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Intellectual Property Laws

Undisclosed information
INTELLECTUAL PROPERTY RIGHTS IN GENERAL
1. Is a secret in the sense that it is not, as a body
1. Copyright and Related Rights; or in precise configuration and assembly of
2. Trademarks and Service Marks; components, generally known among, or readily
accessible to persons within the circles that
3. Geographic indications; normally deal with the kind of information in
4. Industrial designs; question.

5. Patents; 2. Has commercial value because it is a secret

6. Layout designs (Topographies) of Integrated 3. Has been subjected to reasonable steps under
Circuits; the circumstances, by the person lawfully in
control of the information, to keep it a secret
7. Protection of Undisclosed Information (TRIPS). (Article 39, TRIPS Agreement).
 Undisclosed information or trade secrets
DIFFERENCES BETWEEN COPYRIGHTS, are of a privileged nature. The protection of
TRADEMARKS, AND PATENT industrial secrets is inextricably linked to the
advancement of our economy and fosters
INTELLECTUAL DEFINITION healthy competition in trade
PROPERTIES

Trademark Any visible sign capable of PATENTS


distinguishing the goods Patents – a set of exclusive rights conferred by the
(trademark) or services (service State to an inventor or his legal successor, for a limited
mark) of an enterprise and shall period of time to exclude others from making, using,
include a stamped or marked selling or importing the invention within the territory of
container of goods. the country that grants the patent, in exchange for the
disclosure of the invention to the public.
Tradename The name or designation
identifying or distinguishing an
enterprise. PATENTABLE INVENTIONS

Copyright Literary and artistic works which Patentable inventions – Any technical solution of a
are original intellectual creations problem in any field of human activity which is new,
in the literary and artistic domain involves an inventive step and is industrially applicable. It
protected from the moment of their may be, or may relate to, a product, or process, or an
creation. improvement of any of the foregoing.

Patentable Any technical solution of a PRODUCT PATENT PROCESS PATENT


Inventions problem in any field of human
activity which is new, involves an The right to make, use, sell The right to restrain,
inventive step and is industrially and import the product. prevent or prohibit any
applicable. unauthorized person or
entity from using the
process, and from
manufacturing, dealing in,
TECHNOLOGY TRANSFER ARRANGEMENTS using, selling or offering for
Technology transfer arrangement – Contracts or sale, or importing any
agreements involving the transfer of systematic product obtained directly or
knowledge for the manufacture of a product, the indirectly from such
application of the process, or rendering of a service process.
including management contracts; and the transfer,
assignment or licensing of all forms of intellectual
property rights, including licensing of computer software Conditions for patentability (NIA)
except computer software developed for mass market.
1. Novelty – An invention shall not be considered
 Technology transfer arrangement is in the new if it forms part of a prior art (Sec. 23, IPC).
nature of a Voluntary License Contract.
2. Inventive step –if, having regard to prior art, it
o It is a contract between an intellectual is not obvious to a person skilled in the art at
property right owner (licensor) and a the time of the filing date or priority date of the
second party (licensee), authorizing the application claiming the invention.
latter to commercially exploit the same
intellectual property right under
specified terms and conditions.
3. Industrially Applicable – An invention that can the inventor by a third party
be produced and used in any industry (Sec. 27, which obtained the information
IPC). directly or indirectly from the
inventor;
 A third party which obtained the information
Prior art
directly or indirectly from the inventor (Sec. 25,
1. Everything which has been made available IPC).
to the public anywhere in the world, before
The burden of proving want of novelty is on him who
the filing date or the priority date of the
avers it and the burden is a heavy one which is met only
application claiming the invention
by clear and satisfactory proof which overcomes every
2. The whole contents of a published reasonable doubt
application, filed or effective in the Philippines,
with a filing or priority date that is earlier
than the filing or priority date of the Inventive step
application.
 GR: An invention involves an inventive step if,
a. Provided, that the application which has having regard to prior art, it is not obvious to a
validly claimed the filing date of an person skilled in the art at the time of the filing
earlier application under Section 31 of date or priority date of the application claiming
the IPC, there shall be a prior art with the invention (Sec. 26, IPC).
effect as of the filing date of such
o XPN: In the case of drugs and
earlier application:
medicines, there is no inventive step if
b. Provided further, that the applicant or the invention results from the mere
the inventor identified in both discovery of a new form or new
applications are not one and the same. property of a known substance which
does not result in the enhancement of
the known efficacy of that substance.
Coverage of patents
1. Invention – creation of an object which does not
Test of non-obviousness - If any person possessing
exist in nature; it requires novelty, inventive
ordinary skill in the art was able to draw the inferences
step and industrial application for patentability.
and he constructs that the supposed inventor drew from
2. Utility Model - any technical solution of a prior art, then the latter did not really invent.
problem in any field of human activity which is
new and industrially applicable. It may be, or
may relate to, a product, or process, or an Person of ordinary skill
improvement of any of the aforesaid. It is
A person of ordinary skill is one who is presumed to:
sometimes referred to as a device or useful
object. 1. Be an ordinary practitioner aware of what was
common general knowledge in the art at the
3. Industrial Design – the utility value or
relevant date.
ornamental/aesthetic aspect of a useful article.
2. Have knowledge of all references that are
sufficiently related to one another and to the
Rules on public disclosure pertinent art and to have knowledge of all arts
reasonably pertinent to the particular problems
 GR: When a work has already been made
with which the inventor was involved.
available to the public, it shall be non-patentable
for absence of novelty. 3. Have had at his disposal the normal means and
capacity for routine work and experimentation
 XPNs: Non-prejudicial disclosure – the
disclosure of information contained in the
application during the 12-month period before
Other forms of patentable inventions
the filing date or the priority date of the
application if such disclosure was made by: 1. Industrial design– Any composition of lines or
colors or any three-dimensional form, whether
o The inventor;
or not associated with lines or colors. Provided
o A patent office and the information was that such composition or form gives a special
contained: appearance to and can serve as pattern for an
industrial product or handicraft (Sec. 112, IPC).
 In another application filed by
the inventor and should have NOTE: Generally speaking, an industrial design
not have been disclosed by the is the ornamental or aesthetic aspect of a useful
office, or article (Amador , 2007).
 In an application filed without 1. Integrated circuit – A product, in its final form,
the knowledge or consent of or an intermediate form, in which the elements,
at least one of which is an active elements and OWNERSHIP OF A PATENT RIGHT TO A PATENT
some of all of the interconnections are integrally
Persons entitled to a patent
formed in and or on a piece of material, and in
which is intended to perform an electronic 1. Inventor, his heirs, or assigns (Sec 28, IPC).
function.
2. Joint invention – Jointly by the inventors (Sec.
2. Layout design/topography – The three 28, IPC).
dimensional disposition, however expressed, of
3. Two or more persons invented separately and
the elements, at least one of which is an active
independently of each other – To the person
element, and of some or all of the
who filed an application ;
interconnections of an integrated circuit, or such
a three-dimensional disposition prepared for an 4. Two or more applications are filed – the
integrated circuit intended for manufacture. applicant who has the earliest filing date or, the
Registration is valid for 10 years without renewal earliest priority date. First to file rule (Sec. 29,
counted from date of commencement of IPC).
protection.
5. Inventions created pursuant to a commission –
3. Utility model – A name given to inventions in the Person who commissions the work, unless
mechanical field otherwise provided in the contract (Sec. 30.1,
IPC).
6. Employee made the invention in the course of
Requisites for an invention to be considered as a
his employment contract:
utility model
a. The employee, if the inventive activity
It is new and industrially applicable. A model of
is not a part of his regular duties even
implement or tools of any industrial product even if not
if the employee uses the time, facilities
possessed of the quality of invention but which is of
and materials of the employer.
practical utility.
b. The employer, if the invention is the
Term of a utility model – 7 years from date of filing of
result of the performance of his
the application.
regularly-assigned duties, unless there
is an agreement, express or implied, to
the contrary (Sec. 30.2, IPC).
NON-PATENTABLE INVENTIONS
1. Plant varieties or animal breeds or essentially
biological process for the production of plants or FIRST-TO-FILE RULE
animals. This provision shall not apply to micro-
1. If two (2) or more persons have made the
organisms and non-biological and
invention separately and independently of each
microbiological processes
other, the right to the patent shall belong to the
2. Aesthetic creations person who filed an application for such
invention, or
3. Discoveries, scientific theories and mathematical
methods 2. Where two or more applications are filed for the
4. Schemes, rules and methods of performing same invention, to the applicant which has the
mental acts, playing games or doing business, earliest filing date.
and programs for computers
5. Anything which is Contrary to public order or
Person who may apply for a patent
morality (Sec. 22, IPC as amended by R.A.
9502). Any person who is a national or who is domiciled or has a
real and effective industrial establishment in a country
6. Methods for treatment of the human or Animal
which is a party to any convention, treaty or agreement
body
relating to intellectual property rights or the repression of
7. In the case of Drugs and medicines, mere unfair competition, to which the Philippines is also a
discovery of a new form or new property of a party, or extends reciprocal rights to nationals of the
known substance which does not result in the Philippines by law.
enhancement of the efficacy of that substance
Steps in the registration of a patent
1. Filing of the application
Patentability of computer programs
2. Accordance of the filing date
 GR: Computer programs are not patentable but
3. Formality examination
are copyrightable.
4. Classification and Search
 XPN: They can be patentable if they are part of
a process. 5. Publication of application
6. Substantive examination
7. Grant of Patent  Filing Date is accorded only when all the
“requirements” provided under Section 40 are
8. Publication upon grant
present. Priority Date comes into play when
9. Issuance of certificate. there is an application for patent for the same
invention that was filed in another country.

