassigns. Cheche, contested the application of the
corporationandfiledhisownpatentapplication
2. Joint invention Jointly by the as the sole surviving heir of Cheche. Decide the
inventors.(Sec.28,IPC) issuewithreasons.

3. 2 or more persons invented separately A: The estranged husband of Cheche cannot
and independently of each other To successfully contest the application. The right
thepersonwhofiledanapplication; over inventions accrue from the moment of
creationandasarightitcanlawfullybeassigned.
4. 2 or more applications are filed the Oncethetitletheretoisvestedinthetransferee,
applicant who has the earliest filing the latter has the right to apply for its
date or, the earliest priority date. First registration.TheestrangedhusbandofCheche,if
tofilerule.(Sec.29,IPC) notdisqualifiedtoinherit,merelywouldsucceed
totheinterestofCheche.(1990BarQuestion)
5. Inventions created pursuant to a
commission Person who commissions Q:Whomayapplyforapatent?
the work, unless otherwise provided in
thecontract.(Sec.30.1,IPC) A: Any person who is a national or who is
domiciled or has a real and effective industrial
6. Employee made the invention in the establishmentinacountrywhichisapartytoany
courseofhisemploymentcontract: convention, treaty or agreement relating to
a. The employee, if the inventive intellectual property rights or the repression of
activity is not a part of his regular unfair competition, to which the Philippines is
duties even if the employee uses also a party, or extends reciprocal rights to
thetime,facilitiesandmaterialsof nationalsofthePhilippinesbylaw.(Sec.3,IPC)
theemployer.
b. The employer, if the invention is Q: What are the steps in the registration of a
the result of the performance of patent?
his regularlyassigned duties,
unlessthereis an A:Theprocedureforthegrantofpatentmaybe
agreement, express or implied, to summarizedasfollows:
thecontrary.(Sec.30.2,IPC) 1. Filingoftheapplication
2. Accordanceofthefilingdate
Q:Whatisthefirsttofilerule? 3. Formalityexamination
4. ClassificationandSearch
A: 5. Publicationofapplication
1. If two (2) or more persons have made 6. Substantiveexamination
the invention separately and 7. GrantofPatent
independently of each other, the right 8. Publicationupongrant
207

9. Issuanceofcertificate(Salao,Essentials Q:Whataretheconditionsinavailingofpriority
of Intellectual Property Law: a date?
Guidebook on Republic Act No. 8293
andRelatedLaws.,2008) A:
1. The local application expressly claims
Q:Howisdisclosuremade? priority;

A:Theapplicationshalldisclosetheinventionina 2. It is filed within 12 months from the
mannersufficientlyclearandcompleteforittobe datetheearliestforeignapplicationwas
carriedoutbyapersonskilledintheart. filed;and

Q:Whatisaclaim? 3. A certified copy of the foreign
application together with an English
A: Defines the matter for which protection is translationisfiledwithin6monthsfrom
sought.Eachclaimshallbeclearandconcise,and thedateoffilinginthePhilippines.(Sec.
shallbesupportedbythedescription. 31,IPC)

Q:Whatisanabstract? Q: Leonard and Marvin applied for Letters
Patent claiming the right of priority granted to
A: A concise summary of the disclosure of the foreign applicants. Receipt of petitioners
invention as contained in the description, claims application was acknowledged by respondent
andmerelyservesastechnicalinformation. DirectoronMarch6,1954.TheirApplicationfor
Letters Patent in the US for the same invention
Q:Whatisunityofinvention? indicatedthattheapplicationintheUSwasfiled
on March 16, 1953. They were advised that the
A: The application shall relate to one invention "Specification" they had submitted was
only or to a group of inventions forming a single "incomplete" and that responsive action should
general inventive concept. (Sec. 38.1) If several be filed with them four months from date of
independent inventions which do not form a mailing, which was August 5, 1959. On July 3,
single general inventive concept are claimed in 1962, petitioners submitted two complete
oneapplication,theapplicationmustberestricted copies of the Specification. Director of patents
toasingleinvention.(Sec.38.2,IPC) held that petitioners' application may not be
treatedasfiled.Isthedirectorcorrect?
Q: What is the concept of divisional
applications? A: Yes, it is imperative that the application be
complete in order that it may be accepted. It is
A: Divisional applications come into play when essentialtothevalidityofLettersPatentthatthe
two or more inventions are claimed in a single specifications be full, definite, and specific. The
applicationbutareofsuchanaturethatasingle purpose of requiring a definite and accurate
patentmaynotbeissuedforthem.Theapplicant, descriptionoftheprocessistoapprisethepublic
is thus required to divide, that is, to limit the of what the patentee claims as his invention, to
claims to whichever invention he may elect, informtheCourtsastowhattheyarecalledupon
whereas those inventions not elected may be to construe, and to convey to competing
made the subject of separate applications which manufacturersanddealersinformationofexactly
are called divisional applications. (SmithKline what they are bound to avoid. To be entitled to
Beckman Corp. v. CA, GR No. 126627, Aug. the filing date of the patent application, an
14,2003) invention disclosed in a previously filed
application must be described within the instant
Q:Whatisprioritydate? application in such a manner as to enable one
skilled in the art to use the same for a legally
A: An application for patent filed by any person adequate utility. (Boothe v. Director of Patents,
who has previously applied for the same G.R.No.L24919,Jan.28,1980)
invention in another country which by treaty,
convention, or law affords similar privileges to Q: What are the rights conferred by a patent
Filipinocitizens,shallbeconsideredasfiledasof applicationafterthefirstpublication?
thedateoffilingtheforeignapplication.(Sec.31,
IPC) A: The applicant shall have all the rights of a
patentee against any person who, without his
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authorization, exercised any of the rights Q:Whatiftheground/sforcancellationrelateto

conferred under Section 71 in relation to the someoftheclaimsorpartsoftheclaimonly?
invention claimed in the published patent
application, as if a patent had been granted for A: Cancellation may be effected to such extent
thatinvention,providedthatthesaidpersonhad: only.(Sec.61.2,IPC)
1. Actual knowledge that the invention
that he was using was the subject Q: What are the grounds for cancellation of a
matterofapublishedapplication;or utilitymodel?
2. Received written notice that the
invention was the subject matter of a A:
publishedapplicationbeingidentifiedin 1. The invention does not qualify for
thesaidnoticebyitsserialnumber registrationasautilitymodel
2. That the description and the claims do
Note:Thattheactionmaynotbefileduntilafterthe not comply with the prescribed
grant of a patent on the published application and requirements
withinfour(4)yearsfromthecommissionoftheacts
3. Any drawing which is necessary for the
complainedof(Sec.46,IPC).
understanding of the invention has not
beenfurnished
Q:Whenshallthepatenttakeeffect?
4. That the owner of the utility model
registration is not the inventor or his

A: A patent shall take effect on the date of the
successorintitle.(Sec.109.4,IPC)
publication of the grant of the patent in the IPO

Gazette.(Sec.50.3,IPC)
Q: What are the grounds for cancellation of an
industrialdesign?
Q:Whatisthedurationofapatent,utilitymodel

andindustrialdesign?
A:
1. The subject matter of the industrial

A:
designisnotregistrable;
1. Patent20yearsfromdateoffilingof
2. Thesubjectmatterisnotnew;or
application without renewal. (Sec. 54,
3. The subject matter of the industrial
IPC)
design extends beyond the content of

the application as originally filed (Sec.
2. Utility Model 7 years from the filing
120IPC).
date of the application without

renewal.(Sec.109.3,IPC)
E.REMEDYOFTHETRUEANDACTUALOWNER

3. Industrial Design 5 years from the
Q:Whataretheremediesofpersonsnothaving
filingdateoftheapplication,renewable
therighttoapatent?
for not more than two (2) consecutive

periods of five (5) years each. (Sec.
A:Ifapersonotherthantheapplicantisdeclared
118.2,IPC)
byfinalcourtorderordecisionashavingtheright
to a patent, he may within 3 months after such

D.GROUNDSFORCANCELATIONOFAPATENT
decisionhasbecomefinal:

Q:Whatarethegroundsforthecancellationof
1. Prosecutetheapplicationashisown
patents?
2. Fileanewpatentapplication
3. Request the application to be refused;

A:NDCI
or
1. TheinventionisNotneworpatentable;
4. Seekcancellationofthepatent.
2. The patent does not Disclose the

invention in a manner sufficiently clear
Q:Whatistheremedyofatrueinventor?
andcompleteforittobecarriedoutby

anypersonskilledintheart;or
A:Hemayonlyaskthecourttosubstitutehimas
3. Contrary to public order or
a patentee or to cancel the patent and ask for
morality.(Sec.61.1,IPC)
damages when the application of the false
4. Patent is found Invalid in an action for
inventor is granted. He may not the IPO of
infringement(Sec.82,IPC)
processingthefalseapplication.
209

F.RIGHTSCONFEREDBYAPATENT act includes testing, using, making
or selling the invention including
Q:Whataretherightsconferredbyapatent? anydatarelatedthereto,solelyfor
purposesreasonablyrelatedtothe
A: development and submission of
1. Subject matter is a product Right to information and issuance of
restrain, prohibit and prevent any approvals by government
unauthorized person or entity from regulatoryagenciesrequiredunder
making, using, offering for sale, selling any law of the Philippines or of
orimportingtheproduct. anothercountrythatregulatesthe
manufacture, construction, use or
2. Subject matter is a process Right to saleofanyproduct.(Sec.72.4,IPC)
restrain prohibit and prevent any
unauthorized person or entity from e. Where the act consists of the
manufacturing, dealing in, using, preparation for individual cases, in
offering for sale, selling or importing a pharmacy or by a medical
any product obtained directly or professional, of a medicine in
indirectly from such process (Sec. 71, accordance with a medical
IPC). prescription.(Sec.72.5,IPC)

3. Right to assign the patent, to transfer f. Wheretheinventionisusedinany
bysuccession,andtoconcludelicensing ship, vessel, aircraft, or land
contracts.(Sec.71.2,IPC) vehicle of any other country
entering the territory of the
G.LIMITATIONOFPATENTRIGHTS Philippines temporarily or
accidentally.(Sec.72.5,IPC)
Q: What are the exceptions to the rights
conferredbyapatent? 2. Prior user Person other than the
applicant, who in good faith, started
A: usingtheinventioninthePhilippines,or
1. Ingeneral undertakenseriouspreparationstouse
the same, before the filing date or
a. GR: If put on the market in the priority date of the application shall
Philippines by the owner of the have the right to continue the use
product, or with his express thereof, but this right shall only be
consent. transferredorassignedfurtherwithhis
enterpriseorbusiness.(Sec.73,IPC)
XPN: Drugs and medicines .
introduced in the Philippines or 3. Use by Government A government
anywhere else in the world by the agency or third person authorized by
patent owner, or by any party the government may exploit invention
authorized to use the invention even without agreement of a patent
(Sec. 72.1, as amended by R.A. ownerwhere:
9502)
a. Public interest, as determined by
b. Where the act is done privately the appropriate agency of the
and on a noncommercial scale or government,sorequires;or
for a noncommercial purpose. b. A judicial or administrative body
(Sec.72.2,IPC) hasdeterminedthatthemannerof
exploitation by owner of patent is
c. Exclusively for experimental use of anticompetitive.(Sec.74,IPC)
the invention for scientific
purposes or educational purposes 4. ReversereciprocityofforeignlawAny
(experimental use provision). (Sec. condition, restriction, limitation,
72.3,IPC) diminution,requirement,penaltyorany
similarburdenimposedbythelawofa
d. Bolar Provision In the case of foreigncountryonaPhilippinenational
drugs and medicines, where the seeking protection of intellectual
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MERCANTILELAWTEAM:
property rights in that country, shall 2. Regional exhaustion allows the

reciprocally be enforceable upon possibilityofimportingintothenational
nationals of said country, within territoryapatentedproductoriginating
Philippinejurisdiction.(Sec.231,IPC) from any other member state of a
regionaltradeagreement.
Q:Whoisaparallelimporter?
3. National exhaustion limits the
A: One which imports, distributes, and sells circulation of products covered by
genuineproductsinthemarket,independentlyof patentinonecountrytoonlythoseput
an exclusive distributorship or agency agreement on the market by the patent owner or
withthemanufacturer. its authorized agents in that same
country. In this case, there can be no
Note: Such acts of underground sales and parallelimportation.
marketing of genuine goods, undermines the
propertyrightsandgoodwilloftherightfulexclusive 4. Modified exhaustion all respect
distributor. Such goodwill is protected by the law identicaltotheInternationalexhaustion
onunfaircompetition.(SolidTrianglev.Sheriff,G.R. except for the allowance of the
No.144309,Nov.23,2001) restriction of the extent of exhaustion
through explicit contractual terms.
Q:Whatisthedoctrineofexhaustion? (Carlos Correa,. Internationalization of
the Patent System and New
A: Also known as the doctrine of first sale, it Technologies. International Law
providesthatthepatentholderhascontrolofthe Journal,Vol.20.No.3,2002)
firstsaleofhisinvention.Hehastheopportunity
toreceivethefullconsiderationforhisinvention H.PATENTINFRINGEMENT
fromhissale.Hence,heexhaustshisrightsinthe
futurecontrolofhisinvention. Q:Whatconstitutesinfringementofpatent?

