IP LECTURE NOTES

I. Basic Intellectual Property Information

 What is IP? (WIPO Definition)

IP refers to creations of the mind: inventions, literary and artistic
works , and symbols, names, images and designs used in commerce.

 Pertinent Constitutional Provisions

a) Article XIV, Sec. 13 – The Benefit to the People Proviso
“The state shall protect and secure the exclusive right of
scientists, inventors, artists and other gifted citizens to their
intellectual property and creations, particularly when beneficial
to the people for such period as may be provided by law.”

b) Art. XIV- Secs 10 and 12

ARTICLE XIV

SCIENCE AND TECHNOLOGY

Section 10. Science and technology are essential for national development and
progress. The State shall give priority to research and development, invention,
innovation, and their utilization; and to science and technology education, training,
and services. It shall support indigenous, appropriate, and self-reliant scientific and
technological capabilities, and their application to the country's productive systems
and national life.

Section 12. The State shall regulate the transfer and promote the adaptation of
technology from all sources for the national benefit. It shall encourage the widest
participation of private groups, local governments, and community-based
organizations in the generation and utilization of science and technology.

c) Art. XII, Sec 6 vis a vis Sec. 2 of the IP Code

ARTICLE XII

NATIONAL ECONOMY AND PATRIMONY

Section 6. The use of property bears a social function, and all economic agents shall
contribute to the common good. xxxxx

IP Code

Sec. 2. Declaration of State Policy

The State recognizes that an effective intellectual and industrial property

system is vital to the development of domestic and creative activity, facilitates
transfer of technology, attracts foreign investments, and ensures market access for
our products. It shall protect and secure the exclusive rights of scientists,
inventors, artists and other gifted citizens to their intellectual property and
creations, particularly when beneficial to the people, for such periods as provided
in this Act.

The use of intellectual property bears a social function. To this end, the State
shall promote the diffusion of knowledge and information for the promotion of
national development and progress and the common good.
It is also the policy of the State to streamline administrative procedures of
registering patents, trademarks and copyright, to liberalize the registration on the
transfer of technology, and to enhance the enforcement of intellectual property
rights in the Philippines. (n)
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d) Art XII, Secs. 14 and 19

Section 14. The sustained development of a reservoir of national talents consisting

of Filipino scientists, entrepreneurs, professionals, managers, high-level technical
manpower and skilled workers and craftsmen in all fields shall be promoted by the
State. The State shall encourage appropriate technology and regulate its transfer
for the national benefit.

Section 19. The State shall regulate or prohibit monopolies when the public
interest so requires. No combinations in restraint of trade or unfair competition
shall be allowed.

 Civil Law Basis – Articles 712; 721;722; 724

 Art. 721 of the Civil Code
By intellectual creations, the following persons acquire ownership
(ACPS) :

a) the AUTHOR , with regard to his literary,dramatic, historical, legal,

philosophical, scientific or other work;
b) the COMPOSER, as to his musical composition;
c) the PAINTER, SCULPTOR or other ARTIST, with respect to product
of his art ;
d) the SCIENTIST or TECHNOLOGIST or any other person with
regard to his discovery or invention

 Historical Background – Mirpuri v. C.A (G.R No. 114508, 19 Nov.

1999 ; Tañada vs. Angara [G.R. No. 118295. May 2, 1997.] EN BANC

Dev’t of IP in the world

PATENTS
o precursors of modern patent system began in England in the
12th century
o person who introduced a technology imported abroad was
granted an incentive (LETTERS PATENT) which means an open
letter =gives him monopoly powers or sole right to use it for a
period enough to establish a new industry to shield him from
competition during the formative years of new undertaking
o based on such rationale, ist modern patent law was enacted in
the Republic of Venice – 1474
o 1628 – Statute of Monopolies (England) 14 yrs protection from
grant
o 1790 - USA
o 1815 - France
o 1826 - Spain
o 1864 – Italy
o 1885 - Japan

COPYRIGHT (territorial in nature)

o 1709 – Statute of Anne (England) first copyright law in the world
that can be traced to the invention of printing
o 1741 (Denmark) copyright law
o 1790 – U.S.A (copyright law and patent law)
o 1791 & 1793 (Copyright law in France)
o 1834 – Chile
o 1849 – Peru
o 1869 - Argentina
o 1871 – Mexico
o 1886 , September – BERNE Convention for the protection of
literary and artistic works is the first international agreement for
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the protection of the rights of authors held in Berne, Switzerland

due to the need for a uniform system of protection.
o In view of fundamental changes in the means of creation, use
and dissemination of literary and artistic works the following
revisions cropped up:
Berlin -1908
Rome – 1928
Brussels -1948
Stockholm -1967
Paris -1971