 The application shall disclose the invention in a


manner sufficiently clear and complete for it to Conditions in availing of priority date
be carried out by a person skilled in the art.
1. The local application expressly claims priority;
 Claim – Defines the matter for which protection
2. It is filed within 12 months from the date the
is sought. Each claim shall be clear and concise,
earliest foreign application was filed; and
and shall be supported by the description.
3. A certified copy of the foreign application
 Abstract – A concise summary of the disclosure
together with an English translation is filed
of the invention as contained in the description,
within 6 months from the date of filing in the
claims and merely serves as technical
Philippines (Sec. 31, IPC).
information.
 The applicant shall have all the rights of a
 Unity of invention – The application shall
patentee against any person who, without his
relate to one invention only or to a group of
authorization, exercised any of the rights
inventions forming a single general inventive
conferred under Section 71 in relation to the
concept. If several independent inventions which
invention claimed in the published patent
do not form a single general inventive concept
application, as if a patent had been granted for
are claimed in one application, the application
that invention, provided that the said person
must be restricted to a single invention.
had:
 Divisional applications come into play when two
o Actual knowledge that the invention
or more inventions are claimed in a single that he was using was the subject
application but are of such a nature that a single matter of a published application; or
patent may not be issued for them. The
o Received written notice that the
applicant, is thus required to “divide”, that is, to invention was the subject matter of a
limit the claims to whichever invention he may published application being identified in
elect, whereas those inventions not elected may the said notice by its serial number.
be made the subject of separate applications
 The action may not be filed until after the grant
which are called “divisional applications”. of a patent on the published application and
within four (4) years from the commission of the
acts complained of.
INVENTIONS CREATED PURSUANT TO A
 A patent shall take effect on the date of the
COMMISSION
publication of the grant of the patent in the IPO
 The person who commissions the work shall own Gazette.
the patent, unless otherwise provided in the
contract. FORM TERM OF PROTECTION
 Pursuant to employment
INVENTION Letters 20 years from date of
o The employee, if the inventive activity patent filing of application
is not a part of his regular duties even without renewal. (Sec. 54,
if the employee uses the time, facilities IPC)
and materials of the employer;
UTILITY Utility Model 7 years from the filing
o The employer, if the inventive activity
MODEL Registration date of the application
is the result of the performance of his
without renewal. (Sec.
regularly-assigned duties, unless there
109.3, IPC)
is an agreement, express or implied, to
the contrary.
INDUSTRIA Certificate of 5 years from the filing
L DESIGN registration date of the application,
RIGHT OF PRIORITY renewable for not more
than two (2) consecutive
 An application for patent filed by any person periods of 5 yrs each
who has previously applied for the same
invention in another country which by treaty,
convention, or law affords similar privileges to
Filipino citizens, shall be considered as filed as of
the date of filing the foreign application. GROUNDS FOR CANCELLATION OF A PATENT
Grounds for cancellation of patents
Any interested party: and actual inventor, the court shall order for his
substitution as patentee, or at the option of the
1. The invention is Not new or patentable;
true inventor, cancel the patent, and award
2. The patent does not Disclose the invention in a actual damages in his favor if warranted by the
manner sufficiently clear and complete for it to circumstances.
be carried out by any person skilled in the art;
 In the two circumstances aforementioned, the
or
court shall furnish the Office a copy of the order
3. Contrary to public order or morality (IPC, Sec. or decision which shall be published in the IPO
61.1). Gazette within three (3) months from the date
such order or decision became final and
4. Patent is found Invalid in an action for
executory, and shall be recorded in the register
infringement (IPC, Sec. 82)
of the Office.
5. The patent includes matters outside the Scope
 The actions indicated in Sections 67 and 68 shall
of the disclosure contained in the application
be filed within one (1) year from the date of
(IPC, Sec 21, Regulations on Inter Partes
publication made in accordance with Sections 44
Proceeding, Sec.1).
and 51, respectively
 If the ground for cancellation relate to some
claims, or parts of the claim only, the
cancellation may be effected to such extent RIGHTS CONFERRED BY A PATENT
only.
1. Subject matter is a product – Right to restrain,
prohibit and prevent any unauthorized person or
entity from making, using, offering for sale,
Grounds for cancellation of a utility model (QCNO)
selling or importing the product.
1. The invention does not Qualify for registration
2. Subject matter is a process – Right to restrain
as a utility model
prohibit and prevent any unauthorized person or
2. That the description and the claims do not entity from manufacturing, dealing in, using,
Comply with the prescribed requirements offering for sale, selling or importing any
product obtained directly or indirectly from such
3. Any drawing which is Necessary for the
process (Sec. 71, IPC).
understanding of the invention has not been
furnished 3. Right to assign the patent, to transfer by
succession, and to conclude licensing contracts
4. That the Owner of the utility model registration (Sec. 71.2, IPC).
is not the inventor or his successor in title (IPC,
Sec. 109.4). The rights conferred by a patent application take effect
after publication in the Official Gazette (Sec 46, IPC).

Grounds for cancellation of an industrial design


LIMITATIONS OF PATENT RIGHTS
1. The subject matter of the industrial design is not
registrable; 1. In general
2. The subject matter is not new; or GR: If put on the market in the Philippines by
the owner of the product, or with his express
3. The subject matter of the industrial design
consent.
extends beyond the content of the application as
originally filed (IPC, Sec. 120). XPN: Drugs and medicines - introduced
in the Philippines or anywhere else in
the world by the patent owner, or by
any party authorized to use the
REMEDY OF THE TRUE AND ACTUAL INVENTOR
invention (Sec. 72.1, as amended by
 If a person other than the applicant is R.A. 9502)
declared by final court order or decision as
Where the act is done privately and on a non-
having the right to a patent, he may within 3
commercial scale or for a non-commercial
months after such decision has become
purpose.
final:
Exclusively for experimental use of the invention
o Prosecute the application as his own
for scientific purposes or educational purposes
o File a new patent application (experimental use provision).
o Request the application to be refused; Bolar Provision - In the case of drugs and
or medicines, where the act includes testing, using,
making or selling the invention including any
o Seek cancellation of the patent.
data related thereto, solely for purposes
 If a person, who was deprived of the patent reasonably related to the development and
without his consent or through fraud is declared submission of information and issuance of
by final court order or decision to be the true approvals by government regulatory agencies
required under any law of the Philippines or of (Application of Doctrine of Exhaustion) GR:
another country that regulates the manufacture, Patent rights are exhausted by first sale in the
construction, use or sale of any product. Philippines (Domestic exhaustion).
Where the act consists of the preparation for XPN: On drugs and medicines: first sale in any
individual cases, in a pharmacy or by a medical jurisdiction exhausts the rights of the owner
professional, of a medicine in accordance with a thereof (International exhaustion) (R.A. 9502).
medical prescription. (Sec. 72.5, IPC)
Where the invention is used in any ship, vessel,
PATENT INFRINGEMENT
aircraft, or land vehicle of any other country
entering the territory of the Philippines 1. Making, using, offering for sale, selling or
temporarily or accidentally. (Sec. 72.5, IPC) importing a patented product or a product
obtained directly or indirectly from a patented
process; or
2. Prior user – Person other than the applicant,
2. Use of a patented process without authorization
who in good faith, started using the invention in
of the owner of the patent (Sec. 76, IPC).
the Philippines, or undertaken serious
preparations to use the same, before the filing
date or priority date of the application shall have
Test in patent infringement
the right to continue the use thereof, but this
right shall only be transferred or assigned  Literal infringement Test – Resort must be
further with his enterprise or business. had, in the first instance, to words of the claim.
If the accused matter clearly falls within the
3. Use by Government– A government agency or
claim, infringement is committed.
third person authorized by the government may
exploit invention even without agreement of a  Minor modifications are sufficient to put the item
patent owner where: beyond literal infringement.
a. Public interest, as determined by the  Doctrine of Equivalents– There is infringement
appropriate agency of the government, where a device appropriates a prior invention by
so requires; or incorporating its innovative concept and,
although with some modification and change,
b. A judicial or administrative body has
performs substantially the same function in
determined that the manner of
substantially the same way to achieve
exploitation by owner of patent is anti-
substantially the same result (Ibid.).
competitive.
 Economic interest test–when the process-
4. Reverse reciprocity of foreign law– Any
discoverer’s economic interest are compromised,
condition, restriction, limitation, diminution,
i.e., when others can import the products that
requirement, penalty or any similar burden
result from the process, such an act is said to be
imposed by the law of a foreign country on a
prohibited.
Philippine national seeking protection of
intellectual property rights in that country, shall
reciprocally be enforceable upon nationals of
 Doctrine of Mechanical Equivalents – the
said country, within Philippine jurisdiction. (Sec.
patentee is protected from colorable invasions of
231, IPC)
his patent under the guise of substitution of
some part of his invention by some well-known
mechanical equivalent. It is an infringement of
Parallel importer – One which imports, distributes, and
the patent, if the substitute performs the same
sells genuine products in the market, independently of an
function and was well known at the date of the
exclusive distributorship or agency agreement with the
patent as a proper substitute for the omitted
manufacturer.
ingredient.
Doctrine of exhaustion – Also known as the doctrine of
o Equivalent Device – It is such as a
first sale, it provides that the patent holder has control of
mechanic of ordinary skill in
the first sale of his invention. He has the opportunity to
construction of similar machinery,
receive the full consideration for his invention from his
having the forms, specifications and
sale. Hence, he exhausts his rights in the future control
machine before him, could substitute in
of his invention.
the place of the mechanism described
It espouses that the patentee who has already sold his without the exercise of the inventive
invention and has received all the royalty and faculty.
consideration for the same will be deemed to have
 Doctrine of file wrapper estoppels – This
released the invention from his monopoly. The invention
doctrine balances the doctrine of equivalents.
thus becomes open to the use of the purchaser without
Patentee is precluded from claiming as part of
further restriction.
patented product that which he had to excise or
modify in order to avoid patent office rejection,
and he may omit any additions that he was the infringing goods, materials and
compelled to add by patent office regulations. implements predominantly used in the
infringement be disposed of outside the
 Doctrine of contributory infringement –
channels of commerce of destroyed,
Aside from the infringer, anyone who actively
without compensation (Sec.76.5, IPC).
induces the infringement of a patent or provides
the infringer with a component of a patented
product or of a product produced because of a
Persons who can file an action for infringement
patented process knowing it to be especially
adapted for infringing the patented invention 1. The patentee or his successors-in-interest may
and not suitable for substantial non-infringing file an action for infringement (Creser Precision
use is liable jointly and severally with the Systems, Inc. v. CA, G.R. No. 118708, Feb. 2,
infringer as a contributory infringer. 1998).
o It must be proven that the product can 2. Any foreign national or juridical entity who
only be used for infringement purposes. meets the requirements of Sec. 3 and not
If it can be used for legitimate engaged in business in the Philippines, to which
purposes, the action shall not prosper. a patent has been granted or assigned, whether
or not it is licensed to do business in the
o Remedies of the owner of the
Philippines (Sec. 77, IPC).
patent against infringers:
o Civil action for infringement – The
owner may bring a civil action with the DEFENSES IN ACTION FOR INFRINGEMENT
appropriate Regional Trial Court to
1. Invalidity of the patent (Sec. 81, IPC);
recover from infringer the damages
sustained by the former, plus 2. Any of the Grounds for cancellation of patents:
attorney’s fees and other litigation
a. That what is claimed as the invention is
expenses, and to secure an
not New or patentable
injunction for the protection of his
rights. (Sec 76.2, IPC) If the damages b. That the patent does not Disclose the
are inadequate or cannot be reasonably invention in a manner sufficiently clear
ascertained with reasonable certainty, and complete for it to be carried out by
the court may award by way of any person skilled in the art; or
damages a sum equivalent to
reasonable royalty (Sec 76.3, IPC). c. That the patent is Contrary to public
order or morality (Sec. 61, IPC).
o Criminal action for infringement – If the
infringement is repeated, the infringer 3. Prescription
shall be criminally liable and upon
conviction, shall suffer imprisonment of
not less than six (6) months but not LICENSING
more than three (3) years and/or a fine 1. Voluntary licensing (Sec. 85, IPC) and
not less than P100,000.00 but not more
than P300,000.00 2. Compulsory licensing (Sec. 93, IPC).