It espouses that the patentee who has already A:
soldhisinventionandhasreceivedalltheroyalty 1. Making, using, offering for sale, selling
andconsiderationforthesamewillbedeemedto or importing a patented product or a
have released the invention from his monopoly. product obtained directly or indirectly
The invention thus becomes open to the use of fromapatentedprocess;or
thepurchaserwithoutfurtherrestriction.(Adams 2. Use of a patented process without
v.Burke,84U.S.17,1873) authorization of the owner of the
patent(Sec.76,IPC)
Q:HowdoestheDoctrineExhaustionofapplyin
Philippinejurisdiction? Q:Whatarethetestsinpatentinfringement?

A: A:
GR:PatentrightsareExhaustedbyfirstsalein 1. Literal infringement Test Resort must
thePhilippines(Domesticexhaustion). behad,inthefirstinstance,towordsof
theclaim.Iftheaccusedmatterclearly
XPN:Excepthoweverondrugsandmedicines: falls within the claim, infringement is
first sale in any jurisdiction exhausts committed.
(Internationalexhaustion)(R.A.9502).
Minor modifications are sufficient to
Q:Whatarethedifferentkindsofexhaustion? put the item beyond literal
infringement.(Godinesv.CA,G.R.No.L
A: 97343,Sept.13,1993)
1. International exhaustion allows any
party to import into the national 2. Doctrine of Equivalents There is
territory a patented product from any infringement where a device
othercountryinwhichtheproductwas appropriates a prior invention by
placed on the market by the patent incorporating its innovative concept
holderoranyauthorizedparty. and, although with some modification
and change, performs substantially the
samefunctioninsubstantiallythesame
211

way to achieve substantially the same contributoryinfringer.Itmustbeproventhatthe
result.(Ibid.) product can only be used for infringement
purposes. If it can be used for legitimate
3. Economic interest test when the purposes,theactionshallnotprosper.
processdiscoverers economic interest
arecompromised,i.e.,whenotherscan Q: What are the remedies of the owner of the
import the products that result from patentagainstinfringers?
the process, such an act is said to be
prohibited. A:
1. Civil action for infringement The
Q:Doestheuseofapatentedprocessbyathird ownermaybringacivilaction withthe
person constitute an infringement when the appropriate Regional Trial Court to
allegedinfringerhassubstituted,inlieuofsome recover from infringer the damages
unessentialpartofthepatentedprocess,awell sustainedbytheformer,plusattorneys
knownmechanicalequivalent." fees and other litigation expenses, and
to secure an injunction for the
A: Yes, under the doctrine of mechanical protectionofhisrights.
equivalents, the patentee is protected from
colorable invasions of his patent under the guise 2. CriminalactionforinfringementIfthe
of substitution of some part of his invention by infringement is repeated, the infringer
some well known mechanical equivalent. It is an shall be criminally liable and upon
infringement of the patent, if the substitute conviction,shallsufferimprisonmentof
performsthesamefunctionandwaswellknown not less than six (6) months but not
at the date of the patent as a proper substitute morethanthree(3)yearsand/orafine
fortheomittedingredient.(Gsellv.YapJue,G.R. notlessthanP100,000.00butnotmore
No.L4720,Jan.19,1909) thanP300,000.00

Q:Whatismeantbyequivalentdevice? 3. Administrative remedy Where the
amount of damages claimed is not less
A: It is such as a mechanic of ordinary skill in than P200,000.00, the patentee may
construction of similar machinery, having the choose to file an administrative action
forms, specifications and machine before him, againsttheinfringerwiththeBureauof
could substitute in the place of the mechanism Legal Affairs (BLA). The BLA can issue
described without the exercise of the inventive injunctions, direct infringer to pay
faculty. patentee damages, but unlike regular
courts, the BLA may not issue search
Q: What is the doctrine of file wrapper and seizure warrants or warrants of
estoppel? arrest.

A: This doctrine balances the doctrine of Q: What are the limitations tothe civil/criminal
equivalents. Patentee is precluded from claiming action?
aspartofpatentedproductthatwhichhehadto
excise or modify in order to avoid patent office A:
rejection,andhemayomitanyadditionsthathe 1. No damages can be recovered for acts
was compelled to add by patent office of infringement committed more than
regulations. four (4) years before the filing of the
actionforinfringement.(Sec.79,IPC)
Q: What is the doctrine of contributory
infringement? 2. The criminal action prescribes in three
(3) years from the commission of the
A:Asidefromtheinfringer,anyonewhoactively crime.(Sec.84,IPC)
inducestheinfringementofapatentorprovides
the infringer with a component of a patented Q:Whocanfileanactionforinfringement?
product or of a product produced because of a
patented process knowing it to be especially A:
adaptedforinfringingthepatentedinventionand 1. The patentee or his successorsin
not suitable for substantial noninfringing use is interest may file an action for
liablejointlyandseverallywiththeinfringerasa infringement.(CreserPrecisionSystems,
212
MERCANTILELAWTEAM:
Inc. v. CA, G.R. No. 118708, Feb. 2, 1. TheDirectorofLegalAffairsmaygranta

1998) license to exploit a patented invention,
even without the agreement of the
2. Any foreign national or juridical entity patent owner, in favor of any person
who meets the requirements of Sec. 3 whohasshownhiscapabilitytoexploit
and not engaged in business in the theinvention(Sec.93,IPC).
Philippines,towhichapatenthasbeen
grantedorassigned,whetherornotitis 2. R.A. 9502 (Universally Accessible
licensed to do business in the Cheaper and Quality Medicines Act of
Philippines.(Sec.77,IPC) 2008)howeveramendedSec.93sothat
itistheDirectorGeneraloftheIPOwho
Q: What are the defenses in an action for maygrantalicensetoexploitpatented
infringement? invention under the grounds
enumeratedtherein.
A:
1. Invalidityofthepatent;(Sec.81,IPC); Note: Clarification either by legislation of
2. Any of the grounds for cancellation of judicial interpretation as to who has
patents: jurisdiction should be made to avoid
a. That what is claimed as the confusion. (Salao, Essential of Intellectual
inventionisnotneworpatentable Property Law: a Guidebook on Republic
b. That the patent does not disclose ActNo.8293andRelatedLaws,2008)
the invention in a manner
sufficiently clear and complete for Q: What are the grounds for compulsory
it to be carried out by any person licensingandtheperiodforfilingapetition?
skilledintheart;or
c. That the patent is contrary to A:
public order or morality. (Sec. 61, 1. Nationalemergency
IPC)
2. Where the public interest, at any time
I.LICENSING afterthegrantofthepatent

Q: What are the modes of obtaining license to 3. Whereajudicialoradministrativebody
exploitpatentrights? has determined that the manner of
exploitationbytheownerofthepatent
A: orhislicenseeisanticompetitiveatany
1. Voluntarylicensing(Sec.85,IPC)and timeafterthegrantofthepatent
2. Compulsorylicensing(Sec.93,IPC)
4. Incaseofpublicnoncommercialuseof
Q:Whatisvoluntarylicensing? the patent by the patentee, without
satisfactoryreasonatanytimeafterthe
A: The grant by the patent owner to a third grantofthepatent
person of the right to exploit a patented
invention. 5. If the patented invention is not being
worked in the Philippines on a
Q:Whataretherightsofalicensorinvoluntary commercial scale, although capable of
licensing? being worked, without satisfactory
reason after the expiration of 4 years
A:Intheabsenceofanyprovisiontothecontrary fromthedateoffilingoftheapplication
inthetechnologytransferarrangement,thegrant or 3 years from the date of the patent
of a license shall not prevent the licensor from whicheverislater.(Sec.93inrelationto
grantingfurtherlicensestothirdpersonnorfrom Sec.94)
exploiting the subject matter of the technology
transferarrangementhimself(Sec.89,IPC). 6. Where the demand for patented drugs
and medicines is not being met to an
Q:Whocangrantacompulsorylicense? adequate extent and on reasonable
terms, as determined by the Secretary
A: of the Department of Health (Sec. 10,
R.A.9502)

213

Q: Grounds for cancellation of the compulsory J.ASSIGNMENTANDTRANSMISSIONOFRIGHTS
license?
A: Q:Whataretheformsofassignment?
1. Groundforthegrantofthecompulsory
license no longer exists and is unlikely A:
torecur; 1. Total assignment of entire right, title
orinterestinandtothepatentandthe
2. Licensee has neither begun to supply inventioncoveredthereby.
the domestic market nor made serious 2. Partial
preparationtherefore; a. Separate rights assignment of a
specificright(ex:righttosell)b.
3. Licensee has not complied with the b. Pro Indiviso assignment of an
prescribedtermsofthelicense. aliquot part which results in co
ownership
Q:Cezarworksinacarmanufacturingcompany
owned by Joab. Cezar is quite innovative and Q:Howisthetransferofrightseffected?
loves to tinker with things. With the materials
andpartsofthecar,hewasabletoinventagas A:
saving device that will enable cars to consume 1. Byinheritanceorbequest
less gas. Francis, a coworker, saw how Cezar 2. Licensecontract
createdthedeviceandlikewise,cameupwitha
similar gadget, also using scrap materials and Q: What is the effect of an assignment of a
spare parts of the company. Thereafter, Francis patent?
filedanapplicationforregistrationofhisdevice
with the Bureau of Patents. Eighteen months A:Theassignmentworksasanestoppelsbydeed,
later, Cezar filed his application for the preventingtheassignorfromdenyingthenovelty
registration of his device with the Bureau of andutilityofthepatentedinventionwhensuedy
Patents. theassigneeforinfringement.

Q:Isthegassavingdevicepatentable?Explain. QWhatshouldbetheformofanassignment?