TRADEMARKS
o In ancient cultures, trademarks were used by the makers of
bricks, leather goods, books, weapons and other products to
indicate their origins
o Purpose of trademark is to establish a connection between a
particular craftsman and his work in the mind of the consumer.
o Middle of 19th century, common law in England provided
protection for trademarks
o 1857 –France enacted a law in TM
o 1870 – US, Trademark law was declared unconstitutional .
reason : covers also registration of trademarks used in
connection with goods traded interstate instead of limiting it
to intrastate commerce
o 1905- US New Trademark Law

*** Due to international trade it became desirable to obtain protection

for trademarks and inventions in several countries. The only problem is
the principle of independence of industrial property meaning laws on
trademark or patents differ from one country to another.

*** The fate of an application for the registration of a trademark or an

invention in a particular country has no influence whatsoever on the fate of
an application for registration of the same trademark or invention in another
country.

*** Applications have to be made roughly at the same time in all countries
where he wants protection.

o Birth of the PARIS CONVENTION for the protection of industrial

property in Paris in 1883.
o Revisions
Rome – 1886
Madrid – 1890 & 1891
Brussels – 1897 & 1900
Washington – 1911
The Hague – 1925
London – 1934
Lisbon - 1958
Stockholm - 1967

Dev’t of IP in Southeast Asia

o IP in SE Asia has not kept pace with its economic growth due
to 2 factors :
a) not all SE Asian countries are parties to the Berne
Convention (only Malaysia, Phils and Thailand) are
members; for the Paris Convention (only Malaysia,
Philippines, Indonesia, Singapore and Vietnam are
members of the convention
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b) limited use of industrial property – in 1993 patent

applications in ASEAN was less than 5 % of patents in
Japan and 8 % of that in US; over 4% of that in
Western Europe
o due to AFTA , the development of IP in Southeast Asia is
likely to be rapid in the near future

Dev’t of IP in the Philippines

 IP system followed those of Spain and US

History of Copyright Laws

1. Law on Intellectual Property on January 10, 1879 published in the Gaceta de

Madrid on Jan. 12, 1879.

2. Spanish Copyright Law came to the Phil by way of the Royal Decree of May
5, 1887.

3. US Copyright Law under the Treaty of Paris of 10th December 1898.

4. Act No. 3134 by the Philippine Legislature on March 6, 1924. 1 st intellectual

property law patterned after the US Copyright Law.

5. Republic Act No. 167, An Act to Provide the Transfer of Powers, Duties and
Functions Relating to the Registration and Protection of Copyrights From the
National Library to the Patent Office. June 20, 1947.

6. Civil Code (1949), Art. 721-724 of Rep. Act No. 386 (of. Provisions are on
“Intellectual Creations”.

7. Presidential Decree No. 49, “Decree on Intellectual Property.” passed

during Martial Law on December 15, 1972.

8. Presidential Decree No. 285, “Authorizing the Compulsory Licensing or

Reprinting of Educational Scientific or Cultural Books and Materials as a
Temporary or Emergency Measure Whenever the Prices Thereof Become So
Exorbitant as to be Detrimental to the National Interest.” September 3, 1973

9. Presidential Decree No. 400, “Amending Presidential Decree No. 285.” March
1, 1974.

10. Civil Code (1949), Art. 721-724 of Rep. Act No. 386 (of. Provisions are on
“Intellectual Creations”)

11. Presidential Decree No. 1203, “Further Amending Presidential Decree 285, as
Amended by Presidential Decree No. 400.” September 27, 1977

12. Republic Act No. 8792, “An Act Providing for the Recognition and Use of
Electronic Commercial and, Non-Commercial Transactions, Penalties for
Unlawful Use Thereof, and Other Purpose,” popularly known as the E-
Commerce Law, signed into law on June 14, 2000, Implementing Rules and
Regulations of the Electronic Commerce Act one month after the approval of
the law, 13th July 2000.
13. Republic Act No. 8293, “An Act Prescribing the Intellectual Property Code and
Establishing the Intellectual Property Office,” passed June 6 1997 and took
effect January 1, 1998.
 Incorporated provisions of international agreements wherein the
Phil. is a signatory such as the Berne Convention for the Protection
of Literary and Artistic Works ( August 1, 1951), Exchange of Notes
with the United States for the protection and enforcement of
intellectual property rights on April 6, 1993, WTO TRIPS Agreement
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(Agreement on Trade Related Aspects in Intellectual Property

Rights) on Dec. 15, 1994 and the Dec. 1996 World Intellectual
Property Organization (WIPO) Geneva Protocol which covered the
protection of digital technology.