 Limitations to the
civil/criminal action: no Voluntary licensing – The grant by the patent owner to
damages can be recovered for a third person of the right to exploit a patented invention.
acts of infringement
committed more than 4 years Rights of a licensor in voluntary licensing
before the filing of the action,  In the absence of any provision to the
and the criminal action contrary in the technology transfer
prescribes in 3 years from the arrangement, the grant of a license shall not
commission of the crime. prevent the licensor from granting further
o Administrative remedy – Where the licenses to third person nor from exploiting the
amount of damages claimed is not less subject matter of the technology transfer
than P200,000.00, the patentee may arrangement himself (Sec. 89, IPC).
choose to file an administrative action
against the infringer with the Bureau of
Legal Affairs (BLA). The BLA can issue Prohibited clauses
injunctions, direct infringer to pay 1. Those which impose upon the licensee the
patentee damages, but unlike regular obligation to acquire from a specific source
courts, the BLA may not issue search capital goods, intermediate products, raw
and seizure warrants or warrants of materials, and other technologies, or of
arrest. permanently employing personnel indicated by
o Destruction of Infringing material- The the licensor;
court may, in its discretion, order that
2. Those pursuant to which the licensor reserves Exception on prohibited clauses
the right to fix the sale or resale prices of the
In exceptional or meritorious cases where
products manufactured on the basis of the
substantial benefits will accrue to the economy,
license;
such as high technology content, increase in foreign
3. Those that contain restrictions regarding the exchange earnings, employment generation, regional
volume and structure of production; dispersal of industries and/or substitution with or use of
local raw materials, or in the case of Board of
4. Those that prohibit the use of competitive
Investments, registered companies with pioneer status,
technologies in a non-exclusive technology
exemption from any of the above requirements may be
transfer agreement;
allowed by the Documentation, Information and
5. Those that establish a full or partial purchase Technology Transfer Bureau after evaluation thereof on a
option in favor of the licensor; case by case basis (Sec. 91, IPC).
6. Those that obligate the licensee to transfer for
free to the licensor the inventions or
Mandatory provisions
improvements that may be obtained through the
use of the licensed technology; 1. That the laws of the Philippines shall govern the
interpretation of the same and in the event of
7. Those that require payment of royalties to the
litigation, the venue shall be the proper court in
owners of patents for patents which are not
the place where the licensee has its principal
used;
office;
8. Those that prohibit the licensee to export the
2. Continued access to improvements in techniques
licensed product unless justified for the
and processes related to the technology shall be
protection of the legitimate interest of the
made available during the period of the
licensor such as exports to countries where
technology transfer arrangement;
exclusive licenses to manufacture and/or
distribute the licensed product(s) have already 3. In the event the technology transfer
been granted; arrangement shall provide for arbitration, the
Procedure of Arbitration of the Arbitration Law of
9. Those which restrict the use of the technology
the Philippines or the Arbitration Rules of the
supplied after the expiration of the technology
United Nations Commission on International
transfer arrangement, except in cases of early
Trade Law (UNCITRAL) or the Rules of
termination of the technology transfer
Conciliation and Arbitration of the International
arrangement due to reason(s) attributable to the
Chamber of Commerce (ICC) shall apply and the
licensee;
venue of arbitration shall be the Philippines or
10. Those which require payments for patents and any neutral country; and
other industrial property rights after their
4. The Philippine taxes on all payments relating to
expiration, termination arrangement;
the technology transfer arrangement shall be
11. Those which require that the technology borne by the licensor (Sec. 88, IPC).
recipient shall not contest the validity of any of
GR: Non-conformance with the mandatory and prohibited
the patents of the technology supplier;
clauses shall automatically render the technology transfer
12. Those which restrict the research and arrangement unenforceable.
development activities of the licensee designed
XPN: Unless said technology transfer arrangement is
to absorb and adapt the transferred technology
approved and registered with the Documentation,
to local conditions or to initiate research and
Information and Technology Transfer Bureau under the
development programs in connection with new
provisions of Section 91 on exceptional cases (Sec. 92,
products, processes or equipment;
IPC)
13. Those which prevent the licensee from adapting
the imported technology to local conditions, or
introducing innovation to it, as long as it does COMPULSORY LICENSING
not impair the quality standards prescribed by
Jurisdiction
the licensor;
1. The Director of Legal Affairs may grant a license
14. Those which exempt the licensor for liability for
to exploit a patented invention, even without the
non-fulfilment of his responsibilities under the
agreement of the patent owner, in favor of any
technology transfer arrangement and/or liability
person who has shown his capability to exploit
arising from third party suits brought about by
the invention (Sec. 93, IPC).
the
2. R.A. 9502 (Universally Accessible Cheaper and
1. use of the licensed product or the licensed
Quality Medicines Act of 2008) however
technology; and
amended Sec. 93 so that it is the Director
15. Other clauses with equivalent effects (Sec. 87, General of the IPO who may grant a license to
IPC). exploit patented invention under the grounds
enumerated therein.
4. Use of the subject matter of the license shall be
devoted predominantly for the supply of the
Grounds for compulsory licensing and the period
Philippine market: Provided, That this limitation
for filing a petition
shall not apply where the grant of the license is
1. National emergency or other circumstances of based on the ground that the patentee's manner
extreme urgency of exploiting the patent is determined by judicial
or administrative process, to be anti-
2. Where the public interest, in particular, national
competitive.
security, nutrition, health or the development of
other vital sectors of the national economy as 5. The license may be terminated upon proper
determined by the appropriate agency of the showing that circumstances which led to its
Government, so requires; at any time after the grant have ceased to exist and are unlikely to
grant of the patent recur: Provided, That adequate protection shall
be afforded to the legitimate interest of the
3. Where a judicial or administrative body has
licensee; and
determined that the manner of exploitation by
the owner of the patent or his licensee is anti- 6. The patentee shall be paid adequate
competitive at any time after the grant of the remuneration taking into account the economic
patent value of the grant or authorization, except that
in cases where the license was granted to
4. In case of public non-commercial use of the
remedy a practice which was determined after
patent by the patentee, without satisfactory
judicial or administrative process, to be anti-
reason at any time after the grant of the patent
competitive, the need to correct the anti-
5. If the patented invention is not being worked in competitive practice may be taken into account
the Philippines on a commercial scale, although in fixing the amount of remuneration.
capable of being worked, without satisfactory
 The patent owner receives royalties in losing
reason after the expiration of 4 years from the
his property rights because of the compulsory
date of filing of the application or 3 years from
licensing.
the date of the patent whichever is later (Sec.
93 in relation to Sec. 94)  Upon the request of the patentee or the
licensee, the Director of Legal Affairs may
6. Where the demand for patented drugs and
amend the decision granting the compulsory
medicines is not being met to an adequate
license, upon proper showing of new facts or
extent and on reasonable terms, as determined
circumstances justifying such amendment.
by the Secretary of the Department of Health
(Sec. 10, RA 9502).
Cancellation of complusory license
When requirement to obtain a license on Upon the request of the patentee, the Director may
reasonable commercial terms not applicable cancel the compulsory license:
1. Where the petition for compulsory license seeks 1. If the ground for the grant of the compulsory
to remedy a practice determined after judicial or license no longer exists and is unlikely to recur;
administrative process to be anti-competitive;
2. If the licensee has neither begun to supply the
2. In situations of national emergency or other domestic market nor made serious preparation
circumstances of extreme urgency; therefor;
3. In cases of public non-commercial use; and 3. If the licensee has not complied with the
prescribed terms of the license;
4. In cases where the demand for the patented
drugs and medicines in the Philippines is not 4. The licensee may surrender the license by a
being met to an adequate extent and on written declaration submitted to the Office.
reasonable terms, as determined by the
a. The said Director shall cause the
Secretary of the Department of Health (R.A.
amendment, surrender, or cancellation
8293, Sec. 95 as amended by R.A. 9502).
in the Register, notify the patentee,
and/or the licensee, and cause notice
thereof to be published in the IPO
Terms and condition of a compulsory license
Gazette.
1. The scope and duration of such license shall be
limited to the purpose for which it was
authorized; Licensee’s exemption from liability
2. The license shall be non-exclusive;  Any person who works a patented product,
substance and/or process under a license
3. The license shall be non-assignable, except with
granted under this Chapter, shall be free from
that part of the enterprise or business with
any liability for infringement:
which the invention is being exploited;
o Provided however, That in the case of the patentee through a special power of
voluntary licensing, no collusion attorney.
with the licensor is proven.
o This is without prejudice to the right of
the rightful owner of the patent to TRADEMARKS
recover from the licensor whatever he
may have received as royalties under Trademark – Any visible sign capable of distinguishing
the license. the goods (trademark) or services (service mark) of an
enterprise. A trade name is a name or designation
identifying or distinguishing an enterprise.
ASSIGNMENT AND TRANSMISSION OF RIGHTS
TRADEMARK TRADE NAME
Forms of assignment
1. Total – assignment of entire right, title or Goods or services offered A natural or artificial person
interest in and to the patent and the invention by a proprietor or who does business and
covered thereby. enterprise are designated produces or performs the
by trademark (goods) or goods or services designated
2. Partial service marks (services). by trademark or service
a. Separate rights – assignment of a mark.
specific right (ex: right to sell)
Refers to the goods. Refers to business and its
b. Pro Indiviso – assignment of an aliquot goodwill.
part which results in co-ownership
Acquired only by Need not be registered.
registration.
Manner of effecting transfer of rights
1. By inheritance or bequest
2. License contract Collective mark and collective trade-name –any
visible sign designated as such in the application for
registration and capable of distinguishing the origin or
The assignment works as an estoppel by deed, any other common characteristic, including the quality of
goods or services of different enterprises.
preventing the assignor from denying the novelty and
utility of the patented invention when sued by the An application for registration of a collective mark shall
assignee for infringement. designate the mark as a collective mark and shall be
Form of an assignment accompanied by a copy of the agreement, if any,
governing the use of the collective mark.
1. In writing
2. Acknowledged and certified before a notary
public or other officer authorized to perform Functions of trademark
notarial acts 1. To point out distinctly the origin or ownership of
3. Recorded in the IPO the articles to which it is affixed.