A: Yes because it is new, it involves an inventive A:
stepanditisindustriallyapplicable. 1. Inwriting
2. Acknowledged and certified before a
Q:Assumingthatitispatentable,whoisentitled notarypublicorotherofficerauthorized
tothepatent?What,ifany,istheremedyofthe toperformnotarialacts
losingparty? 3. RecordedintheIPO

A: Francis is entitled to the patent, because he Q: What is the effect if the assignment was not
hadtheearlierfilingdate.TheremedyofCezaris recordedintheIPO?
to file a petition in court for the cancellation of
thepatentofFrancisonthegroundthatheisthe A: A deed of assignment affecting title shall be
true and actual inventor, and ask for his void as against any subsequent purchaser or
substitutionaspatentee.(2005BarQuestion) mortgagee for valuable consideration and
without notice unless, it is so recorded in the
Q: Supposing Albert Einstein were alive today Office, within three (3) months from the date of
andhefiledwiththeIntellectualPropertyOffice said instrument, or prior to the subsequent
(IPO) an application for patent for his theory of purchaseormortgage.Evenwithoutrecordal,the
relativity expressed in the formula E=mc2. The instrumentsarebindingupontheparties.
IPO disapproved Einstein's application on the
ground that his theory of relativity is not Q: May a licensee maintain a suit for
patentable.IstheIPO'sactioncorrect? infringement?

A: Yes, the IPOs action is correct. Section 22 of A:
theIntellectualPropertyLawexpresslystatesthat GR: Only the patentees, his heirs, assignee,
discoveries, scientific theories and mathematical grantee or personal representatives may bring
methodsareamongthosematterswhicharenot anactionforinfringement.
patentable.(2006BarQuestion)
214
MERCANTILELAWTEAM:
XPN: If the licensing agreement provides that tradename in the Philippines and that it had
the licensee may bring an action for been using the same in its restaurant business.
infringement or if he was authorized to do so Shangrila Corporation counters that it is an
by the patentee through a special power of affiliate of an international organization which
attorney. has been using such logo and tradename
"Shangrila" for over 20 years. However,
III.TRADEMARKS Shangrila Corporation registered the tradename
and logo in the Philippines only after the suit
A.DEFINITIONOFMARKS,COLLECTIVEMARKS, wasfiled.
TRADENAMES
Whichofthetwocorporationshasabetterright
Q: What is a trademark and how does it differ tousethelogoandthetradename?Explain.
fromatradename?
A: S Development Corporation has a better right
A: Any visible sign capable of distinguishing the to use the logo and tradename, since it was the
goods(trademark)orservices(servicemark)ofan firsttoregisterthelogoandtradename.
enterprise.Atradenameisanameordesignation
identifyingordistinguishinganenterprise. AlternativeAnswer:
S Development Corporation has a better right to
TRADEMARK TRADENAME use the logo and tradename, because its
Anaturalorartificial certificate of registration upon which the
Goodsorservices
personwhodoes infringement case is based remains valid and
offeredbyaproprietor
businessandproduces subsistingforaslongasithasnotbeencancelled.
orenterpriseare
orperformsthegoods (ShangrilaInternationalHotelManagementv.CA,
designatedby
orservicesdesignated G.R. No. 111580, June 21, 2001) (2005 Bar
trademark(goods)or
bytrademarkorservice Question)
servicemarks(services).
mark.
Referstobusiness and Q: How does the international affiliation of
Referstothegoods.
itsgoodwill.
ShangrilaCorporationaffecttheoutcomeofthe
Acquiredonly by
Neednotberegistered. dispute?Explain.
registration.

A:SinceShangrilaCorporationisnottheownerof
Q:Whatisacollectivemark?
thelogoandtradenamebutismerelyanaffiliate
of the international organization which has been

A:A"collectivemark"orcollectivetradename"is
usingthemitisnottheowneranddoesnothave
amarkortradenameusedbythemembersofa
therightsofanowner.(Sec.147,IPC)
cooperative, an association or other collective

groupororganization.(Sec.40,R.A.166)
AlternativeAnswer:
The international affiliation of Shangrila

Q:Whatarethefunctionsoftrademark?
Corporationshallhavenoeffectontheoutcome
of the dispute.Section 8 of the Paris Convention

A:
provides that "there is no automatic protection
1. To point out distinctly the origin or
affordedanentitywhosetradenameisallegedto
ownership of the articles to which it is
be infringed through the use of that name as a
affixed.
trademark by a local entity." (Kabushi Kaisha

Isetan v. IAC, G.R. No. 75420, Nov. 15, 1991)
2. To secure to him who has been
(2005BarQuestion)
instrumental in bringing into market a

superiorarticleormerchandisethefruit
Q: What are the salient features of the Paris
ofhisindustryandskill
conventionoftrademarks?

3. To prevent fraud and imposition.
A:
(Etepha v. Director of Patents, G.R. No.
1. National Treatment Principle foreign
L20635,Mar.31,1966)
nationals are to be given the same

treatment in each of the member
Q: S Development Corporation sued Shangrila
countries as that country makes
Corporation for using the "S" logo and the
availableinitsowncitizens.
tradename"Shangrila".Theformerclaimsthatit

was the first to register the logo and the

215

2. Right of Priority any person who has Pilsen in Czechoslovakia. Pilsen is a primarily
duly filed registration for trademark geographically descriptive word, hence, non
shall enjoy a right of priority of 6 registrable and not appropriable by any beer
months(Rule203,TrademarkRules) manufacturer (Asia Brewery, Inc. v. CA, G.R. No.
103543,July5,1993).
3. ProtectionagainstUnfairCompetition
Q: Who may file an opposition to trademark
4. Protection of Tradenames protected registrationandonwhatground?
in all countries without obligation of
filingorregistration. A: Any person who believes that he would be
damagedbytheregistrationofamarkmay,upon
5. ProtectionofWellKnownMarks paymentoftherequiredfeeandwithinthirty(30)
days after the publication referred to in
B.ACQUISITIONOFOWNERSHIPOFMARK Subsection 133.2, file with the Office an
oppositiontotheapplication.(Sec.134,IPC)
Q:Howaremarksacquired?
Q: Laberge, Inc., manufactures and markets
A:Marksareacquiredsolelythroughregistration. aftershave lotion, shaving cream, deodorant,
(Sec.122,IPC) talcum powder and toilet soap, using the
trademark PRUT, which is registered with the
Q:Whatmarksmayberegistered? Phil. Patent Office. Laberge does not
manufacture briefs and underwear and these
A: Any word, name, symbol, emblem, device, items are not specified in the certificate of
figure, sign, phrase, or any combination thereof registration. JG who manufactures briefs and
exceptthoseenumeratedunderSection123,IPC. underwear, wants to know whether, under our
laws, he can use and register the trademark
Q: What are the requirements for a mark to be PRUTE for his merchandise. What is your
registered? advice?

A: A: Yes, he can use and register the trademark
1. A visible sign (not sounds or scents); PRUTE for his merchandise. The trademark
and registeredinthenameofLabergeInc.coversonly
2. Capable of distinguishing ones goods aftershave lotion, shaving cream, deodorant,
andservicesfromanother. talcumpowderandtoiletsoap.Itdoesnotcover
briefsandunderwear.Thelimitofthetrademark
Q:Whatisthedoctrineofsecondarymeaning? isstatedinthecertificateissuedtoLabergeInc.It
doesnotincludebriefsandunderwearwhichare
A: This doctrine is to the effect that a word or different products protected by Laberges
phrase originally incapable of exclusive trademark. JG can register the trademark
appropriationwithreferencetoanarticleonthe PRUTE to cover its briefs and underwear
market, because it is geographical or otherwise (FabergeInc.v.IAC,G.R.No.71189,Nov.4,1992)
descriptive,mayneverthelessbeusedexclusively (1994BarQuestion)
by one producer with reference to his article so
long as in that trade and to that branch of the C.ACQUISITIONANDOWNERSHIPOFTRADE
purchasing public, the word or phrase has come NAME
tomeanthatthearticlewashisproduct.(G.and
C.MerriamCo.v.Saalfield,198F.369,373,cited Q:Howaretradenamesacquired?
in Ang v. Teodoro, G.R. No. L48226, Dec. 14,
1942) A: Trade names or business names are acquired
through adoption and use. Registration is not
Q: Is there an infringement of trademark when required.(Sec.165,IPC)
two similar goods use the same words, PALE
PILSEN?

A: No, because pale pilsen are generic words
descriptive of the color (pale) and of a type of
beer(pilsen),whichisalightbohemianbeerwith
strong hops flavor that originated in the City of
216
MERCANTILELAWTEAM:
D.NONREGISTRABLEMARKS designate the goods or services in

everyday language and established
Q:Whatmarksmaynotberegistered? tradepractice

A: 10. Consists exclusively that may serve in
1. Consists of immoral, deceptive or trade to designate the kind, quality,
scandalous matter or falsely suggest a quantity, intended purpose, value,
connection with persons, institutions, geographical origin, time or production
beliefs,ornationalsymbols of the goods or rendering of the
services, or other characteristics of the
2. Consists of the flag or coat of arms or goodsorservices
other insignia of the Philippines or any
of its political subdivisions, or of any 11. Consists of shapes that may be
foreignnation necessitated by technical factors or by
the nature of the goods themselves or
3. Consistsofaname,portraitorsignature factorsthataffecttheirintrinsicvalue
identifying a particular living individual
except by his written consent, or the 12. Consists of color alone, unless defined
name, signature, or portrait of a byagivenform;or
deceased President of the Philippines,
during the life of his widow except by 13. Is contrary to public order or morality.
writtenconsentofthewidow (Sec.123)

4. Identical with a registered mark E.PRIORUSEOFMARKASAREQUIREMENT
belonging to a different proprietor or a
mark with an earlier filing or priority Q:Istheprioruseofthemarkstillarequirement
date,inrespectof: forregistration?
1. Thesamegoodsorservices,or
2. Closely related goods or services, A: No. Actual prior use in commerce in the
or Philippineshasbeenabolishedasaconditionfor
3. If it nearly resembles such a mark theregistrationofatrademark.(RA8293)
as to be likely to deceive or cause
confusion; Q:Whenisnonuseexcused?

5. Isidenticalwithaninternationallywell A:
known mark, whether or not it is 1. If caused by circumstances arising
registered here, used for identical or independentlyofthewilloftheowner.
similargoodsorservices Lackoffundsisnotanexcuse.
2. Ausewhichdoesnotalteritsdistinctive
6. Isidenticalwithaninternationallywell character though the use is different
known mark which is registered in the fromtheforminwhichitisregistered.
Philippines with respect to nonsimilar 3. Use of mark in connection with one or
goods or services. Provided, that the more of the goods/services belonging
interestsoftheowneroftheregistered to the class in which the mark is
mark are likely to be damaged by such registered.
use 4. Theuseofamarkbyacompanyrelated
totheapplicant/registrant.
7. Is likely to mislead the public as to the 5. The use of a mark by a person
nature, quality, characteristics or controlled by the registrant. (Section
geographical origin of the goods or 152,IPC)
services

8. Consists exclusively of signs that are
generic for the goods or services that
theyseektoidentify

9. Consists exclusively of signs that have
become customary or usual to
217

F.TESTTODETERMINECONFUSINGSIMILARITY misleading similarity in general appearance, not
BETWEENMARKS similarity of trademarks. (Converse Rubber Co. v.
Jacinto Rubber & Plastics Co., G.R. Nos. 27425,
Q: What are the tests in determining whether 30505,Apr.28,1980)(1996BarQuestion)
thereisatrademarkinfringement?
Q: What is the socalled related goods
A: principle?
1. Dominancy test Focuses on the
similarity of the prevalent features of A:Goodsarerelatedwhenthey;1)belongtothe
the competing marks. If the competing same class or have the same descriptive
trademark contains the main or properties; 2) when they possess the same
essential or dominant features of physical attributes or essential characteristics
another, and confusion is likely to withreferencetotheirform,composition,texture
result, infringement takes place. (Asia orquality.
Brewery v. CA, G.R. No. 103543, 5 July
1993) Q:Whatistheruleofidemsonans?