Trademarks and Patents

 Trademark law governed by a Trademark Law promulgated by Queen Ma.

Cristina of Spain on 26 Oct. 1888 ( a modified version version of the Spanish
TM law)

Patents – unknown whether Spanish Patent Law was enforced in the
Philippines; records show that Spanish authorities referred patent matters to
Spain

TREATY OF PARIS (Dec. 10 1898)

 Art. 13 of TP provides that copyrights, trademarks and patents tha were granted by
the Spanish authorities continue to have legal effect in the Philippines

AMERICAN REGIME

o 1903 (Mar. 6) – Act No. 666 Trademarks and Tradename Law

of the Philippine Islands
o 1909 (Mar. 6) – Act No 3134 (Copyright law of the Philippine
Islands)
o 1913 (Feb. 10) – US Patent Laws applicability in the
Philippine island

Trademark system was under the Bureau of Forestry

Patent system under the Executive Bureau.

After Philippine Independence

o 1947 – Philippine Patent Office was established

RA 165 Phil Patent Law
RA 166 Trademark Law
o 1972 (Dec. 15) – effectivity date of PD 49 on Copyright
o 1951 (August 1) – Philippines became contracting party to Berne Convention for
Protection of Literary and Artistic works
o 1965(Sept. 27) – Philippines became contracting paty to Paris convention for
protections of industrial property
o 1980 – Philippines became contracting party to Convention(establishing the
WIPO/accorded to GATT)
o 1986- PPO was consolidated with the TTB to become the BPTTT
o 1994 – Phils is included in the signatories to Uruguay Round Final Act, the
Agreement establishing the WTO.
o Phils ratified the agreement ( SC upheld the constitutionality of senate’s
ratification to the agreement)
o January 1, 1998 – effectivity of the IP Code

 Intellectual Property and Economics

o Sec. 2 (RA 8293) Declaration of State Policy – effective
industrial property and IP system is vital to the
development of domestic and creative activity. It also :
a) facilitates transfer of technology
b)attracts foreign investment
c) ensures market access for our products
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o IP encourages creativity which promotes economic

development
o IP confers monopoly rights to authors, merchants and
inventors. It essentially protects info which is costly to
produce but relatively inexpensive to transmit or info is
difficult to appropriate

o Copyright ensures the payment of adequate royalties to

authors of literary and artistic works as compensation
for their efforts so they can devote fully their energies
to the production of such works
o Trademarks promote an open market & ensure free
competition by enabling consumer to make informed
choices between various goods
o Patents secure the result of investment in research and
innovation

Amendments to Republic Act No. 8293 or to the Intellectual Property Code or

RA 8293

1. Republic Act No. 9168, - June 7, 2002 (Philippine Plant Variety Protection
Act of 2002)

Section 2. Statement of Policies. –

a) The State recognizes that an effective intellectual property system in
general and the development of new plant variety in particular is vital in
attaining food security for the country. To this end, it shall protect and
secure the exclusive rights of breeders with respect to their new plant
variety particularly when beneficial to the people for such periods as
provided for in this Act.
b) The use of intellectual property bears a socioeconomic function. To this
end, the State shall promote the diffusion of technology and information for
the promotion of national development and progress for the common good

2. Republic Act No. 9239, Feb. 10, 2004 - Regulating Optical Media,
Reorganizing the VIDEOGRAM REGULATORY BOARD
3. Republic Act No. 9502, June 6, 2008 – Cheaper and Quality Medicines Act
4. Republic Act No. 10055, entitled "An Act Providing the Framework and
Support System for the Ownership, Management, Use, and
Commercialization of Intellectual Property Generated from Research and
Development Funded by Government and for Other Purposes" also known
as the "Philippine Technology Transfer Act of 2009