a. A deed of assignment affecting title 2. To secure to him who has been instrumental in
shall be void as against any bringing into market a superior article or
subsequent purchaser or mortgagee for merchandise the fruit of his industry and skill
valuable consideration and without 3. To prevent fraud and imposition.
notice unless, it is so recorded in the
Office, within three (3) months from
the date of said instrument, or prior to Salient features of the Paris convention for the
the subsequent purchase or mortgage. protection of industrial property
However, even without recording, the
instruments are binding upon the 1. National Treatment Principle– foreign nationals
parties. are to be given the same treatment in each of
the member countries as that country makes
available in its own citizens.
GR: A licensee may NOT maintain a suit for infringement. 2. Right of Priority –any person who has duly filed
Only the patentees, his heirs, assignee, grantee or registration for trademark shall enjoy a right of
personal representatives may bring an action for priority of 6 months (Rule 203, Trademark
infringement. Rules)
XPN: If the licensing agreement provides that 3. Protection against Unfair Competition
the licensee may bring an action for
4. Protection of Tradenames –protected in all
infringement or if he was authorized to do so by countries without obligation of filing or
registration.
5. Protection of Well-Known Marks this Act, that is not registered in the
Philippines, may, against an identical or
6. Most favored nation treatment - any advantage,
confusingly similar mark, oppose its
favour, privilege or immunity granted by a
registration, or petition the cancellation
Member to the nationals of any other country
of its registration or sue for unfair
shall be accorded immediately and
competition, without prejudice to
unconditionally to the nationals of all other
availing himself of other remedies
Members.
provided for under the law.
o In like manner and subject to the same
 Marks are acquired solely through registration. conditions and requirements, the right
provided in this section may be based
 Registration, without more, does not confer
upon a subsequent regularly filed
upon the registrant an absolute right to the
application in the same foreign country:
registered mark. The certificate of registration is
merely a prima facie proof that the registrant is  Provided, That any foreign
the owner of the registered mark or trade name. application filed prior to such
Evidence of prior and continuous use of the subsequent application has
mark or trade name by another can overcome been withdrawn, abandoned,
the presumptive ownership of the registrant and or otherwise disposed of,
may very well entitle the former to be declared without having been laid open
owner in an appropriate case. to public inspection and
without leaving any rights
 Any word, name, symbol, emblem, device,
outstanding, and has not
figure, sign, phrase, or any combination thereof
served, nor thereafter shall
except those enumerated under Section 123,
serve, as a basis for claiming a
IPC.
right of priority.
 Doctrine of secondary meaning – a word or
Requirements for a mark to be registered phrase originally incapable of exclusive
appropriation with reference to an article on the
1. A visible sign (not sounds or scents); and
market, because it is geographical or otherwise
2. Capable of distinguishing one’s goods and descriptive, may nevertheless be used
services from another. exclusively by one producer with reference to his
article so long as in that trade and to that
branch of the purchasing public, the word or
 Any application referring to several goods phrase has come to mean that the article was
or services, hereafter referred to as the "initial his product.
application," may be divided by the applicant  Any person who believes that he would be
into two (2) or more applications, hereafter damaged by the registration of a mark may,
referred to as the "divisional applications," by upon payment of the required fee and within
distributing among the latter the goods or thirty (30) days after the publication referred to
services referred to in the initial application. The in Subsection 133.2, file with the Office an
divisional applications shall preserve the filing opposition to the application.
date of the initial application or the benefit of
the right of priority.
 Priority right – An application for registration Acquisition of trade names
of a mark filed in the Philippines by a person
 Trade names or business names are acquired
referred to in Section 3, and who previously duly
through adoption and use. Registration is not
filed an application for registration of the same
required. It is the actual use in commerce or
mark in one of those countries, shall be
business is a pre-requisite to the acquisition of
considered as filed as of the day the application
the right of ownership.
was first filed in the foreign country.
 Can a previously used trade name of a business
 No registration of a mark in the Philippines by a
in a foreign country bar its appropriation by
person described in Section 131 shall be granted another in the Philippines?
until such mark has been registered in the
country of origin of the applicant. o Yes. The IPC does not require that the
actual use of a trademark must be
 Nothing in the said section shall entitle the
within the Philippines.
owner of a registration granted under this
section to sue for acts committed prior to the o For a person to have ownership of a
date on which his mark was registered in this mark, the mark must not have been
country: already appropriated (i.e., used) by
someone else.
o Provided, That, notwithstanding the
foregoing, the owner of a well-known
mark as defined in Section 123.1(e) of
Non-registrable marks
1. Consists of Immoral, deceptive or scandalous TEST TO DETERMINE CONFUSING SIMILARITY
matter or falsely suggest a connection with BETWEEN MARKS
persons, institutions, beliefs, or national symbols
 Dominancy Test
2. Consists of the Flag or coat of arms or other
o Focuses on the similarity of the
insignia of the Philippines or any of its political
prevalent features of the competing
subdivisions, or of any foreign nation
marks. If the competing trademark
3. Consists of a Name, portrait or signature contains the main or essential or
identifying a particular living individual except dominant features of another, and
by his written consent, or the name, signature, confusion is likely to result,
or portrait of a deceased President of the infringement takes place.
Philippines, during the life of his widow except
o Duplication or imitation is not
by written consent of the widow
necessary; nor is it necessary that the
4. Identical with a registered mark belonging to a infringing label should suggest an effort
different proprietor or a mark with an earlier to imitate. The question is whether the
filing or priority date, in respect of: use of marks involved is likely to cause
of confusion or mistake in the mind of
a. The same goods or services, or
the public or deceive purchasers.
b. Closely related goods or services, or
o The dominancy test only relies on visual
c. If it nearly resembles such a mark as to comparisons between two trademarks
be likely to deceive or cause confusion; whereas the totality or holistic test
relies not only on the visual but also on
5. Is Identical with an internationally well-known
the aural and connotative comparisons
mark, whether or not it is registered here, used
and overall impressions between the
for identical or similar goods or services
two trademarks.
6. Is Identical with an internationally well-known
 Totality/Holistic Test
mark which is registered in the Philippines with
respect to non-similar goods or services. o Confusing similarity is to be determined
Provided, that the interests of the owner of the on the basis of visual, aural,
registered mark are likely to be damaged by connotative comparisons and overall
such use impressions engendered by the marks
in controversy as they are encountered
7. Is likely to Mislead the public as to the nature,
in the marketplace.
quality, characteristics or geographical origin of
the goods or services
8. Consists exclusively of signs that are Generic for  Priority in registration is not material in an
the goods or services that they seek to identify action for unfair competition as distinguished
from an action for infringement of trademark.
9. Consists exclusively of signs that have become
The basis of an action for unfair competition is
Customary or usual to designate the goods or
confusing and misleading similarity in general
services in everyday language and established
appearance, not similarity of trademarks.
trade practice
(Converse Rubber Co. v. Jacinto Rubber &
10. Consists exclusively that may serve in trade to Plastics Co., G.R. Nos. 27425, 30505, Apr.
Designate the kind, quality, quantity, intended 28, 1980)
purpose, value, geographical origin, time or
production of the goods or rendering of the
services, or other characteristics of the goods or  Principle of related goods
services
o Belong to the same class or have the
11. Consists of Shapes that may be necessitated by same descriptive properties; or
technical factors or by the nature of the goods
o When they possess the same physical
themselves or factors that affect their intrinsic
attributes or essential characteristics
value
with reference to their form,
12. Consists of Color alone, unless defined by a composition, texture or quality.
given form; or
 Rule of idem sonans
13. Is Contrary to public order or morality (Sec.
o The attentive ear finds difficulty in
123, IPC).
distinguishing them when pronounced
o Similarity of sound is sufficient to rule
 Prior use of the mark is NOT a requirement for that the two marks are confusingly
registration. Actual prior use in commerce in the similar when applied to merchandise of
Philippines has been abolished as a condition for the same descriptive properties.
the registration of a trademark (RA 8293).
Types of confusion that arise from the use of 2. The market share, in the Philippines and in other
similar or colorable imitation marks countries, of the goods and/or services to which
the mark applies
1. Confusion of goods/product confusion - there is
confusion of goods when the products are 3. The degree of the inherent or acquired
competing distinction of the mark
2. Confusion of business/source or origin confusion 4. The quality-image or reputation acquired by the
- the products are non-competing but related mark
enough to produce confusion of affiliation
5. The extent to which the mark has been
(McDonald’s Corp. v. L.C. Big Mak Burger, Inc.,
registered in the world
G.R. No. 143993, Aug. 18, 2004).
6. The exclusivity of use attained by the mark in
Colorable imitation – such a close or ingenious
the world
imitation as to be calculated to deceive ordinary persons,
or such a resemblance to the original as to deceive an 7. The commercial value attributed to the mark in
ordinary purchaser giving such attention as a purchaser the world
usually gives, as to cause him to purchase the one
8. The record of successful protection of the rights
supposing it to be the other.
in the mark
9. The outcome of litigations dealing with the issue
WELL-KNOWN MARKS of whether the mark is a well-known mark
Internationally well-known mark 10. The presence of absence of identical or similar
marks validly registered for or used on identical
1. Considered by the competent authority of the
or similar goods or services and owned by
Philippines to be “well-known” internationally
persons other than the person claiming that his
and in the Philippines as the mark of a person
mark is well-known mark.
other than the applicant or registrant
Provided further, that the mark is well-known
2. Need not be used or registered in the Philippines
both internationally and in the Philippines (A.M.
3. Need not be known by the public at large but No. 10-3-10-SC)
only by relevant sector of the public.