2. Totality or holistic test Confusing A: Two names are said to be "idem sonantes" if
similarity is to be determined on the the attentive ear finds difficulty in distinguishing
basis of visual, aural, connotative them when pronounced. (Martin v. State, 541
comparisons and overallimpressions S.W.2d605)
engendered by the marks in
controversyastheyareencounteredin Note:Similarityofsoundissufficienttorulethatthe
themarketplace. two marks are confusingly similar when applied to
merchandise of the same descriptive properties.
Note: The dominancy test only relies on visual (MarvexCommercialv.DirectorofPatent,G.R.No.
comparisons between two trademarks whereas the L19297,Dec.22,1966)
totality or holistic test relies not only on the visual
but also on the aural and connotative comparisons Q: What are the types of confusion that arise
and overall impressions between the two from the use of similar or colorable imitation
trademarks. (Societe Des Produits Nestl, S.A. v. CA, marks?
G.R.No.112012,Apr.4,2001)
A:
Q: N Corporation manufactures rubber shoes 1. Confusionofgoods(productconfusion);
under the trademark Jordann which hit the and
Philippine market in 1985, and registered its 2. Confusion of business (source or origin
trademark with the Bureau of Patents, confusion). (McDonalds Corporation v.
Trademarks and Technology in 1990. PK L.C.BigMakBurger,Inc.,etal.,G.R.No.
Company also manufactures rubber shoes with 143993,Aug.18,2004)
the trademark Javorski which it registered
withBPTTTin1978.In1992,PKCoadoptedand Note: While there is confusion of goods when the
copied the design of N Corporations Jordann productsarecompeting,confusionofbusinessexists
rubber shoes, both as to shape and color, but when the products are noncompeting but related
retained the trademark Javorski on its enoughtoproduceconfusionofaffiliation.
products. May PK Company be held liable to N
Co?Explain. Q:Whatiscolorableimitation?

A: PK Co may be liable for unfairly competing A: Such a close or ingenious imitation as to be
against N Co. By copying the design, shape and calculatedtodeceiveordinarypersons,orsucha
color of N Corporations Jordann rubber shoes resemblance to the original as to deceive an
and using the same in its rubber shoes ordinary purchaser giving such attention as a
trademarked Javorski, PK is obviously trying to purchaser usually gives, as to cause him to
pass off its shoes for those of N. It is of no purchase the one supposing it to be the other.
moment that the trademark Javorski was (Societe des Produits Nestl, S.A. v. CA, G.R. No.
registered ahead of the trademark Jordann. 112012,Apr.4,2001)
Priorityinregistrationisnotmaterialinanaction
for unfair competition as distinguished from an
actionforinfringementoftrademark.Thebasisof
anactionforunfaircompetitionisconfusingand
218
MERCANTILELAWTEAM:
G.WELLKNOWNMARKS Q: What are the rights of a registered mark

owner?
Q: What constitutes an internationally well
knownmark? A:
1. Protection against reproduction, or
A: imitation or unauthorized use of the
1. Considered by the competent authority mark(infringementofmark)
of the Philippines to be wellknown 2. Tostopentryofimportedmerchandise
international and in the Philippines as into the country containing a mark
the mark of a person other than the identical or similar to the registered
applicantorregistrant mark

2. Need not be used or registered in the 3. Totransferorlicenseoutthemark.
Philippines

3. Need not be known by the public at I.USEBYTHIRDPARTIESOFNAMES,ETC.
large but only by relevant sector of the SIMILARTOREGISTEREDMARK
public.
Q: What is the effect of use of Indications by
Q: What does the law provide as regards third parties for purposes other than those for
internationallywellknownmarks? whichthemarkisused?

A: A:Registrationofthemarkshallnotconferonthe
GR: Prohibition on subsequent registration registered owner the right to preclude third
does not include services and goods of parties from using bona fide their names,
differentnatureorkind. addresses,pseudonyms,ageographicalname,or
exact indications concerning the kind, quality,
XPN: quantity, destination, value, place of origin, or
1. Iftheinternationallywellknownmarkis timeofproductionorofsupply,oftheirgoodsor
not registered in the Philippines, the services.
application for registration of a
subsequent or similar mark can be J.INFRINGEMENTANDREMEDIES
rejected only if the goods or services
specified in the application are similar Q:Whatistrademarkinfringement?
to those of the internationally well
knownmark A: The use without consent of the trademark
owner of any a) reproduction, b) counterfeit, c)
2. If the internationally wellknown mark copy or d) colorable imitation of any registered
is registered in the Philippines, the mark or tradename in connection with the sale,
application for registration of a offering for sale, or advertising of any goods,
subsequent or similar mark can be business or services on or in connection with
refused even if the goods or services which such use is likely to cause confusion or
specified in the application are not mistake or to deceive purchasers or others as to
identical or similar to those of the thesourceororiginofsuchgoodsorservices,or
internationallywellknownmark identity of such business; or reproduce,
counterfeit, copy or colorably imitate any such
H.RIGHTSCONFERREDBYREGISTRATION markortradenameandapplysuchreproduction,
counterfeit,copyorcolorablelimitationtolabels,
Q: What is the duration of a certificate of signs, prints, packages, wrappers, receptacles or
trademarkregistration? advertisements intended to be used upon or in
connectionwithsuchgoods,businessorservices
A:10years,renewableforaperiodofanother10 (Esso Standard Eastern v. CA, G.R. No. L29971,
years. Each request for renewal must be made Aug.31,1982)
within6monthsbeforeoraftertheexpirationof
theregistration.

219

Q: What are the elements to be established in presumed if a letter R within a circle is
trademarkinfringement? appended) and stop him permanently
fromusingthemark.
A:
1. Thevalidityofthemark 2. Criminaltheownerofthetrademark
2. Theplaintiffsownershipofthemark may ask the court to issue a search
3. The use of the mark or its colorable warrant and in appropriate cases,
imitationbytheallegedinfringerresults remediesavailableshallalsoincludethe
in likelihood of confusion. seizure, forfeiture and destruction of
(McDonaldsCorporationv.L.C.BigMak the infringing goods and of any
Burger, Inc., G.R. No. 143993, Aug 18, materials and implements the
2004) predominant use of which has been in
thecommissionoftheoffense.
Q:Whatismeantbynoncompetinggoods?
3. Administrative This remedy is the
A: Those which, though they are not in actual sameasinpatentinfringementcases.If
competition, are so related to each other that it the amount of damages claimed is not
mightreasonablybeassumedthattheyoriginate less than P200,000.00, the registrant
fromonemanufacturer. maychoosetoseekredressagainstthe
Noncompetinggoods may also be those which, infringer by filing an administrative
beingentirelyunrelated,couldnotreasonablybe action against the infringer with the
assumedtohaveacommonsource.Inthecaseof BureauofLegalAffairs.
related goods, confusion of business could arise
outoftheuseofsimilarmarks;inthelattercase Q: How is the amount of damages in a civil
of nonrelated goods, it could not.The vast actionforinfringementascertained?
majority of courts today follow the modern
theory or concept of "related goods"which the A: The owner of a trademark which has been
court has likewise adopted and uniformly infringedisentitledtoactualdamages:
recognized and applied. (Esso Standard Eastern,
Inc.v.CA,G.R.No.L29971,Aug.31,1982) 1. The reasonable profit which the
complaining party would have made,
Q: Is there infringement even if the goods are hadthedefendantnotinfringedhissaid
noncompeting? rights;or
2. Theprofitwhichthedefendantactually
A: madeoutofinfringement;or
GR:No. 3. The court may award as damages a
reasonable percentage based upon the
XPN:Ifitpreventsthenaturalexpansionofhis amountofgrosssalesofthedefendant
business and, second, by having his business of the value of the services in
reputation confused with and put at the connection with which the mark or
mercy of the second user. (Ang v. Teodoro, tradenamewasissued.
G.R.No.L48226,Dec.14,1942)
Q:Whatcourthasjurisdictionoverviolationsof
Q: What are the remedies of the owner of the intellectualpropertyrights?
trademarkagainstinfringers?
A: It is properly lodged with the Regional Trial
A: Court even if the penalty therefore is
1. Civil both civil and criminal actions imprisonmentoflessthansixyears,orfrom2to
may be filed with the Regional Trial 5 years and a fine ranging from P50,000 to
Courts. The owner of the registered P200,000.
mark may ask the court to issue a
preliminary injunction to quickly Note: R.A. 8293 and R.A. 166 are special laws
prevent infringer from causing damage conferring jurisdiction over violations of intellectual
to his business. Furthermore, the court property rights to the Regional Trial Court. They
willrequireinfringertopaydamagesto shouldthereforeprevailoverR.A.No.7691,whichis
the owner of the mark provided a general law. (Samson v. Daway, G.R. No. 160054
defendant is shown to have had notice 55,July21,2004)
oftheregistrationofthemark(whichis
220
MERCANTILELAWTEAM:
Q: What are the limitations on the actions for Q:Whoareguiltyofunfaircompetition?

infringement?
A:
A: 1. Anyperson,whoissellinghisgoodsand
1. Right of prior user registered mark gives them the general appearance of
shall be without affect against any goods of another manufacturer or
person who, ingood faith, before filing dealer, either as to the goods
orprioritydate,wasusingthemarkfor themselves or in the wrapping of the
purposes of his business. (Sec 159.1, packages in which they are contained,
IPC) or the devices or words thereon, or in
any other feature of their appearance,
2. Relief against publisher injunction which would be likely to influence
against future printing against an purchasers to believe that the goods
innocentinfringerwhoisengagedsolely offered are those of a manufacturer or
in the business of printing the mark. dealer, other than the actual
(Sec.159.2,IPC) manufacturer or dealer, or who
otherwise clothes the goods with such
3. Relief against newspaper injunction appearance as shall deceive the public
against the presentation of advertising and defraud another of his legitimate
matter in future issues of the trade, or any subsequent vendor of
newspaper, magazine or in electronic such goods or any agent of any vendor
communications in case the engagedinsellingsuchgoodswithalike
infringement complained of is purpose;
contained in or is part of paid
advertisement in such materials. (Sec. 2. Any person who by any artifice, or
159.3,IPC) device, or who employs any other
means calculated to induce the false
K.UNFAIRCOMPETITION belief that such person is offering the
services of another who has identified
Q: What distinguishes infringement of suchservicesinthemindofthepublic;
trademarkfromunfaircompetition? or

A: 3. Any person who shall make any false
INFRINGEMENTOF UNFAIR statementinthecourseoftradeorwho
TRADEMARK COMPETITION shall commit any other act contrary to
Thepassingoffofones good faith of a nature calculated to
Unauthorizeduseofa
goodsasthoseof discreditthegoods,businessorservices
trademark.
another. ofanother.(Sec.168.3)
Fraudulentintentis Fraudulentintentis
unnecessary. essential. Q:Isthelawonunfaircompetitionbroaderthan
Priorregistrationofthe Registrationisnot thelawontrademark?
trademarkisa necessary.(DelMonte
prerequisitetothe Corp.v.CA,G.R.No. A:Yes.Forthelatter(trademarkinfringement)is
action. 78325,Jan.23,1990)
more limited but it recognizes a more exclusive
right derived from the trademark adoption and
Q: What is the right protected under unfair registration by the person whose goods or
competition? businessisfirstassociatedwithit.Hence,evenif
one fails to establish his exclusive property right
A:Apersonwhohasidentifiedinthemindofthe to a trademark, he may still obtain relief on the
publicthegoodshemanufacturesordealsin,his ground of his competitors unfairness or fraud.
business or services from those of others, Conduct constitutes unfair competition if the
whetherornotaregisteredmarkisemployed,has effectistopassoffonthepublicthegoodsofone
apropertyrightinthegoodwillofthesaidgoods, man as the goods of another. (Mighty
business or services so identified, which will be Corporation v. E. & J. Gallo Winery, G.R. No.
protected in the same manner as other property 154342,July14,2004)
rights.(Sec.168.1,IPC)

221

Q:Whataretheelementsofanactionforunfair Q: What are the limitations on use of trade
competition? nameorbusinessname?

