I.

IP IN THE PHILIPPINES1
The protection and promotion of IP rights is a national policy enshrined in the 1987 Philippine
Constitution. Article IV Section 13 mandates the State to 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 period as may be provided by law.

A. STATUTES, IP TREATIES AND FTAs

1. Intellectual Property Laws

The primary law which governs IP protection and enforcement in the Philippines is the
Intellectual Property Code (IP Code),2 which was enacted to comply with the country’s
commitments under the Agreement on Trade-Related Aspects of Intellectual Property Rights
(TRIPS). It provides for the protection and enforcement of patents, utility models, industrial
designs, trademarks and service marks, copyrights and neighboring rights and sets out the legal
framework for IP protection and enforcement in the Philippines.

In 2001, Republic Act No. 91503 was enacted, amending certain sections of the IP Code to
provide protection for layout designs (topographies) of integrated circuits.

In preparation for its accession to the 1991 Act of the UPOV Convention (UPOV 1991), the
Philippines enacted the Philippine Plant Variety Protection Act4 in 2002, to protect and
secure the exclusive rights of breeders with respect to their new plant variety.

In 2008, with the passage of the Universally Accessible Cheaper and Quality Medicines Act
(Cheaper Medicines Act),5 the IP Code was amended: (1) to allow, prior to the expiration of a
drug patent, the testing, production and registration of generic versions so that these could be
sold immediately upon the expiration of the patents; (2) to prevent the evergreening of patents,
through the patenting of new uses for known substances; and (3) to allow parallel importation of
patented medicines from countries where the prices are significantly lower than the prevailing
price in the Philippines.

In 2013, the IP Code was further amended by Republic Act 10372, which was enacted, among
others, to comply with the Philippines’ treaty obligations under the WIPO Copyright Treaty
(WCT) and the WIPO Performances and Phonograms Treaty (WPPT). It also established the
Bureau of Copyrights, which was granted original jurisdiction to resolve disputes relating to the
terms of a license involving the author’s right to public performance or other communication of
his work, and was authorized to accept, review and decide on applications for the accreditation
of collective management organizations or similar entities.

2. IP Related Laws
Other than the IP laws that were primarily enacted for the protection and enforcement of IP
rights, there are IP related laws that provide additional IP protection and remedies for
infringement.

The Electronic Commerce Act,6 which was enacted to ensure network security in electronic
commerce transactions, penalizes hacking, cracking or any unauthorized access into or
interference in a computer system/server or information communication system, in order to
corrupt, alter, steal, or destroy, without the knowledge and consent of the owner of the computer

1
Vilchez, M.G., A Study on the Philippine Readiness for the Trans-Pacific Partnership: Focus on Intellectual Property, Part
1, USAID-TRADE Project, March 31, 2016
2
Republic Act 8293
3
An Act Providing for the Protection of Layout-Designs (Topographies) of Integrated Circuits, Amending for the
Purpose Certain Sections of Republic Act 8293, Otherwise Known as the Intellectual Property Code of the Philippines
and for Other Purposes
4
Republic Act 9168
5
Republic Act 9502
6
Republic Act 8792
or information and communication system, resulting in the corruption, destruction, alteration,
theft or loss of electronic data messages or electronic documents. 7 The Act also penalizes the
piracy of protected material, copyrighted works, including legally protected sound recordings or
phonograms, or information material on protected works, through the use of telecommunication
networks, such as, but not limited to, the internet, in a manner that infringes intellectual property
rights.8

The Optical Media Act9 was enacted to provide the legal framework to regulate the
manufacture, mastering, replication, importation and exportation of optical media. The avowed
purpose of the Act is to ensure the protection and promotion of IP rights. Among others, it
prohibits the importation, exportation, acquisition, sale or distribution of, or possession or
operation of manufacturing equipment, parts and accessories, and the mastering, manufacture,
replication, importation or exportation of optical media, without obtaining the necessary licenses
from the Optical Media Board (OMB). It also penalizes the mastering, manufacture or replication
of optical media without affixing or installing in the resulting products the Source Identification
(SID) code, and/or such other codes prescribed, assigned and authorized by the OMB, or
affixing false SID codes or other codes.