RIGHTS CONFERRED BY REGISTRATION


Rules regarding internationally-well known marks
 A certificate of registration of a mark shall be
 GR: Prohibition on subsequent registration does prima facie evidence of the validity of the
not include services and goods of different registration, the registrant’s ownership of the
nature or kind. mark, and of the registrant’s exclusive right to
use the same in connection with the goods or
 XPNs:
services and those that are related thereto
o If the internationally well-known mark specified in the certificate.
is not registered in the Philippines, the
 The certificate of registration shall be issued
application for registration of a
when the period for filing the opposition has
subsequent or similar mark can be
expired, or when the Director of Legal Affairs
rejected only if the goods or services
shall have denied the opposition, and upon
specified in the application are similar
payment of the required fee.
to those of the internationally well-
known mark.  The registered mark shall be published, in the
form and within the period fixed by the
o If the internationally well-known mark
Regulations. Marks registered at the Office may
is registered in the Philippines, the
be inspected free of charge and any person may
application for registration of a
obtain copies thereof at his own expense. This
psubsequent or similar mark can be
provision shall also be applicable to transactions
refused even if the goods or services
recorded in respect of any registered mark.
specified in the application are not
identical or similar to those of the  A certificate of registration shall remain in force
internationally well-known mark. for ten (10) years:
o Provided, That the registrant shall file a
declaration of actual use and evidence
Criteria for well-known brands
to that effect, or shall show valid
1. The duration, extent and geographical area of reasons based on the existence of
any use of the mark, in particular, the duration, obstacles to such use, as prescribed by
extent and geographical area of any promotion the Regulations, within one (1) year
of the mark, including advertising or publicity from the fifth anniversary of the date of
and the presentation, at fairs or exhibitions, of the registration of the mark. Otherwise,
the goods and/or services to which the mark the mark shall be removed from the
applies. Register by the Office (Sec, 145, IPC).
 The applicant or the registrant shall file a Trademark infringement – Use without consent of the
declaration of actual use of the mark with trademark owner of any reproduction, counterfeit, copy
evidence to that effect, as prescribed by the or colorable limitation of any registered mark or trade
Regulations within three (3) years from the filing name. Such use is likely to cause confusion or mistake or
date of the application. Otherwise, the to deceive purchasers or others as to the source or origin
application shall be refused or the mark shall be of such goods or services, or Identity of such business.
removed from the Register by the Director (Sec.
124.2, IPC).
Elements to be established in trademark
o Instances when non-use is excused
infringement
o If caused by circumstances arising
1. That it is duly registered in the Intellectual
independently of the will of the owner.
Property Office
 Lack of funds is not an
2. The validity of the mark
excuse.
3. The plaintiff’s ownership of the mark
o A use which does not alter its
distinctive character though the use is 4. The use of the mark or its colorable imitation by
different from the form in which it is the alleged infringer results in “likelihood of
registered. confusion”
o Use of mark in connection with one or 5. Used without the consent of the owner
more of the goods/services belonging
to the class in which the mark is
registered.  Non-competing goods – Those which, though
they are not in actual competition, are so related
o The use of a mark by a company
to each other that it might reasonably be
related to the applicant/registrant.
assumed that they originate from one
o The use of a mark by a person manufacturer.
controlled by the registrant (Section
 Non-competing goods may also be those which,
152, IPC).
being entirely unrelated, could not reasonably
 A certificate of registration may be renewed for be assumed to have a common source. In the
periods of ten (10) years at its expiration. case of related goods, confusion of business
could arise out of the use of similar marks; in
 Each request for renewal of registration must be
the latter case of non-related goods, it could
made within 6 months before the expiration of
not.
the registration or within 6 months after such
expiration on payment of the additional fee  In a later case, in defining trademark
prescribed. infringement, Section 22 of RA 166 deleted the
requirement in question and expanded its scope
to include such use of the mark or its colorable
Rights of a registered mark owner imitation that is likely to result in confusion on
"the source or origin of such goods or services,
1. Protection against reproduction, or imitation or
or identity of such business." Thus, while there
unauthorized use of the mark (infringement of
is confusion of goods when the products are
mark)
competing, confusion of business exists when
2. To stop entry of imported merchandise into the the products are non-competing but related
country containing a mark identical or similar to enough to produce confusion of affiliation.
the registered mark
 Modern law recognizes that the protection to
3. To transfer or license out the mark. which the owner of a trademark is entitled is not
limited to guarding his goods or business from
actual market competition with identical or
USE BY THIRD PARTIES OF NAMES, ETC. SIMILAR similar products of the parties, but extends to all
TO REGISTERED MARK cases in which the use by a junior appropriator
of a trade-mark or trade-name is likely to lead
 Registration of the mark shall not confer on the
to a confusion of source, as where prospective
registered owner the right to preclude third
purchasers would be misled into thinking that
parties from using bona fide their names,
the complaining party has extended his business
addresses, pseudonyms, a geographical name,
into the field or is in any way connected with the
or exact indications concerning the kind, quality,
activities of the infringer; or when it forestalls
quantity, destination, value, place of origin, or
the normal potential expansion of his business
time of production or of supply, of their goods or
(Mcdonald’s Corporation v. L & C Big Mak
services.
Burger, Inc. August 18, 2004).

INFRINGEMENT AND REMEDIES


Remedies of the owner of the trademark against
infringers (Filed with the RTC)
1. Civil —filed with the Regional Trial Courts. The 3. Relief against newspaper – injunction against
owner of the registered mark may ask the court the presentation of advertising matter in future
to issue a preliminary injunction to quickly issues of the newspaper, magazine or in
prevent infringer from causing damage to his electronic communications in case the
business. Furthermore, the court will require infringement complained of is contained in or is
infringer to pay damages to the owner of the part of paid advertisement in such materials
mark provided defendant is shown to have had (Sec. 159.3, IPC).
notice of the registration of the mark (which is
presumed if a letter R within a circle is
appended) and stop him permanently from using UNFAIR COMPETITION – Employing deception or any
the mark. other means contrary to good faith by which a person
passes off his goods or business or services for those of
a. Ascertainment of the amount of
one who has already established goodwill thereto.
damages in a civil action for
infringement. The owner of a
trademark which has been infringed is
entitled to actual damages: INFRINGEMENT OF UNFAIR
The reasonable profit which the TRADEMARK COMPETITION
complaining party would have
made, had the defendant not infringed Unauthorized use of a The passing off of one’s
his said rights; or trademark. goods as those of another.
The profit which the defendant
actually made out of infringement; or Fraudulent intent is Fraudulent intent is essential.
unnecessary.
The court may award as damages a
reasonable percentage based upon the GR: Prior registration of Registration is not necessary.
amount of gross sales of the defendant the trademark is a (Del Monte Corp. v. CA, G.R.
or the value of the services in prerequisite to the action. No. 78325, Jan. 23, 1990)
connection with which the mark or
trade name was issued. XPN: Well-known marks

In cases where actual intent to mislead


the public or to defraud the
complainant is shown, in the discretion  A person who has identified in the mind of the
of the court, the damages may be public the goods he manufactures or deals in,
doubled. his business or services from those of others,
whether or not a registered mark is employed,
2. Criminal— the owner of the trademark may ask has a property right in the goodwill of the said
the court to issue a search warrant and in goods, business or services so identified, which
appropriate cases, remedies available shall also will be protected in the same manner as other
include the seizure, forfeiture and property rights (Sec. 168.1, IPC).
destruction of the infringing goods and of any
materials and implements the predominant use
of which has been in the commission of the Persons guilty of unfair competition
offense.
1. Any person, who is selling his goods and gives
3. Administrative—same as in patent infringement them the general appearance of goods of
cases. If the amount of damages claimed is not another manufacturer or dealer, either as to the
less than P200,000.00, the registrant may goods themselves or in the wrapping of the
choose to seek redress against the packages in which they are contained, or the
infringer by filing an administrative action devices or words thereon, or in any other
against the infringer with the Bureau of feature of their appearance, which would be
Legal Affairs. likely to influence purchasers to believe that the
goods offered are those of a manufacturer or
dealer, other than the actual manufacturer or
Limitations on the actions for infringement dealer, or who otherwise clothes the goods with
1. Right of prior user– registered mark shall be such appearance as shall deceive the public and
without affect against any person who, in good defraud another of his legitimate trade, or any
faith, before filing or priority date, was using the subsequent vendor of such goods or any agent
mark for purposes of his business (Sec 159.1, of any vendor engaged in selling such goods
IPC). with a like purpose;

2. Relief against publisher– injunction against 2. Any person who by any artifice, or device, or
future printing against an innocent infringer who who employs any other means calculated to
is engaged solely in the business of printing the induce the false belief that such person is
mark (Sec. 159.2, IPC). offering the services of another who has
identified such services in the mind of the
public;
3. Any person who shall make any false statement 7. Copy or simulate a mark registered in
in the course of trade or who shall commit any accordance with the provisions of IPC (for
other act contrary to good faith of a nature imported products).
calculated to discredit the goods, business or
8. Use mark or trade name calculated to induce the
services of another.(Sec. 168.3, IPC)
public to believe that the article is manufactured
in the Philippines, or that it is manufactured in
any foreign country or locality other than the
 Trademark infringement is more limited but it
country or locality where it is in fact
recognizes a more exclusive right derived from
manufactured.
the trademark adoption and registration by the
person whose goods or business is first Items 4, 5 and 6 only applies to imported products
associated with it. and those imported articles shall not be admitted to entry
at any customhouse of the Philippines.
 Hence, even if one fails to establish his exclusive
property right to a trademark, he may still The change in the ownership of a trade name is made
obtain relief on the ground of his competitor’s with the transfer of the enterprise or part thereof
unfairness or fraud. Conduct constitutes unfair identified by that name.
competition if the effect is to pass off on the
public the goods of one man as the goods of
another. COLLECTIVE MARKS
Collective mark – A "collective mark" or “collective
trade-name" is a mark or trade-name used by the
Elements of an action for unfair competition
members of a cooperative, an association or other
1. Confusing similarity in the general appearance of collective group or organization.
the goods; and
NOTE: The confusing similarity may or may not
Contents of an application for registration of a
result from similarity in the marks, but may
collective mark
result from other external factors in the
packaging or presentation of the goods. 1. The application shall designate the mark as a
collective mark
2. Intent to deceive the public and defraud a
competitor. 2. Accompanied by a copy of the agreement, if
any, governing the use of the collective mark
NOTE: The intent to deceive and defraud may
(Sec. 167.2, IPC)
be inferred from the similarity in appearance of
the goods as offered for sale to the public
In order to prove a case of unfair competition, it is Grounds for the cancellation of collective marks
sufficient to show that such deception will be the natural
1. The Court shall cancel the registration of a
and probable cause of defendants acts.
collective mark if the person requesting the
cancellation proves that only the registered
owner uses the mark,
TRADE NAMES OR BUSINESS NAMES
2. Or that he uses or permits its use in
Trade name or business name – Any individual name
contravention of the agreements referred to in
or surname, firm name, device nor word used by
Subsection 166.2,
manufacturers, industrialists, merchants, and others to
identify their businesses, vocations or occupants. 3. Or that he uses or permits its use in a manner
liable to deceive trade circles or the public as to
the origin or any other common characteristics
Limitations on use of trade name or business name of the goods or services concerned (Sec 167.3,
IPC).
Not allowed:
 The registration of a collective mark, or an
1. Use a name if the word is generic.
application therefor shall not be the subject of a
2. Use any name indicating a geographical license contract.
locations.
 A criminal penalty of imprisonment from two (2)
3. Use any name or designation contrary to public years to five (5) years and a fine ranging from
order or morals Fifty thousand pesos (P50,000) to Two hundred
thousand pesos (P200,000), shall be imposed on
4. Use a name if it is liable to deceive trade circles
any person who is found guilty of committing
or the public as to the nature of the enterprise
any of the acts. The penalty shall be
identified by that name.
independent of the civil and administrative
5. Subsequently use a trade name likely to mislead sanctions imposed by law (Sec 170, IPC).
the public as a third party.
6. Copy or simulate the name of any domestic
Cancellation of trademark registration
product (for imported products).
Any person who believes that he will be damaged by the Works are protected from the time of their creation,
registration of the mark: irrespective of their mode or form of expression, as well
as of their content, quality and purpose.
1. Within 5 years, from the date of the registration
of the mark; or
2. At any time; COPYRIGHTABLE WORKS
a. If the registered mark becomes the 1. Literary and Artistic Works (BOLD-MAN-GAS-
generic name for the goods or services, PAP-CO)
or a portion thereof, for which it is
a. Books, pamphlets, articles and other
registered;
writings
b. If the mark has been abandoned;
b. Lectures, sermons, addresses,
c. If its registration was obtained dissertations prepared for Oral delivery,
fraudulently or contrary to the whether or not reduced in writing or
provisions of the IPC; other material form
d. If the registered mark is being used by, c. Letters
or with the permission of, the registrant
d. Dramatic, choreographic works
so as to misrepresent the source of the
goods or services on or in connection e. Musical compositions
with which the mark is used;
f. Works of Art
e. Non-use of the mark within the
g. Periodicals and Newspapers
Philippines, without legitimate reason,
for an uninterrupted period of 3 years. h. Works relative to Geography,
topography, architecture or science
If in a petition for cancellation of a trademark, it was
established that the petitioner was not its owner, prior i. Works of Applied art
registration can be cancelled without need of filing a
j. Works of a Scientific or technical
separate petition.
character
Transliteration – is an act, process or instances of
k. Photographic works
representing or spelling of words, letters or characters of
one language in the letters and characters of another l. Audiovisual works and cinematographic
language or alphabet. works
Translation – is an act, process or instance of m. Pictorial illustrations and
translating as rendering from one language or advertisements
representational system into another. n. Computer programs; and
o. Other literary, scholarly, scientific and
COPYRIGHTS artistic works (Sec. 172.1, IPC).