A: A:Apersonmaynot:
1. Confusing similarity in the general
appearanceofthegoods;and 1. Use any name or designation contrary
topublicorderormorals
Note:Theconfusingsimilaritymayormay
notresultfromsimilarityinthemarks,but 2. Use a name if it is liable to deceive
may result from other external factors in trade circles or the public as to the
the packaging or presentation of the nature of the enterprise identified by
goods. thatname.(Sec.165.1,IPC)

2. Intenttodeceivethepublicanddefraud 3. Subsequentlyuseatradenamelikelyto
acompetitor. misleadthepublicasathirdparty.(Sec.
165.2,b,IPC)
Note: The intent to deceive and defraud
may be inferred from the similarity in 4. Copy or simulate the name of any
appearance of the goods as offered for domestic product (for imported
saletothepublic.Actualfraudulentintent
products).
need not be shown. (McDonalds

Corporationv.L.C.BigMakBurger,Inc.,et
5. Copy or simulate a mark registered in
al.,G.R.No.143993,Aug.18,2004)
accordance with the provisions of IPC

(forimportedproducts).
Q: The NBI found that SG Inc.is engaged in the

reproduction and distribution of counterfeit
6. Use mark or trade name calculated to
"playstation games" and thus applied with the
induce the public to believe that the
Manila RTC warrants to search respondent's
article is manufactured in the
premises in Cavite. RTC granted such warrants
Philippines,orthatitismanufacturedin
andthus,theNBIservedthesearchwarrantson
any foreign country or locality other
the subject premises. SG Inc. questioned the
than the country or locality where it is
validity of the warrants due to wrong venue
infactmanufactured.
since the RTC of Manila had no jurisdiction to

issue a search warrant enforceable in Cavite. Is
Note: Items 4, 5 and 6 only applies to
thecontentionofSGInc.correct?
imported products and those imported

articles shall not be admitted to entry at
A: No, unfair competition is a transitory or any customhouse of the Philippines (Sec.
continuingoffenseunderSection168ofRepublic 166,IPC).
ActNo.8293.Assuch,petitionermayapplyfora

searchwarrantinanycourtwhereanyelementof
Q:Howisthechangeintheownershipofatrade
theallegedoffensewascommitted,includingany
namemade?
of the courts within Metro Manila and may be
validly enforced in Cavite. (Sony Computer
Entertainment Inc. v. Supergreen Inc. G.R. No. A: It shall be made with the transfer of the
161823,Mar.22,2007) enterprise or part thereof identified by that
name.(Sec.165.4,IPC)
L.TRADENAMESORBUSSINESSNAMES
M.COLLECTIVEMARKS
Q:Whatisatradenameorbusinessname?
Q:Whatisacollectivemark?
A: Any individual name or surname, firm name,
device nor word used by manufacturers, A:A"collectivemark"orcollectivetradename"
industrialists, merchants, and others to identify isamarkortradenameusedbythemembersof
their businesses, vocations or occupants a cooperative, an association or other collective
(Converse rubber Corp. vs. Universal Rubber groupororganization.(Sec.40,R.A.166)
Products, GR No. L27425, L30505, April 28,
1980).

222
MERCANTILELAWTEAM:
Q:Whatshouldanapplicationforregistrationof c. If its registration was obtained

acollectivemarkcontain? fraudulently or contrary to the
provisionsoftheIPC;
A: d. Iftheregisteredmarkisbeingused
1. Theapplicationshalldesignatethemark by, or with the permission of, the
asacollectivemark registrant so as to misrepresent
2. Accompanied by a copy of the thesourceofthegoodsorservices
agreement,ifany,governingtheuseof onorinconnectionwithwhichthe
thecollectivemark(Sec.167.2,IPC) markisused;
e. Nonuse of the mark within the
Q:Whatarethegroundsforthecancellationof Philippines, without legitimate
collectivemarks? reason, for an uninterrupted
periodof3years.
A:
1. The Court shall cancel the registration IV.COPYRIGHTS
of a collective mark if the person
requesting the cancellation proves that Q:Whatiscopyright?
only the registered owner uses the
mark, A: A right over literary and artistic works which
are original intellectual creations in the literary
2. Or that he uses or permits its use in and artistic domain protected from the moment
contravention of the agreements ofcreation.(Sec.171.1,IPC)
referredtoinSubsection166.2,
A.BASICPRINCIPLES
3. Or that he uses or permits its use in a
mannerliabletodeceivetradecirclesor Q:Whataretheelementsofcopyrightability?
the public as to the origin or any other
commoncharacteristicsofthegoodsor
servicesconcerned(Sec167.3). A:
1. OriginalityMusthavebeencreatedby
Note: The registration of a collective mark, or an the authors own skill, labor, and
application therefor shall not be the subject of a judgment without directly copying or
licensecontract. evasivelyimitatingtheworkofanother.
(Ching Kian Chuan v. CA, G.R. No.
N.CRIMINALPENALTIES 130360,Aug.15,2001)

Q: What are the criminal penalties for unfair
2. Expression Must be embodied in a
competition, infringement, false designation of
medium sufficiently permanent or
originandfalserepresentations?
stable to permit it to be perceived,
reproduced or communicated for a

A: A penalty of imprisonment from 2 years to
periodmorethanatransitoryduration.
5and a fine ranging from P50,000 to P200,000

(Sec.170,IPC.)
Q:Whataretheelementsoforiginality?

Q:Cantrademarkregistrationbecancelled?
A:
1. It is independently created by the

A:Yes,byanypersonwhobelievesthathewillbe
author,and
damagedbytheregistrationofthemark:
2. It possesses some minimal degree of
creativity
1. Within 5 years, from the date of the

registrationofthemark;or
Q:Whendoescopyrightvest?

2. Atanytime;
A: Works are protected from the time of their
a. Iftheregisteredmarkbecomesthe
creation, irrespective of their mode or form of
generic name for the goods or
expression,aswellasoftheircontent,qualityand
services, or a portion thereof, for
purpose.
whichitisregistered;

b. Ifthemarkhasbeenabandoned;

223

B.COPYRIGHTABLEWORKS Q:P&Dwasgrantedacopyrightonthetechnical
drawings of light boxes as "advertising display
Q:Whatarecopyrightableworks? units". SMI, however, manufactured similar or
identical to the light box illustrated in the
A: technical drawings copyrighted by P&D for
1. LiteraryandArtisticWorks leasingouttodifferentadvertisers.Wasthisan
BOLDMANGASPAPCO infringement of P&Ds copyright over the
technicaldrawings?
a. Books, pamphlets, articles and
otherwritings A: No, P&Ds copyright protection extended only
b. Lectures, sermons, addresses, tothetechnicaldrawingsandnottothelightbox
dissertations prepared for Oral itself. The light box was not a literary or artistic
delivery, whether or not reduced piece which could be copyrighted under the
inwritingorothermaterialform copyright law. If SMI reprinted P&Ds technical
c. Letters drawings for sale to the public without license
d. Dramatic,choreographicworks from P&D, then no doubt they would have been
e. Musicalcompositions guilty of copyright infringement. Only the
f. WorksofArt expression of an idea is protected by copyright,
g. PeriodicalsandNewspapers not the idea itself. If what P&D sought was
h. Works relative to Geography, exclusivity over the light boxes, it should have
topography, architecture or instead procured a patent over the light boxes
science itself. (Pearl and Dean Inc. v. Shoe Mart Inc., GR
i. WorksofAppliedart No.148222,Aug.15,2003)
j. Works of a Scientific or technical
character Q: What is the difference between collection of
k. Photographicworks workandcollectivework?
l. Audiovisual works and
cinematographicworks A:
m. Pictorial illustrations and COLLECTIONOFWORK COLLECTIVEWORK
advertisements
n. Computerprograms;and Itisnotnecessarythat Thereisanagreement
o. Other literary, scholarly, scientific thereisanagreement. wherebytheauthors
Individualcontribution boundthemselvesnotto
andartisticworks.(Sec.172.1,IPC)
iscapableofcopyright beidentifiedwiththe

protection. work.
2. DerivativeWorks

Q: Juan Xavier wrote and published a story
a. Dramatizations, translations,
similar to an unpublished copyrighted story of
adaptations, abridgements,
ManolingSantiago.Itwas,however,conclusively
arrangements, and other
proventhatJuanXavierwasnotawarethatthe
alterations of literary or artistic
story of Manoling Santiago was protected by
works;
copyright. Manoling Santiago sued Juan Xavier

for infringement of copyright. Is Juan Xavier
b. Collectionsofliterary,scholarly,or
liable?
artistic works and compilations of

dataandothermaterialswhichare
A: Yes. Juan Xavier is liable for infringement of
original by reason of the selection
copyright. It is not necessary that Juan Xavier is
or coordination or arrangement of
aware that the story of Manoling Santiago was
theircontents.(Sec.173)
protected by copyright. The work of Manoling

Santiago is protected from the time of its
Note:DerivativeWorksshallbeprotected
as new works, provided that such new creation.(1998BarQuestion)
work shall not affect the force of any
subsisting copyright upon the original Note: There will still be originality sufficient to
worksemployedoranypartthereof,orbe warrantcopyrightprotectioniftheauthor,through
construedtoimplyanyrighttosuchuseof hisskillandeffort,hascontributedadistinguishable
theoriginalworks,ortosecureorextend variation from the older works. In such a case, of
copyright in such original works. (Sec. course, only those parts which are new are
173.2,IPC) protected by the new copyright. Hence, in such a
case,thereisnocaseofinfringement.JuanXavieris
224
MERCANTILELAWTEAM:
no less an author because others have preceded prosecutor to dismiss the case for lack of
him. probable cause. Was the decision of the DOJ
Secretarycorrect?
C.NONCOPYRIGHTABLEWORKS
A:Yes,theformatofashowisnotcopyrightable.
Q:Whatarethesubjectsnotprotected? Thecopyrightlawenumeratestheclassesofwork
entitled to copyright protection.The format or
A: mechanicsofatelevisionshowisnotincludedin
1. Idea, procedure, system, method or the list of protected works. For this reason, the
operation, concept, principle, discovery protection afforded by the law cannot be
ormeredataassuch extended to cover them. Copyright, in the strict
2. News of the day and other items of senseoftheterm,ispurelyastatutoryright.Itis
pressinformation a new or independent right granted by the
3. Any official text of a legislative, statute, and not simply a preexisting right
administrativeorlegalnature,aswellas regulatedbythestatute.Beingastatutorygrant,
anyofficialtranslationthereof the rights are only such as the statute confers,
4. Pleadings and may be obtained and enjoyed only with
5. Decisions of courts and tribunals this respect to the subjects and by the persons, and
refers to original decisions and not to on terms and conditions specified in the statute.
annotated decisions such as the SCRA The copyright does not extend to the general
orSCADasthesealreadyfallunderthe concept or format of its dating game show.
classificationofderivativeworks,hence (Joaquinv.Drilon,G.R.No.108946,Jan.28,1999)
copyrightable
6. Any work of the Government of the Q: Rural is a certified public utility providing
Philippines telephone service to several communities in
Manila. It obtains data for the directory from
GR: Conditions imposed prior the subscribers, who must provide their names and
approval of the government agency or addresses to obtain telephone service. Feist
officewhereintheworkiscreatedshall Publications, Inc., is a publishing company that
be necessary for exploitation of such specializes in areawide telephone directories
work for profit. Such agency or office, covering a much larger geographic range than
may, among other things, impose as directories such as Rural's. Feist extracted the
conditionthepaymentofroyalties. listingsitneededfromRuralssdirectorywithout
itsconsent.Aredirectoriescopyrightable?
XPN: No prior approval or conditions
shall be required for the use of any A: No, directories are not copyrightable and
purpose of statutes, rules and therefore the use of them does not constitute
regulations, and speeches, lectures, infringement. The Intellectual Property Code
sermons, addresses, and dissertations, mandates originality as a prerequisite for
pronounced,read,orrenderedincourts copyright protection. This requirement
of justice, before administration necessitates independent creation plus a
agencies,indeliberativeassembliesand modicum of creativity. Since facts do not owe
inmeetingsofpubliccharacter.(Section their origin to an act of authorship, they are not
176,IPC) original, and thus are not copyrightable. A
compilation is not copyrightable per se, but is
7. TV programs, format of TV programs copyrightableonlyifitsfactshavebeen"selected,
(Joaquinv.Drilon,G.R.No.108946,Jan. coordinated, or arranged in such a way that the
28,1999) resulting work as a whole constitutes an original
8. Systemsofbookkeeping;and work of authorship." Thus, the statute envisions
9. Statutes. that some ways of selecting, coordinating, and
arranging data are not sufficiently original to
Q: BJ Productions, Inc. (BJPI) is the trigger copyright protection. Even a compilation
holder/grantee of a copyright of Rhoda and that is copyrightable receives only limited
Me, a dating game show aired from 1970 to protection, for the copyright does not extend to
1977. Subsequently, however, RPN aired the facts contained in the compilation. (Feist
gameshowItsaDate,whichwasproducedby Publications, Inc. v. Rural Telephone Service Co.,
IXL Productions, Inc. (IXL). As such, an 499U.S.340)
informationforcopyrightinfringementwasfiled
against RPN. The DOJ Secretary directed the