II. Classes of Intellectual Property – (2 Main Divisions)

o Copyright and related rights

o Industrial property
1. distinctive signs – trademarks, service marks and
geographic indications

2. IP relating to technological advances – patent, industrial

designs, lay-out designs, protection of undisclosed
information

III. IPR under the IP Code

1. Copyright and related rights
2. Trademarks and Service Marks
3. Geographical Indications
4. Industrial Designs
5. Patents
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6. Lay-out Designs (Topographies) of Integrated Circuits (RA

9150)
7. Protection of Undisclosed Information

IV. International Treaties/ Conventions to which the Philippines is a

Signatory

1) Convention creating the WIPO

2) Uruguay Round (creating the WTO)
3) Paris Convention
4) Berne Convention
5) Budapest Treaty
6) Patent Cooperation Treaty
7) WIPO Copyright Treaty
8) Madrid Protocol

WIPO and WTO

o Berne and Paris conventions had separate international secretariats to

administer the 2 conventions. They were later placed under the supervision
of the Swiss Federal government with their headquarters in Berne.
o 1893, the two secretariats united and after undergoing several changes
became the United International Bureau for the Protection of Intellectual
Property (BIRPI, the acronym for the French version of the name)
o 1960 – BIRPI moved its headquarters to Geneva
o 1967 – diplomatic conference on IP in Stockholm (creation of WIPO) to
succeed BIRPI
o 1974 – WIPO became a specialized agency of the UN

Relationship between WIPO and WTO

o US believed that issues on IP protection involves trade

o GATT (General Agreement on Tariff and Trade) is the main
multilateral treaty on the elimination of trade barriers.
o US advocated that IP issues be addressed under the
auspices of GATT because it has dispute settlement
mechanism
o Developing countries opposed this because of the view that
their interests would be better protected within the framework
of WIPO due to their numerical number
o Developing countries urged WIPO to draft its own treaty for a
dispute resolution mechanism ( said proposals not adopted for
various reasons

WTO

o 1993 – Uruguay Round of the multilateral trade negotiations

under the auspices of GATT was concluded on Dec. 15, 1993
which involved discussions for the first time on the protection of
intellectual property in relation to international trade
o countries can’t agree on the most basic issues of the agenda
such as :
1. coverage of IP
2. minimum levels of protection
3. adoption by member countries of procedures for the
enforcement of IPR
o discussions collapsed on 2 occasions but later paved the way for
the Agreement on Trade Related Aspects of IPR (TRIPS
Agreement ) which took effect on Jan. 1, 1995
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o also led to the agreement establishing the WTO, effective Jan. 1,

1995

International Treaties Protecting Copyrights

1. Berne Convention – for protection of literary works, established in Aug. 1,

1951.
Core Principles:
a) national treatment – treat foreigners the way you protect nationals
b) principle of automatic protection – no need to register copyrights
c) principle of independence of protection – nationals from different states
should have protection of their own works

2. TRIPS Agreement – Trade Related Aspects of IP Rights, a sub-agreement of

the GATT,

Core Principles:

a) Principle of independence of protection of Intellectual property

b) National treatment – of the IP owner
c) Most favored nation principle – treat all signatories similarly, no special
treatment should be given to any nation

Establishment of minimum standards of protection as to enforcement of IPR

transnationally is likewise embodied in the TRIPS agreement as one of its salient
features

Notable Features of the TRIPS Agreement

1. incorporates by reference most of the standards of protection of

copyright/related rights under the two conventions
2. explicit recognition of computer software as proper subject of
copyright
3. explicit recognition of micro-organisms and non-biological
processes for the production of plants and animals as patentable
4. includes substantial number of additional obligations on matters
where the Berne and Paris Conventions were silent or
inadequate, eg :

a) adoption by member countries of procedures for

enforcement of IP
b) provides a dispute resolution mechanism for member
countries

TRIPS Compliance commitments

o Jan. 1, 1996 – all provisions of TRIPS must be complied by

developed countries
o Jan. 1, 2000 – for developing countries
o Jan. 1, 2006 – least developed countries

***WTO and IPO has a mutually supportive relationship. WTO

has a dispute resolution mechanism, while WIPO promotes
IP in developing countries. The two concluded an agreement
which took effect on Jan. 1, 1996 providing cooperation in areas
such as :
2. access
3. collection
4. translation of national laws and regulation