Copyright – A right over literary and artistic works which 2. Derivative Works
are original intellectual creations in the literary and a. Dramatizations, translations,
artistic domain protected from the moment of creation. adaptations, abridgements,
arrangements, and other alterations of
literary or artistic works;
Elements of copyright-ability
b. Collections of literary, scholarly, or
1. Originality – Must have been created by the artistic works and compilations of data
author’s own skill, labor, and judgment without and other materials which are original
directly copying or evasively imitating the work by reason of the selection or
of another (Ching Kian Chuan v. CA, G.R. No. coordination or arrangement of their
130360, Aug. 15, 2001). contents (Sec. 173, IPC).
2. Expression – Must be embodied in a medium  Derivative works shall be protected as new
sufficiently permanent or stable to permit it to works, provided that such new work shall not
be perceived, reproduced or communicated for a affect the force of any subsisting copyright upon
period more than a transitory duration. the original works employed or any part thereof,
or be construed to imply any right to such use of
the original works, or to secure or extend
Elements of originality copyright in such original works.
1. It is independently created by the author, and  There will still be originality sufficient to warrant
copyright protection if “the author, through his
2. It possesses some minimal degree of creativity
skill and effort, has contributed a distinguishable
variation from the older works.” In such a case,
of course, only those parts which are new are
protected by the new copyright. Hence, in such
a case, there is no case of infringement.
Rights of an author
1. Economic rights – The right to carry out,
Non-copyrightable works (INOD-PGTSS) authorize or prevent the following acts:
1. Idea, procedure, system, method or operation, a. Reproduction of the work or substantial
concept, principle, discovery or mere data as portion thereof
such
b. Carry-out derivative work
2. News of the day and other items of press (dramatization, translation, adaptation,
information abridgement, arrangement or other
transformation of the work)
3. Any Official text of a legislative, administrative
or legal nature, as well as any official translation c. First distribution of the original and
thereof each copy of the work by sale or other
forms of transfer of ownership
4. Pleadings
d. Rental right
5. Decisions of courts and tribunals – this refers to
original decisions and not to annotated decisions e. Public display
6. such as the SCRA or SCAD as these already fall f. Public performance
under the classification of derivative works,
g. Other communications to the public.
hence copyrightable
2. Moral rights – For reasons of professionalism
7. Any work of the Government of the Philippines
and propriety, the author has the right:
a. GR: Conditions imposed prior the
a. To require that the authorship of the
approval of the government agency or
works be attributed to him (attribution
office wherein the work is created shall
right)
be necessary for exploitation of such
work for profit. Such agency or office, b. To make any alterations of his work
may, among other things, impose as prior to, or to withhold it from
condition the payment of royalties. publication
b. XPN: No prior approval or conditions c. Right to preserve integrity of work,
shall be required for the use of any object to any distortion, mutilation or
purpose of statutes, rules and other modification which would be
regulations, and speeches, lectures, prejudicial to his honor or reputation;
sermons, addresses, and dissertations, and
pronounced, read, or rendered in courts
d. To restrain the use of his name with
of justice, before administration
respect to any work not of his own
agencies, in deliberative assemblies
creation or in a distorted version of his
and in meetings of public character
work (Sec.193, IPC).
(Section 176, IPC).
3. Droit de suite (Right to proceeds in subsequent
8. TV programs, format of TV programs (Joaquin v.
transfers or follow up rights) – This is an
Drilon, G.R. No. 108946, Jan. 28, 1999)
inalienable right of the author or his heirs to
9. Systems of bookkeeping; and receive to the extent of 5% of the gross
proceeds of the sale or lease of a work of
10. Statutes.
painting or sculpture or of the original
manuscript of a writer or composer, subsequent
to its first disposition by the author.
RIGHTS OF A COPYRIGHT OWNER
a. Rights which are not covered under
 The natural person whose name is indicated on
a Droit de suite (PEEWS)
a work in the usual manner as the author shall,
in the absence of proof to the contrary, i. Prints
presumed to be the author of the work. This is
ii. Etchings
applicable even if the name is a pseudonym,
where the pseudonym leaves no doubt as to iii. Engravings
identity of the author.
iv. Works of applied art
 The person or body corporate, whose name
v. Similar works wherein the
appears on the audio-visual work in the usual
author primarily derives gain
manner shall, in the absence of proof to the
from the proceeds of
contrary, be presumed to be the maker of said
reproductions.
work.
 An author cannot be compelled to perform his
Copyright protection commences from the time of
contract to create a work or for the publication
creation.
of his work already in existence. However, he
may be held liable for damages for breach of a. The broadcasting and other
such contract. communication to the public of their
performance; and
 Moral rights are personal rights independent
from the economic rights. Being a personal b. The fixation of their unfixed
right, it can only be given to a natural person. performance.
Hence, even if he has licensed or assigned his
2. The right of authorizing the direct or indirect
economic rights, he continues to enjoy the said
reproduction of their performances fixed in
moral rights.
sound recordings or audiovisual works or
 Moral rights shall last during the lifetime of the fixations in any manner or form;
author and in perpetuity after his death while
3. The right of authorizing the first public
the rights under Sections 193.2. 193.3. and
distribution of the original and copies of their
193.4. shall be coterminous with the economic
performance fixed in sound recordings or
rights, the moral rights shall not be assignable
audiovisual works or fixations through sale or
or subject to license.
rental of other forms of transfer of ownership;
 The person or persons to be charged with the
4. The right of authorizing the commercial rental to
posthumous enforcement of these rights shall
the public of the original and copies of their
be named in a written instrument which shall be
performances fixed in sound recordings or
filed with the National Library. In default of such
audiovisual works or fixations, even after
person or persons, such enforcement shall
distribution of them by, or pursuant to the
devolve upon either the author’s heirs, and in
authorization by the performer; and
default of the heirs, the Director of the National
Library. 5. The right of authorizing the making available to
the public of their performances fixed in sound
 Moral rights can be waived in writing, expressly
recordings or audiovisual works or fixations, by
so stating such waiver.
wire or wireless means, in such a way that
o XPN: Even in writing, waiver is not members of the public may access them from a
valid if: place and time individually chosen by them.
(Sec. 203, IPC as amended by R.A. No. 10372).
o Use the name of the author, title of his
work, or his reputation with respect to
any version/adaptation of his work,
Moral rights of performers – The performer, shall, as
which because of alterations,
regards his live aural performances or performances fixed
substantially tend to injure
in sound recordings, have the right to claim to be
literary/artistic reputation of another
identified as the performer of his performances, except
author
where the omission is dictated by the manner of the use
o Use name of author in a work that he of the performance, and to object to any distortion,
did not create mutilation or other modification of his performances that
would be prejudicial to his reputation.
 The performer loses his rights once he has
Exceptions to moral rights
authorized broadcasting or fixation of his
1. Absent any special contract at the time creator performance.
licenses/permits another to use his work, the
 Fair use and limitations to copyrights shall apply
following are deemed not to contravene
mutatis mutandis to performers (Ibid.).
creator’s moral rights, provided they are done in
accordance with reasonable customary  The performer shall be entitled to an additional
standards or requisites of the medium: remuneration equivalent to at least 5% of the
original compensation he received for the first
a. Editing
communication or broadcast in every
b. Arranging communication to the public or broadcast of a
performance subsequent to the first
c. Adaptation
communication or broadcast, unless otherwise
d. Dramatization provided in the contract.
e. Mechanical and electric reproduction
2. Complete destruction of work unconditionally Scope of the rights of producers on sound
transferred by creators (Sec. 197, IPC). recordings
Neighboring rights – rights of performers, producers of 1. The right to authorize the direct or indirect
sound recording and broadcasting organizations reproduction of their sound recordings, in any
manner or form; the placing of these
Scope of a performer’s rights
reproductions in the market and the right of
1. As regards their performances, the right of rental or lending
authorizing:
2. The right to authorize the first public distribution
of the original and copies of their sound
recordings through sale or rental or other forms 1. For literary and artistic works and derivative
of transferring ownership; works
3. The right to authorize the commercial rental to a. Works of authors who are nationals of,
the public of the original and copies of their or have their habitual residence in, the
sound recordings, even after distribution by Philippines;
them by or pursuant to authorization by the
b. Audio-visual works the producer of
producer; and
which has his headquarters or habitual
4. The right to authorize the making available to residence in the Philippines;
the public of their sound recordings in such a
c. Works of architecture erected in the
way that members of the public may access the
Philippines or other artistic works
sound recording from a place and at a time
incorporated in a building or other
individually chosen or selected by them, as well
structure located in the Philippines;
as other transmissions of a sound recording with
like effect. d. Works first published in the Philippines;
and
Fair use and limitations to copyrights shall apply
mutatis mutandis to performers (Sec. 210, IPC). e. Works first published in another
country but also published in the
Philippines within thirty days,
Scope of the rights of broadcasting organizations irrespective of the nationality or
residence of the authors (Sec. 221,
1. The rebroadcasting of their broadcasts
IPC).
2. The recording in any manner, including the
2. For performers
making of films or the use of video tape, of their
broadcasts for the purpose of communication to a. Performers who are nationals of the
the public of television broadcasts of the same Philippines;
3. The use of such records for fresh transmissions b. Performers who are not nationals of the
or for fresh recording (Sec. 211, IPC). Philippines but whose performances:
c. Take place in the Philippines; or
The provisions of Chapter VIII shall apply mutatis d. Are incorporated in sound recordings
mutandis to the rights of performers, producers of sound that are protected under IPC; or
recordings and broadcasting organizations:
e. Which has not been fixed in sound
1. Exclusive use of a natural person for own recording but are carried by broadcast
personal purposes qualifying for protection under IPC
(Sec. 222, IPC)
2. Short excerpts for reporting current events
3. Of sound recordings
3. Sole use for the purpose of teaching or for
scientific research a. Sound recordings the producers of
which are nationals of the Philippines;
4. Fair use of the broadcast (Sec. 212, IPC, as
and
amended by R.A. No. 10372).
b. Sound recordings that were first
published in the Philippines (Sec. 223,
Term of protection given to performers, producers IPC).
and broadcasting organizations
4. For broadcast
1. For performances not incorporated in recordings,
a. Broadcasts of broadcasting
50 years from the end of the year in which
organizations the headquarters of
the performance took place; and
which are situated in the Philippines;
2. For sound or image and sound recordings and
and for performances incorporated therein,
b. Broadcasts transmitted from
50 years from the end of the year in which
transmitters situated in the Philippines
the recording took place.
(Sec. 224, IPC)
3. In case of broadcasts, the term shall be 20
NOTE: The provisions of IPC shall also apply to works,
years from the date the broadcast took
performers, producers of sound recordings and
place. The extended term shall be applied only
broadcasting organizations that are to be protected by
to old works with subsisting protection under the
virtue of and in accordance with any international
prior law (Sec. 215, IPC).
convention or other international agreement to which the
Philippines is a party.
Persons whom the rights are granted
(copyrightable works applicable)
COLLECTIVE WORK JOINT WORK
professional institutions where such use is in the
Elements remain Separate elements merge
public interest and is compatible with fair use.
unintegrated and into a unified whole.
disparate. 9. The Public performance of a work, in a place
where no admission fee is charged.
Work created by 2 or more Work prepared by 2 or more
10. Public Display of the original or a copy of the
persons at the initiative authors with the intention
work not made by means of a film, slide,
and under the direction of that their contributions be
television image or otherwise on screen or by
another with the merged into inseparable or
means of any other device or process (e.g.
understanding that it will independent parts of the
Public display using posters mounted on walls
be disclosed by the latter unitary whole.
and display boards.
under his own name and
that of the contributions of 11. Any use made of a work for the purpose of any
natural persons will NOT be Judicial proceedings or for the giving of
identified professional advice by a legal practitioner.