225

D.RIGHTSOFACOPYRIGHTOWNER own creation or in a distorted
versionofhiswork.(Sec.193,IPC)
Q:Whatisthepresumptionofauthorship?
3. Droit de suite (Right to proceeds in
A:Thenaturalpersonwhosenameisindicatedon subsequent transfers or follow up
aworkintheusualmannerastheauthorshall,in rights) This is an inalienable right of
the absence of proof to the contrary, presumed theauthororhisheirstoreceivetothe
to be the author of the work. This is applicable extent of 5% of the gross proceeds of
even if the name is a pseudonym, where the thesaleorleaseofaworkofpaintingor
pseudonymleavesnodoubtastoidentityofthe sculpture or of the original manuscript
author.(Sec.219.1,IPC) ofawriterorcomposer,subsequentto
itsfirstdispositionbytheauthor.
The person or body corporate, whose name
appears on the audiovisual work in the usual Thefollowingworksarenotcovered:
manner shall, in the absence of proof to the a. Prints
contrary, be presumed to be the maker of said b. Etchings
work.(Sec.219.2,IPC) c. Engravings
d. Worksofappliedart
Q:Whataretherightsofanauthor? e. Similar works wherein the author
primarily derives gain from the
A: proceeds of reproductions. (Sec.
1. EconomicrightsTherighttocarryout, 201,IPC)
authorizeorpreventthefollowingacts:
Q: ABC is the owner of certain musical
a. Reproduction of the work or compositions among which are the songs
substantialportionthereof entitled: "Dahil Sa Iyo", "Sapagkat Ikaw Ay
b. Carryout derivative work Akin,""SapagkatKamiAyTaoLamang"and"The
(dramatization, translation, Nearness Of You. Soda Fountain Restaurant
adaptation, abridgement, hired a combo with professional singers to play
arrangement or other and sing musical compositions to entertain and
transformationofthework) amuse customers. They performed the above
c. First distribution of the original mentioned compositions without any license or
andeachcopyoftheworkbysale permission from ABC to play or sing the same.
or other forms of transfer of Accordingly,ABCdemandedfromSodaFountain
ownership payment of the necessary license fee for the
d. Rentalright playing and singing of aforesaid compositions
e. Publicdisplay but the demand was ignored. ABC filed an
f. Publicperformance infringement case against Soda Fountain. Does
g. Other communications to the the playing and singing of musical compositions
public. inside an establishment constitute public
performanceforprofit?
2. Moral rights For reasons of
professionalism and propriety, the A:Yes.ThepatronsoftheSodaFountainpayonly
authorhastheright: for the food and drinks and apparently not for
a. To require that the authorship of listening to the music, but the music provided is
the works be attributed to him for the purpose of entertaining and amusing the
(attributionright) customers in order to make the establishment
b. To make any alterations of his moreattractiveanddesirable.Fortheplayingand
work prior to, or to withhold it singing the musical compositions involved, the
frompublication combo was paid as independent contractors by
c. Righttopreserveintegrityofwork, Soda Fountain. It is therefore obvious that the
objecttoanydistortion,mutilation expenses entailed thereby are added to the
orothermodificationwhichwould overhead of the restaurant which are either
be prejudicial to his honor or eventually charged in the price of the food and
reputation;and drinksortotheoveralltotalofadditionalincome
d. To restrain the use of his name producedbythebiggervolumeofbusinesswhich
withrespecttoanyworknotofhis the entertainment was programmed to attract.
Consequently, it is beyond question that the
226
MERCANTILELAWTEAM:
playing and singing of the combo in defendant Note: The person/s to be charged with the
appellee'srestaurantconstitutedperformancefor posthumous enforcement of moral rights shall be
profit. (FILSCAP v. Tan, G.R., No. L36402, Mar. named in writing to be filed with the National
16,1987) Library. In default of such person or persons, such
enforcement shall devolve upon either the author's
Q:MalangSantosdesignedforAmbassadorNeri heirs,andindefaultoftheheirs,theDirectorofthe
forhispersonalchristmasgreetingsfortheyear NationalLibrary.(ibid.)
1959 a christmas card depicting a Philippine
rural Christmas time scene. The following year Q:Whataretheexceptionstomoralrights?
McCullough Printing Company, without the
knowledge and authority of Santos, displayed A:
the very design in its album of Christmas cards a. Absentanyspecialcontractatthetime
andoffereditforsale.Santosfiledforcopyright creatorlicenses/permitsanothertouse
infringement contending that the publication of hiswork,thefollowingaredeemednot
hisdesignwaslimitedasitwasintendedonlyfor to contravene creators moral rights,
Ambassador Neris use, hence, it could not be provided they are done in accordance
used for public consumption. Is there copyright withreasonablecustomarystandardsor
infringement? requisitesofthemedium:
a. Editing
A:No.Iftherewereaconditionthatthecardsare b. Arranging
to be limitedly published, then Ambassador Neri c. Adaptation
would be the aggrieved party, and not Santos. d. Dramatization
And even if there was such a limited publication e. Mechanical and electric
or prohibition, the same was not shown on the reproduction
faceofthedesign.Whenthepurposeisalimited
publication, but the effect is general publication, b. Complete destruction of work
irrevocable rights thereupon become vested in unconditionallytransferredbycreators.
thepublic,inconsequenceofwhichenforcement (Sec.197,IPC)
of the rights under a copyright becomes
impossible. (Malang v. McCullough Printing Q:Canmoralrightsbewaived?
Company,G.R.No.L19439,Oct.31,1964)
A:
Q: May an author be compelled to perform his GR: Moral rights can be waived in writing,
contract? expresslysostatingsuchwaiver.

A:Anauthorcannotbecompelledtoperformhis XPN:Eveninwriting,waiverisnotvalidif:
contracttocreateaworkorforthepublicationof 1. Usethenameoftheauthor,titleofhis
his work already in existence. However, he may work, or his reputation with respect to
be held liable for damages for breach of such any version/adaptation of his work,
contract.(Sec.195,IPC) which because of alterations,
substantially tend to injure
Q:Whatisthenatureofmoralrights? literary/artistic reputation of another
author
A: These are personal rights independent from
theeconomicrights.Beingapersonalright,itcan 2. Use name of author in a work that he
onlybegiventoanaturalperson.Hence,evenif didnotcreate
he has licensed or assigned his economic rights,
he continues to enjoy the abovementioned Q:Whataretheneighboringrights?
moral rights. (Amador, Intellectual Property
Fundamentals,2007) A: These are the rights of performers, producers
of sound recording and broadcasting
Q:Whatisthetermofmoralrights? organizations.

A: It shall last during the lifetime of the author
and for fifty (50) years after his death and shall
notbeassignableorsubjecttolicense.(Sec.198,
IPC)

227

Q:Whatisthescopeofaperformersrights? Q: When are performers entitled to additional
remunerationontheirperformance?
A: Performers shall enjoy the following exclusive
rights: A: The performer shall be entitled to an
additionalremunerationequivalenttoatleast5%
1. Asregardstheirperformances,theright of the original compensation he received for the
ofauthorizing: first communication or broadcast in every
a. The broadcasting and other communication to the public or broadcast of a
communication to the public of performance subsequent to the first
theirperformance;and communication or broadcast, unless otherwise
b. The fixation of their unfixed providedinthecontract.(Sec.206,IPC)
performance.
Q:Whatisthescopeoftherightsofproducers
2. The right of authorizing the direct or onsoundrecordings?
indirect reproduction of their
performancesfixedinsoundrecordings, A: Producers of sound recordings shall enjoy the
inanymannerorform; followingexclusiverights:
1. The right to authorize the direct or
3. The right of authorizing the first public indirect reproduction of their sound
distributionoftheoriginalandcopiesof recordings, in any manner or form; the
their performance fixed in the sound placing of these reproductions in the
recording through sale or rental or marketandtherightofrentalorlending
otherformsoftransferofownership;
2. The right to authorize the first public
4. Therightofauthorizingthecommercial distributionoftheoriginalandcopiesof
rental to the public of the original and their sound recordings through sale or
copies of their performances fixed in rental or other forms of transferring
sound recordings, even after ownership;and
distribution of them by, or pursuant to
theauthorizationbytheperformer;and 3. The right to authorize the commercial
rental to the public of the original and
5. The right of authorizing the making copies of their sound recordings, even
available to the public of their after distribution by them by or
performancesfixedinsoundrecordings, pursuant to authorization by the
bywireorwirelessmeans,insuchaway producer.(Sec.208,IPC)
that members of the public may access
themfromaplaceandtimeindividually Note: Fair use and limitations to copyrights shall
chosenbythem.(Sec.203,IPC) apply mutatis mutandis to performers. (Sec. 210,
IPC)
Q:Whatarethemoralrightsofperformers?
Q: What is the scope of the rights of
A: The performer, shall, as regards his live aural broadcastingorganizations?
performances or performances fixed in sound
recordings,havetherighttoclaimtobeidentified A: Broadcasting organizations shall enjoy the
as the performer of his performances, except exclusive right to carry out, authorize or prevent
wheretheomissionisdictatedbythemannerof anyofthefollowingacts:
theuseoftheperformance,andtoobjecttoany 1. Therebroadcastingoftheirbroadcasts
distortion,mutilationorothermodificationofhis 2. The recording in any manner, including
performances that would be prejudicial to his the making of films or the useof video
reputation. tape, of their broadcasts for the
purposeofcommunicationtothepublic
Q:Whenareperformersrightslost? oftelevisionbroadcastsofthesame
3. The use of such records for fresh
A:Onceaperformerhasauthorizedbroadcasting transmissions or for fresh recording.
orfixationofhisperformance.(Sec205,IPC) (Sec.211,IPC)

Note: Fair use and limitations to copyrights shall
applymutatismutandistoperformers.(Ibid.)