Each author shall enjoy Joint authors shall be co-


copyright to his own owners. Co-ownership shall R.A. No. 10372 amended R.A. No. 8293, Sec. 184.1 (1),
contribution apply. which now states: the reproduction or distribution of
published articles or materials in a specialized format
The work will be attributed Joint authors shall be both exclusively for the use of the blind, visually- and reading-
to the person under whose entitled to the impaired persons: Provided, That such copies and
initiative and direction it acknowledgment as authors distribution shall be made on a nonprofit basis and shall
was created unless the of the work. indicate the copyright owner and the date of the original
contributor expressly publication.
reserves his right.

 Principle of automatic protection – Works


are protected by the sole fact of their creation
LIMITATIONS ON COPYRIGHT irrespective of their content, quality or purpose.
The following acts shall not constitute infringement of Such rights are conferred from the moment of
copyright: (PeMaCoP-TEEUP-DJ) creation.

1. Performance of a work, once it has been  Decompilation, which is the reproduction of the
lawfully made accessible to the public, if done code and translation of the forms of the
privately and free of charge or for a charitable or computer program to achieve the inter-
religious institution or society. operability of an independently created
computer program with other programs, may
2. The Making of quotations from a published work also constitute fair use
if they are compatible with fair use and only to
the extent justified for the purpose. 1. Other limitations on copyright

3. Communication to the public by mass media of 1. The fair use of a copyrighted work for criticism,
articles on current political, social, economic, comment, news reporting, teaching including
scientific or religious topic, lectures, addresses limited number of copies for classroom use,
and other works of the same nature scholarship, research, and similar purposes is
not an infringement of copyright. Decompilation,
4. As Part of reports of current events (e.g. music which is understood here to be the reproduction
played or tunes on the occasion of a sporting of the code and translation of the forms of a
event and such tunes were picked up during a computer program to achieve the
new coverage of the event). interoperability of an independently created
5. For Teaching purposes, provided that the source computer program with other programs may
and of the name of the author, if appearing in also constitute fair use under the criteria
the work, are mentioned. established by this section, to the extent that
such decompilation is done for the purpose of
6. Recording made in Educational institutions of a obtaining the information necessary to achieve
work included in a broadcast for the use of such such interoperability. (Sec. 185, IPC, as
educational institutions, provided that such amended by R.A. No. 10372).
recording must be deleted within a reasonable
period after they were first broadcast. 2. Copyright in a work of architecture shall include
the right to control the erection of any building
7. The making of Ephemeral recordings by a which reproduces the whole or a substantial part
broadcasting organization by means of its own of the work either in its original form or in any
facilities and for use in its own broadcast. form recognizably derived from the original,
8. The Use made of a work by or under the provided, that the copyright in any such work
direction or control of the government, by the shall not include the right to control the
National Library or by educational, scientific or reconstruction or rehabilitation in the same style
as the original of a building to which that 4. The reproduction in one back-up copy or
copyright relates (Sec. 186, IPC). adaptation of a computer program shall be
permitted, without the authorization of the
3. The private reproduction of a published work in
author of, or other owner of copyright in, a
a single copy, where the reproduction is made
computer program, by the lawful owner of that
by a natural person exclusively for research and
computer program, provided, the copy or
private study, shall be permitted, without the
adaptation is necessary for:
authorization of the owner of copyright in the
work but shall not extend to the reproduction of: a. The use of the computer program in
conjunction with a computer for the
a. A work of architecture in the form of
purpose, and to the extent, for which
building or other construction;
the computer program has been
b. An entire book, or a substantial part obtained; and
thereof, or of a musical work in graphic
b. Archival purposes, and, for the
form by reprographic means;
replacement of the lawfully owned copy
c. A compilation of data and other of the computer program in the event
materials; that the lawfully obtained copy of the
computer program is lost, destroyed or
d. A computer program except as
rendered unusable (Sec. 187, IPC).
provided in Section 189; and
e. Any work in cases where reproduction TYPE OF WORK DURATION
would unreasonably conflict with a
normal exploitation of the work or Single creation Lifetime of the creator and
would otherwise unreasonably in perpetuity after his death
prejudice the legitimate interests of the
author (Sec. 187, IPC). Joint creation Lifetime of the last surviving
co-creator and in perpetuity
4. Any library or archive whose activities are not
after his death
for profit may, without the authorization of the
author or copyright owner, make a limited
number of copies of Anonymous or 50 years after the date of
pseudonymous work their first publication;
2. the work, as may be necessary for such except where before the
institutions to fulfill their mandate, by expiration of said period,
reprographic reproduction: the author’s identity is
revealed or is no longer in
a. Where the work by reason of its fragile
doubt, the 1st two
character or rarity cannot be lent to
mentioned rules shall apply;
user in its original form;
or if unpublished, 50 years
b. Where the works are isolated articles from their making.
contained in composite works or brief
portions of other published works and Work of an applied art of 25 years from the time of
the reproduction is necessary to supply an artistic creation with the making.
them, when this is considered utilitarian functions or
expedient, to persons requesting their incorporated in a useful
loan for purposes of research or study article whether made by
instead of lending the volumes or hand or produced on an
booklets which contain them; and industrial scale
c. Where the making of such limited
copies is in order to preserve and, if Audio-visual works 50 years from date of
necessary in the event that it is lost, including those produced publication and, if
destroyed or rendered unusable, by process analogous to unpublished, from the date
photography or any of making
replace a copy, or to replace, in the
permanent collection of another similar process for making
library or archive, a copy which has audio-visual recordings
been lost, destroyed or rendered
unusable and copies are not available Newspaper Article Lifetime of the author and
with the publisher. in perpetuity after his deat

3. But it shall not be permissible to produce a The term of protection shall be counted from the 1st day
volume of a work published in several volumes of January of the year following the last publication
or to produce missing tomes or pages of
magazines or similar works, unless the volume,
tome or part is out of stock (Sec. 188, IPC, as Doctrine of fair use – “Fair use” permits a secondary
amended by R.A. No. 10372). use that “serves the copyright objective of stimulating
productive thought and public instruction without
excessively diminishing the incentives for creativity”.
grant licenses without the prior written consent of the
other owner or owners.
Factors that should be considered in order to
determine fair use
1. The purpose and character of the use, including COPYRIGHT INFRINGEMENT
whether such use is of a commercial nature or is
Copyright infringement – It is the doing by any
for non-profit educational purpose;
person, without the consent of the owner of the
2. The nature of the copyrighted work; copyright, of anything the sole right to do which is
conferred by statute on the owner of the copyright. The
3. The amount and substantiality of the portion
act of lifting from another’s book substantial portions of
used in relation to the copyrighted work as a
discussions and examples and the failure to acknowledge
whole; and
the same is an infringement of copyright.
4. The effect of the use upon the potential market
for or value of the copyrighted work.
Infringement
The fact that a work is unpublished shall not by itself bar
a finding of fair use if such finding is made upon 1. A person infringes a right protected under this
consideration of all the above factors (Sec. 182.2, IPC). If Act when one:
you copy to the extent that you reduce the marketability
2. Directly commits an infringement;
of the book, it is no longer fair use.
3. Benefits from the infringing activity of another
person who commits an infringement if the
Must carry rule – another limitation on copyright. It person benefiting has been given notice of the
obligates operators to carry the signals of local channels infringing activity and has the right and ability to
within their respective systems. This is to give the people control the activities of the other person;
wider access to more sources of news, information,
4. With knowledge of infringing activity, induces,
education, sports event and entertainment programs
causes or materially contributes to the infringing
other than those provided for by mass media and
conduct of another.
afforded television programs to attain a well informed,
well-versed and culturally refined citizenry and enhance
their socio-economic growth (ABS-CBN Broadcasting
 It is not necessarily required that the entire
Corporation v. Philippine Multimedia System, G.R. No.
copyrighted work, or even a large portion of it,
175769-70, Jan. 19, 2009).
be copied. If so much is taken that the value of
Published works – Those works which, with the consent the original work is substantially diminished,
of the authors, are made available to the public by wire there is an infringement of copyright and to an
or wireless means in such a way that members of the injurious extent, the work is appropriated.
public may access these works from a place and time
 It is no defense that the pirate did not know
individually chosen by them: provided, that availability of
whether or not he was infringing any copyright;
such copies has been such, as to satisfy the reasonable
he at least knew that what he was copying was
requirement of the public, having regard to the nature of
not his, and he copied at his peril. In cases of
the work.
infringement, copying alone is not what is
prohibited. The copying must produce an
PUBLIC PERFORMANCE COMMUNICATIONS TO
“injurious effect”.
THE PUBLIC OF A
PERFORMANCE Plagiarism – It is the practice of claiming or implying
original authorship of (or incorporating material from)
Performance at a place or at The transmission to the someone else’s written or creative work, in whole or in
places where persons public, by any medium, part, into one’s own without adequate acknowledgment.
outside the normal circle of otherwise than by
a family and that family’s broadcasting, of sounds of a
closest social acquaintances performance or the
COPYRIGHT PLAGIARISM
are or can be present. representations of sounds
INFRINGEMENT
fixed in a sound recording.
The unauthorized use of The use of another’s
It is performed at a specific The communication can be
copyrighted material in a information, language, or
time and place. (e.g. The accessed through wired or
manner that violates one writing, when done without
Pacquiao-Clottey Match in wireless means at a time
of the copyright owner’s proper acknowledgment of the
Dallas Texas Stadium) and place convenient to the
exclusive rights, such as original source.
viewer (e.g. The Pacquiao-
the right to reproduce or
Clottey Match watched via
perform the copyrighted
YouTube)
work, or to make
derivative works that build
If two or more persons jointly own a copyright or any
upon it.
part thereof, neither of the owners shall be entitled to
damages and profits, an award of statutory damages for
Copyright infringement is Plagiarism is specific as it refers
all infringements involved in an action in a sum
a very broad term that only to using someone else’s
equivalent to the filing fee of the infringement action but
describes a variety of work without proper
not less than Fifty thousand pesos (Php50,000.00).
acts. It may be acknowledgement.
duplication of a work,
rewriting a piece,
Factors to be considered by the court in awarding
performing a written work
statutory damages
or doing anything that is
normally considered to be 1. The nature and purpose of the infringing act;
the exclusive right of the
2. The flagrancy of the infringement;
copyright holder.
3. Whether the defendant acted in bad faith;
There is no copyright Public documents can be
4. the need for deterrence;
infringement on public plagiarized so long as it is not
documents. acknowledged. 5. Any loss that the plaintiff has suffered or is likely
to suffer by reason of the infringement; and
In copyright In plagiarism the copying need
6. Any benefit shown to have accrued to the
infringement, the copying not be substantial
defendant by reason of the infringement
must be substantial

In copyright Plagiarism, may exist even if


Copying is demonstrated by:
infringement, the copying none of the same words are
must refer to the used to express an idea. 1. Direct Evidence
expression of an idea.
2. By circumstantial evidence of access and
substantial inquiry (most common test)
a. ACCESS- having reasonable opportunity
Remedies in case of copyright infringement (IDID-
to view or hear the plaintiff’s work.
MS)
THRESHOLD INQUIRY: whether there is
1. Injunction reasonable opportunity to copy
2. Damages, including legal costs and other
expenses, as he may have incurred due to the
Criminal penalties in case of copyright infringement
infringement as well as the profits the infringer
may have made due to such infringement 1. Imprisonment of one (1) year to three (3) years
plus a fine ranging from Fifty thousand pesos
3. Impounding during the pendency of the action
(P50,000) to One hundred fifty thousand pesos
sales invoices and other documents evidencing
(P150,000) for the first offense.
sales
2. Imprisonment of three (3) years and one (1)
4. Destruction without any compensation all
day to six (6) years plus a fine ranging from One
infringing copies
hundred fifty thousand pesos to Five hundred
5. Moral and Exemplary damages (Sec. 216.1); or thousand (P500,000) for the second offense.
6. Seizure and impounding of any article, which 3. Imprisonment of six (6) years and one day to
may serve as evidence in the court proceedings. nine (9) years plus a fine ranging from Five
(Sec. 216.2, IPC) hundred thousand pesos (P500,000) to
P1,500,000 for the third offense.
4. In all cases, subsidiary imprisonment in cases of
Double damages in the ff circumstances:
insolvency.
1. Circumvents effective technological measures;
or
 In determining the number of years of
2. Having reasonable grounds to know that it will imprisonment and the amount of fine, the court
induce, enable, facilitate or conceal the shall consider the value of the infringing
infringement, remove or alter any electronic materials that the defendant has produced or
rights management information from a copy of a manufactured and the damage that the
work, sound recording, or fixation of a copyright owner has suffered by reason of the
performance, or distribute, import for infringement:
distribution, broadcast, or communicate to the
public works or copies of works without o Provided, That the respective maximum
authority, knowing that electronic rights penalty stated in Section 217.1. (a), (b)
management information has been removed or and (c) herein for the first, second,
altered without authority. third and subsequent offense, shall be
imposed when the infringement is
The copyright owner may elect, at any time before final committed by:
judgment is rendered, to recover instead of actual
o the circumvention of effective will not be conducting raids or seizures but will
technological measures; be coordinating with the said agencies.
However, as IP rights remain to be private
o the removal or alteration of any
rights, there must be a complaint from the IP
electronic rights management
right owner. So, if an author sees pirated copies
information from a copy of a work,
of his book in a certain store, he may notify
sound recording, or fixation of a
IPOPHL. IPOPHL can now initiate together with
performance, by a person, knowingly
any of the said agencies to address the problem.
and without authority; or
2. Establishment of the Bureau of Copyright
o the distribution, importation for
and other related rights (Secs. 1 and 3)
distribution, broadcast, or
communication to the public of works At present there is no entity performing the
or copies of works, by a person without more substantial function of policy formulation,
authority, knowing that electronic rights rule making, adjudication, research and
management information has been education, which is envisioned to be handled by
removed or altered without authority. the Bureau of Copyright. Although a Copyright
Division exists in the National Library, the
function of such office is merely to accept
 Affidavit evidence – An affidavit made before deposits of copyrighted works. The Copyright
the notary public in actions for infringement, Bureau is dedicated to serving the needs of the
reciting the facts required to be stated under the copyright-based industries and stakeholders
IPC. could give more focus and rally more resources
and support for the creative industry, which is
 As a prima facie proof, the affidavit shifts the
very important for protection of works by
burden of proof to the defendant, to prove the
Filipinos both here and abroad.
ownership of the copyrighted work.
3. Accreditation of collective management
 The amendments to the Intellectual Property
organizations or CMOs (Sec. 10)
Code have removed the original limitation of
three copies when bringing legitimately acquired CMOs are organizations that enforce the
copies of copyrighted material into the country. copyright of the copyright holders. Through this
Only the importation of pirated or infringed mandate, IPOPHL will be able to monitor and
material is illegal. As long as they were legally promote good corporate governance among
purchased, you can bring as many copies you CMOs, benefitting not only the rights holders
want, subject to Customs regulations. themselves but also the users of copyrighted
works. Members of the Philippine Retailers
 Reproduction of copyrighted material for
Association (PRA), mall owners, restaurants, and
personal purposes is not punishable by RA
other heavy users of music in their
10372. Infringement in this context refers to the
establishments will greatly benefit from this
economic rights of the copyright owner.
provision, as they are ensured that only
Transferring music from a lawfully acquired CD
legitimate collecting agencies can collect
into a computer, then downloading it to a
royalties from them on behalf of copyright
portable device for personal use, is not
owners.
infringement. But if, multiple copies of the CD
were reproduced for sale, then infringement 4. Clarification of the concept of copyright
occurs. infringement, including secondary liability
(Secs. 22 and 23)
 Mall owners are not automatically penalized for
the infringing acts of their tenants. When a mall The provisions on copyright infringement have
owner or lessor finds out about an infringement been refined to include contributory
activity, he or she must give notice to the infringement (secondary liability), circumvention
tenant, then he or she will be afforded time to of technological measures and rights
act upon this knowledge. The law requires that management information as aggravating
one must have both proven knowledge of the circumstances, and the option to collect
infringement, and the ability to control the statutory damages instead of actual damages.
activities of the infringing person, to be held However, under Sec. 22 of the amendments, to
liable. The mall owner must also have benefitted be secondarily liable, a landlord or mall must:
from the infringement (Ibid). (1) benefit from the infringing activity; (2) must
have been given notice of the infringing activity
and a grace period to act on the same; and (3)
Other beneficial provisions brought by RA 10372 has the right and ability to control the activities
of the person who is doing the infringement. The
1. Grant of enforcement powers to IPOPHL
complainant has the burden of proof to provide
(Sec. 2)
evidence that all 3 elements are present. If a
The law grants visitorial powers to IPOPHL and landlord or mall owner is not aware of the
allows it to undertake enforcement functions infringement, he cannot be liable for
with the support of concerned agencies such as infringement, even if he benefits from it (from
PNP, NBI, BOC, OMB and LGUs. IPOPHL itself
rental payments) or has control over the
premises.
5. Fair use for the blind, visually- and reading-
impaired (Sec. 11)
This provision would give a special fair use
exemption for the non-commercial reproduction
of works for use by visually-impaired persons.
Before this amendment, hundreds of thousands
of blind Filipinos could not buy Braille works at
cheap prices because copyright protection
operates. Now with this amendment, blind and
visually impaired Filipinos can have easier
access to copyrighted works in Braille.
6. Formulation of IP Policies within
universities and colleges (Sec. 27)
This will ensure that the rights of the academic
community (professors, researchers, students)
over their literary, scholarly and artistic works
are clearly delineated and respected. With an IP
Policy in existence, these sectors within the
academe will have a clear delineation of their
respective rights and benefits, thus, avoiding
disputes and costly litigation within their ranks
which would be detrimental to education,
research and development.

RULES OF PROCEDURE FOR INTELLECTUAL


PROPERTY RIGHTS CASES (A.M. No. 10-3-10-SC)
 Regional Trial Courts designated by the Supreme
Court as Special Commercial Courts
 Registration and deposit of a work with the
National Library or the Intellectual Property
Office shall not carry with it the presumption of
ownership of the copyright by the registrant or
depositor, nor shall it be considered a condition
sine qua non to a claim of copyright
infringement.