228
MERCANTILELAWTEAM:
Q:Whenareneighboringrightsnotapplicable? irrespective of the nationality or

residenceoftheauthors.(Sec.221,
A: IPC)
1. Exclusive use of a natural person for
ownpersonalpurposes 2. Forperfomers
2. Short excerpts for reporting current a. Performers who are nationals of
events thePhilippines;
3. Soleuseforthepurposeofteachingor b. Performers who are not nationals
forscientificresearch of the Philippines but whose
4. Fairuseofthebroadcast performances:
i. Take place in the Philippines;
Q: What are the term of protection given to or
performers, producers and broadcasting ii. Are incorporated in sound
organizations? recordings that are protected
underIPC;or
A: iii. Which has not been fixed in
1. For performances not incorporated in sound recording but are
recordings,50yearsfromtheendofthe carried by broadcast
year in which the performance took qualifying for protection
place;and underIPC.(Sec.222,IPC)

2. For sound or image and sound 3. Ofsoundrecordings
recordings and for performances a. Soundrecordingstheproducersof
incorporatedtherein,50yearsfromthe which are nationals of the
end of the year in which the recording Philippines;and
tookplace. b. Sound recordings that were first
published in the Philippines. (Sec.
3. Incaseofbroadcasts,thetermshallbe 223,IPC)
20 years from the date the broadcast
took place. Theextended termshall be 4. Forbroadcast
applied only to old works with a. Broadcasts of broadcasting
subsisting protection under the prior organizations the headquarters of
law.(Sec.215,IPC) which are situated in the
Philippines;and
Q: To whom are the rights granted to b. Broadcasts transmitted from
copyrightable works applicable (points of transmitters situated in the
attachment)? Philippines.(Sec.224,IPC)

A: Note: The provisions of IPC shall also apply to
1. For literary and artistic works and works, performers, producers of sound
derivativeworks recordings and broadcasting organizatins that
a. Works of authors who are are to be protected by virtue of and in
nationalsof,orhavetheirhabitual accordance with any international convention
residencein,thePhilippines; or other international agreement to which the
Philippines is a party. (Sec. 221.2 and 224.2,
b. Audiovisualworkstheproducerof
IPC)
which has his headquarters or

habitual residence in the
E.RULESONOWNERSHIPOFCOPYRIGHT
Philippines;

c. Works of architecture erected in
Q:Whoownscopyright?
the Philippines or other artistic

worksincorporatedinabuildingor
A:
other structure located in the
1. Author Original literary and artistic
Philippines;
works.(Sec.178.1,IPC)
d. Works first published in the

Philippines;and
2. CoauthorsWorksofjointauthorship;
e. Works first published in another
in the absence of agreement, their
country but also published in the
rightsshallbegovernedbytheruleson
Philippines within thirty days,
coownership.

229

Q:Distinguishcollectiveworkfromjointwork.
Note: If work of joint authorship consists
ofpartsthatcanbeusedseparately,then A:
the author of each part shall be the
COLLECTIVEWORK JOINTWORK
originalownerofthecopyrightinthepart
thathehascreated.(Sec.178.2,IPC) Elementsremain
Separateelementsmerge
unintegratedand
intoaunifiedwhole.
3. In the course of employment, the disparate.
copyrightshallbelongto: Workcreatedby2or
morepersonsatthe
a. The employee, if not a part of his initiativeandunderthe
Workpreparedby2or
regular duties even if the directionofanother
moreauthorswiththe
employee uses the time, facilities with
intentionthattheir
and materials of the employer. theunderstandingthat
contributionsbemerged
(Sec.178.3,IPC) itwillbedisclosedby
intoinseparableor
thelatterunderhis
b. The employer, if the work is the independentpartsofthe
ownnameandthatof
result of the performance of his unitarywhole.
thecontributionsof
regularlyassigned duties, unless naturalpersonswill
there is an agreement, express or NOTbeidentified
implied,tothecontrary.(ibid.) Eachauthorshallenjoy Jointauthorsshallbeco
copyrighttohisown owners.Coownership
4. The person who commissioned the contribution shallapply.
work shall own the work but the Theworkwillbe
copyrighttheretoshallremainwiththe attributedtothe
creator In cases of work pursuant to personunderwhose Jointauthorsshallbe
commission, unless there is a written initiativeanddirection bothentitledtothe
stipulation to the contrary. (Sec. 178.4, itwascreatedunless acknowledgmentas
IPC) thecontributor authorsofthework.
expresslyreserveshis
5. GR: Producer, the author of the right.
scenario, the composer of the music,
thefilmdirector,andtheauthorofthe Q: BR and CT are noted artists whose paintings
worksoadaptedaudiovisualwork. are highly prized by collectors. Dr. DL
commissionedthemtopaintamuralatthemain
XPN: The producers shall exercise the lobby of his new hospital for children. Both
copyrighttoanextentrequiredforthe agreed to collaborate on the project for a total
exhibition of the work in any manner. fee of two million pesos to be equally divided
(Sec.178.5,IPC) between them. It was also agreed that Dr. DL
hadtoprovideallthematerialsforthepainting
6. Writerinrespectofletterssubjectto and pay for the wages of technicians and
theprovisionsofArticle723,CivilCode. laborers needed for the work on the project.
(Sec.178.6,IPC) Assume that the project is completed and both
BR and CT are fully paid the amount of P2M as
7. GR: Publishers deemed artists' fee by DL. Under the law on intellectual
representativesoftheauthorincaseof property, who will own the mural? Who will
anonymousandpseudonymousworks. ownthecopyrightinthemural?Why?Explain.

XPN: When the contrary appears or A: Under Sec. 178.4 of the Intellectual Property
wherethepseudonymoradoptedname Code,incaseofcommissionedwork,thecreator
leaves no doubt as to the authors (in the absence of a written stipulation to the
identity;orauthordiscloseshisidentity. contrary) owns the copyright, but the work itself
belongs to the person who commissioned the
8. Incaseofcollectiveworkscontributor creation. Accordingly, the mural belongs to DL.
is deemed to have waived his right However, BR and CT own the copyright, since
unless he expressly reserves it. (Sec. thereisnostipulationtothecontrary.(1995Bar
196,IPC) Question)

230
MERCANTILELAWTEAM:
Q: What is the principle of automatic 1. Performance of a work, once it has

protection? been lawfully made accessible to the
public, if done privately and free of
A: Works are protected by the sole fact of their charge or for a charitable or religious
creation irrespective of their content, quality or institutionorsociety.
purpose. Such rights are conferred from the
momentofcreation. 2. The making of quotations from a
published work if they are compatible
Q:Whatisthetermofprotectionofcopyright? with fair use and only to the extent
justifiedforthepurpose.
A:
3. Communication to the public by mass
media of articles on current political,
TYPEofWORK DURATION social, economic, scientific or religious
Lifetimeofthecreator topic, lectures, addresses and other
Singlecreation andfor50yearsafter worksofthesamenature
hisdeath
Lifetimeofthelast 4. Aspartofreportsofcurrentevents(e.g.
survivingcocreatorand music played or tunes on the occasion
Jointcreation ofasportingeventandsuchtuneswere
for50yearsafterhis
death. pickedupduringanewcoverageofthe
50yearsafterthedate event).
oftheirfirstpublication;
exceptwherebefore 5. For teaching purposes, provided that
theexpirationofsaid the source and of the name of the
period,theauthors author, if appearing in the work, are
Anonymousor
identityisrevealedoris mentioned.
pseudonymouswork
nolongerindoubt,the
1sttwomentionedrules 6. Recording made in educational
shallapply;orif
institutions of a work included in a
unpublished,50years
broadcast for the use of such
fromtheirmaking.
educational institutions, provided that
Workofanappliedart
suchrecordingmustbedeletedwithina
ofanartisticcreation
reasonable period after they were first
withutilitarianfunctions
broadcast.
orincorporatedina

usefularticlewhether
25yearsfromthetime 7. Themakingofephemeralrecordingsby
madebyhandor
ofthemaking. a broadcasting organization by means
producedonan
industrialscale of its own facilities and for use in its
Audiovisualworks ownbroadcast.

includingthose

producedbyprocess 8. Theusemadeofaworkbyorunderthe
50yearsfromdateof
analogousto directionorcontrolofthegovernment,
publicationand,if
photographyorany by the National Library or by
unpublished,fromthe
processformaking educational, scientific or professional
dateofmaking.
audiovisualrecordings institutions where such use is in the
Lifetimeoftheauthor public interest and is compatible with
NewspaperArticle and50yearsafter.(Sec. fairuse.
213,IPC)
9. The public performance of a work, in a
F.LIMITATIONSONCOPYRIGHT place where no admission fee is
charged.
Q: What are the general limitations on
copyright? 10. Public display of the original or a copy
of the work not made by means of a
A: The following acts shall not constitute film,slide,televisionimageorotherwise
infringementofcopyright: on screen or by means of any other
device or process (e.g. Public display
231

using posters mounted on walls and materials;
displayboards). d. A computer program except as
providedinSection189;and
11. Anyusemadeofaworkforthepurpose e. Any work in cases where
of any judicial proceedings or for the reproduction would unreasonably
giving of professional advice by a legal conflict with a normal exploitation
practitioner. of the work or would otherwise
unreasonably prejudice the
Q:Whataretheotherlimitationsoncopyright? legitimate interests of the author.
(Sec.187,IPC)
A:
1. The fair use of a copyrighted work for 4. Any library or archive whose activities
criticism, comment, news reporting, are not for profit may, without the
teaching including multiple copies for authorizationoftheauthorofcopyright
classroom use, scholarship, research, owner, make a single copy of the work
and similar purposes is not an byreprographicreproduction:
infringement of copyright. (Sec. 185, a. Where the work by reason of its
IPC) fragile character or rarity cannot
belenttouserinitsoriginalform;
Note: Decompilation, which is the b. Where the works are isolated
reproduction of the code and translation articles contained in composite
oftheformsofthecomputerprogramto works or brief portions of other
achieve the interoperability of an published works and the
independentlycreatedcomputerprogram reproductionisnecessarytosupply
with other programs, may also constitute them, when this is considered
fair use (e.g. the software program for expedient, to persons requesting
Windows 7 will be disassembled by a
theirloanforpurposesofresearch
skilled programmer in order to
or study instead of lending the
understand much of the structure and
operationoftheprogram).
volumesorbookletswhichcontain
them;and
2. Copyrightinaworkofarchitectureshall c. Wherethemakingofsuchacopyis
includetherighttocontroltheerection in order to preserve and, if
of any building which reproduces the necessary in the event that it is
wholeorasubstantialpartofthework lost, destroyed or rendered
eitherinitsoriginalformorinanyform unusable, replace a copy, or to
recognizably derived from the original, replace, in the permanent
provided,thatthecopyrightinanysuch collectionofanothersimilarlibrary
work shall not include the right to or archive, a copy which has been
control the reconstruction or lost, destroyed or rendered
rehabilitation in the same style as the unusable and copies are not
original of a building to which that availablewiththepublisher.
copyrightrelates.(Sec.186,IPC)
But it shall not be permissible to
3. Theprivatereproductionofapublished produce a volume of a work published
work in a single copy, where the in several volumes or to produce
reproduction is made by a natural missingtomesorpagesofmagazinesor
person exclusively for research and similar works, unless the volume, tome
private study, shall be permitted, orpartisoutofstock.(Sec.188,IPC)
withouttheauthorizationoftheowner
of copyright in the work but shall not 5. The reproduction in one backup copy
extendtothereproductionof: or adaptation of a computer program
a. Aworkofarchitectureintheform shall be permitted, without the
ofbuildingorotherconstruction; authorizationoftheauthorof,orother
b. An entire book, or a substantial owner of copyright in, a computer
part thereof, or of a musical work program, by the lawful owner of that
in graphic form by reprographic computer program, provided, the copy
means; oradaptationisnecessaryfor:
c. A compilation of data and other
232
MERCANTILELAWTEAM:
a. The use of the computer program Q: What are the factors that should be
inconjunctionwithacomputerfor consideredinordertodeterminefairuse?
thepurpose,andtotheextent,for
which the computer program has A:
beenobtained;and 1. The purpose and character of the use,
b. Archival purposes, and, for the including whether such use is of a
replacementofthelawfullyowned commercial nature or is for nonprofit
copy of the computer program in educationalpurpose;
the event that the lawfully 2. Thenatureofthecopyrightedwork;
obtained copy of the computer 3. The amount and substantiality of the
program is lost, destroyed or portion used in relation to the
renderedunusable.(Sec.187,IPC) copyrightedworkasawhole;and
4. Theeffectoftheuseuponthepotential
6. Theimportationofacopyofaworkby market for or value of the copyrighted
an individual for his personal purposes work.
shall be permitted without the
authorizationoftheauthorof,orother Note: The fact that a work is unpublished shall
owner of copyright in, the work under not by itself bar a finding of fair use if such
thefollowingcircumstances: finding is made upon consideration of all the
a. When copies of the work are not abovefactors.(Sec.182.2,IPC)
availableinthePhilippinesand:
i. Not more than one copy at one Q:Whatisthemustcarryrule?
time is imported for strictly
individualuseonly;or A: Mustcarry rule is another limitation on
ii. The importation is by authority copyright. It obligates operators to carry the
of and for the use of the signals of local channels within their respective
PhilippineGovernment;or systems.Thisistogivethepeoplewideraccessto
iii. The importation, consisting of more sources of news, information, education,
notmorethanthreesuchcopies sports event and entertainment programs other
orlikenessesinanyoneinvoice, than those provided for by mass media and
is not for sale but for the use afforded television programs to attain a well
only of any religious, charitable, informed, wellversed and culturally refined
or educational society or citizenry and enhance their socioeconomic
institution duly incorporated or growth. (ABSCBN Broadcasting Corporation v.
registered, or is for the Philippine Multimedia System, G.R. No. 175769
encouragement of the fine arts, 70,Jan.19,2009)
or for any state school, college,
university, or free public library Q: Ford contracted with H&R Publishing to
inthePhilippines. publish his unwritten memoirs. The agreement
gave H&R the exclusive first serial right to
b. When such copies form parts of license prepublication excerpts. As the memoirs
libraries and personal baggage werenearingcompletion,H&R,asthecopyright
belonging to persons or families holders, negotiated a prepublication licensing
arrivingfromforeigncountriesand agreement with Time Magazine. Shortly before
arenotintendedforsale,provided, the Time article's scheduled release, an
that such copies do not exceed unauthorized source provided The Nation
three.(Sec.190,IPC) MagazinewiththeunpublishedFordmanuscript.
An editor of The Nation produced an article
Q:Whatisthedoctrineoffairuse? which consisted of verbatim quotes of
copyrighted expression taken from the
A:Fairusepermitsasecondaryusethatserves manuscriptwhichwerethegistofthememoirs.
the copyright objective of stimulating productive As a result, Time refused to pay H&R as agreed
thought and public instruction without upon in the prepublication agreement. H&R
excessively diminishing the incentives for brought an action for infringement against
creativity. Nation Magazine. Nation magazine contended
that the article it published constitutes fair use
and thus it cannot be held liable for
infringement.Isthecontentioncorrect?

233

A: No, the article does not constitute fair use.
Taking into account the factors as especially A:Itmaybeassignedinwholeorinpart.Within
relevant in determining fair use, leads to the the scope of the assignment, the assignee is
conclusionthattheuseinquestionherewasnot entitled to all the rights and remedies which the
fair. First of all, the purpose or character of the assignor had with respect to the copyright. (Sec.
use was commercial (to scoop a competitor), 180.1,IPC)
meaning that The Nation's use was not a good
faith use of fair use in simply reporting news. Q:Iscopyrightsimilarwiththematerialobject?
Also, although the verbatim quotes in question
were an insubstantial portion of the Ford A:No,thecopyrightisdistinctfromtheproperty
manuscript, they qualitatively embodied Mr. inthematerialobjectsubjecttoit.Consequently,
Ford's distinctive expression, and played a key the transfer or assignment of the copyright shall
roleintheinfringingarticle.Andlastly,theeffect not itself constitute a transfer of the material
of the use on the potential market for the value object. Nor shall a transfer or assignment of the
of the copyrighted work was also great, because solecopyorofoneorseveralcopiesofthework
the Nation's liberal use of verbatim excerpts imply transfer or assignment of the copyright.
posed substantial potential for damage to the (Sec.181,IPC)
marketability of first serialization rights in the
copyrighted work. (Harper & Row v. Nation Q: What are the requisites for a transfer of
Enterprises,471U.S.539,1985) copyrighttotakeeffect?

Q:Whatarepublishedworks? A:
1. Ifintervivos,mustbeinwriting;and
A: Those works which, with the consent of the 2. Filed in National Library upon payment
authors,aremadeavailabletothepublicbywire ofprescribedfees.(Sec.182,IPC)
orwirelessmeansinsuchawaythatmembersof
the public may access these works from a place Q: Is filing of the assignment or license of
and time individually chosen by them: provided, copyrightamandatoryrequirement?
that availability of such copies has been such, as
to satisfy the reasonable requirement of the A: No, Section 182 uses the permissive word
public, having regard to the nature of the work. may in reference to the filing of the deed of
(Sec.171.7,IPC) assignment or transfer of copyright, this filing
should not be understood as mandatory for
Q: What is the difference between public validity and enforceability. The filing is entirely
performance and communication to the public optional for the parties and may be useful only
ofaperformance? for evidentiary and notification purposes.
(Amador, Intellectual Property Fundamentals,
A: 2007)

COMMUNICATIONSTO Q:Whatisthelimitationregardingsubmissionof
PUBLIC
THEPUBLICOFA a literary, photographic or artistic work to a
PERFORMANCE
PERFORMANCE newspaper, magazine or periodical for
Performanceata publication?
Thetransmissiontothe
placeoratplaces
public,byanymedium,
wherepersons A: Unless a greater right is expressly granted,
otherwisethanby
outsidethenormal suchsubmissionshallconstituteonlyalicenseto
broadcasting,ofsoundsof
circleofafamilyand makeasinglepublication.(Sec.180.3,IPC)
aperformanceorthe
thatfamilysclosest
representationsofsounds
socialacquaintances Note:Iftwoormorepersonsjointlyownacopyright
fixedinasoundrecording.
areorcanbepresent. or any part thereof, neither of the owners shall be
Thecommunicationcanbe entitled to grant licenses without the prior written
Itisperformedata
accessedthroughwiredor consentoftheotherownerorowners.(Ibid.)
specifictimeand
wirelessmeansatatime
place.(e.g.The
andplaceconvenientto Q:Whatiscopyrightinfringement?
PacquiaoClottey
theviewer(e.g.The
MatchinDallasTexas
PacquiaoClotteyMatch
Stadium) A: It is the doing by any person, without the
watchedviaYouTube)
consent of the owner of the copyright, of

anything the sole right to do which is conferred
Q:Mayacopyrightbetransferred/assigned?
bystatuteontheownerofthecopyright.Theact
234
MERCANTILELAWTEAM:
ofliftingfromanothersbooksubstantialportions
of discussions and examples and the failure to Q: What are the available remedies in case of
acknowledge the same is an infringement of copyrightinfringement?
copyright. (Habana v. Robles, G.R.
No.131522,July19,1999) A:
1. Injunction
Q:Whatdoessubstantialreproductionmean? 2. Damages, including legal costs and
other expenses, as he may have
A: It is not necessarily required that the entire incurredduetotheinfringementaswell
copyrightedwork,orevenalargeportionofit,be as the profits the infringer may have
copied. If so much is taken that the value of the madeduetosuchinfringement
original work is substantially diminished, there is 3. Impoundingduringthependencyofthe
an infringement of copyright and to an injurious action sales invoices and other
extent,theworkisappropriated.Itisnodefense documentsevidencingsales
that the pirate did not know whether or not he 4. Destruction without any compensation
was infringing any copyright; he at least knew allinfringingcopies
that what he was copying was not his, and he 5. Moral and exemplary damages (Sec.
copied at his peril. In cases of infringement, 216.1);or
copying alone is not what is prohibited. The 6. Seizure and impounding of any article,
copying must produce an injurious effect. which may serve as evidence in the
(Habana v. Robles, G.R. No. 131522, July 19, courtproceedings.(Sec.216.2)
1999)
Q: What are the criminal penalties in case of
Q:Whatisplagiarism? copyrightinfringement?

A:Itisthepracticeofclaimingorimplyingoriginal A:
authorship of (or incorporating material from) 1. Imprisonment of one (1) year to three
someoneelseswrittenorcreativework,inwhole (3) years plus a fine ranging from Fifty
or in part, into ones own without adequate thousand pesos (P50,000) to One
acknowledgment. hundred fifty thousand pesos
(P150,000)forthefirstoffense.
Q: What is the difference between copyright 2. Imprisonment of three (3) years and
infringementandplagiarism? one (1) day to six (6) years plus a fine
A: ranging from One hundred fifty
COPYRIGHT thousand pesos to Five hundred
PLAGIARISM
INFRINGEMENT thousand (P500,000) for the second
Theunauthorizeduseof offense.
copyrightedmaterialina 3. Imprisonment of six (6) years and one
Theuseofanothers
mannerthatviolatesoneof daytonine(9)yearsplusafineranging
information,language,
thecopyrightowners from Five hundred thousand pesos
orwriting,whendone
exclusiverights,suchasthe (P500,000) to P1,500,000 for the third
withoutproper
righttoreproduceor offense.
acknowledgmentof
performthecopyrighted
theoriginalsource.
work,ortomakederivative
4. In all cases, subsidiary imprisonment in
worksthatbuilduponit.
casesofinsolvency.
Copyrightinfringementisa

verybroadtermthat
describesavarietyofacts. Q:Whatisaffidavitevidence?
Plagiarismisspecificas
Itmaybeduplicationofa
itrefersonlytousing A:Anaffidavitmadebeforethenotarypublicin
work,rewritingapiece,
someoneelseswork actions for infringement, reciting the facts
performingawrittenwork
withoutproper requiredtobestatedundertheIPC.(Sec.216.1)
ordoinganythingthatis
acknowledgement.
normallyconsideredtobe
theexclusiverightofthe Note:Asaprimafacieproof,theaffidavitshiftsthe
copyrightholder. burden of proof to the defendant, to prove the
ownershipofthecopyrightedwork.
Publicdocumentscan
Thereisnocopyright
beplagiarizedsolong
infringementonpublic
asitisnot
documents.
acknowledged.
235

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UST GOLDEN NOTES 2011

7. Anything which is Contrary to public tothepatentshallbelongtotheperson

authorization, exercised any of the rights Q:Whatiftheground/sforcancellationrelateto

registration is not the inventor or his

1. The subject matter of the industrial

to a patent, he may within 3 months after such

3. Request the application to be refused;

property rights in that country, shall 2. Regional exhaustion allows the

Inc. v. CA, G.R. No. 118708, Feb. 2, 1. TheDirectorofLegalAffairsmaygranta

of the international organization which has been

The international affiliation of Shangrila

of the dispute.Section 8 of the Paris Convention

D.NONREGISTRABLEMARKS designate the goods or services in

G.WELLKNOWNMARKS Q: What are the rights of a registered mark

Q: What are the limitations on the actions for Q:Whoareguiltyofunfaircompetition?

Q:Whatshouldanapplicationforregistrationof c. If its registration was obtained

reproduced or communicated for a

1. It is independently created by the

Q:Whenareneighboringrightsnotapplicable? irrespective of the nationality or

Q: What is the principle of automatic 1. Performance of a work, once it has

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