The Anti-Camcording Act10 penalizes persons who, at a time when copyright subsists in a
cinematographic film or other audiovisual work or its soundtrack, and without the authorization
of the copyright owner or exclusive licensee thereof: (a) use or attempt to use an audiovisual
recording device to transmit or make a copy of any performance in an exhibition facility of such
cinematographic film or other audiovisual work or its soundtrack, or any part thereof; (b) have in
his/her possession, an audiovisual recording device in an exhibition facility, with the intent of
using or attempts to use the audiovisual recording device to transmit or make a copy of any
performance in the exhibition facility of such cinematographic film or other audiovisual work or
its soundtrack, or any part thereof; or (c) aid, abet or connive in the commission of the such
prohibited acts.

The Cybercrime Prevention Act11 (R.A. 10175) includes cyber-squatting among cyber-crime
offenses and all crimes defined and penalized by the Revised Penal Code and special laws, if
committed by, through and with the use of information and communications technologies.
Special laws include the IP Code and other IP related laws that provide for criminal penalties for
their violation.
The Anti-Cable Television and Cable Internet Tapping Act 12 penalizes persons who: (a)
intercept or receive, or assist in intercepting or receiving, any signal offered over a cable
television system or a cable internet system by tapping, making or causing to be made, any
connection to an existing CATV System/Network or Cable Internet System/Network without the
authority of the concerned CATV Service Provider or Cable Internet Service Provider; (b)
record, reproduce, distribute, import or sell, any intercepted or received CATV System/Network
signals for commercial purposes without the authority of the concerned CATV Service Provider
or Cable Internet Service Provider; and (c) use or receive any direct or indirect benefit, from any
CATV System/Network or Cable Internet System/Network with knowledge that it is a result of
any of acts enumerated in Sections 4(a) and 4(b) of said Act.

3. IP Treaties and Conventions

The Philippines is a member of the following treaties administered by the World Intellectual
Property Office (WIPO): Berne Convention (1951), Universal Copyright Convention (1952),
Paris Convention (1965), WIPO Convention (1980), Rome Convention (1984), Agreement on
Trade Related Aspects of Intellectual Property (1995), Patent Cooperation Treaty (2001), WIPO
Copyright Treaty (2002), WIPO Performances and Phonograms Treaty (2002) and the Madrid
Protocol (2012).

7
Ibid, Section 33(a)
8
Ibid, Section 33(b)
9
Republic Act 9239
10
Republic Act 10088
11
Republic Act 10175
12
Republic Act 10515
4. Bilateral and Multi-Lateral Freet Trade Agreements
The Philippines is a signatory to several IP-relevant bilateral treaties such the Agreement(s) on
the Reciprocal Protection and Promotion of Investments entered into with France (1996), 13
Canada (1996),14 Argentina (2002),15 and Chile (2002),16 and the Economic Partnership between
Japan and the Philippines (2008).17

The Philippines is a member of the Association of Southeast Asian Nations (ASEAN) and as
such member, has entered into various IP related multi-lateral treaties, including the Agreement
on the Promotion and Protection of Investment in ASEAN (1988),18 the ASEAN Trade in Goods
Agreement (2010)19 and the Agreement Establishing the ASEAN-Australia-New Zealand Free
Trade Area (2010).20 The Philippines has also acceded to and ratified the ASEAN Framework
on Intellectual Property (1995),21 which has yet to enter into force upon the deposit of
instruments of ratification or acceptance by all signatory governments with the Secretary-
General of the ASEAN.
B. IP PROTECTION
Under the IP Code, protection against trademark infringement is granted upon registration with
the Intellectual Property Office (IPO). In the case of well-known marks, unregistered marks are
also protected with respect to identical or similar goods or services. Both registered and
unregistered marks are protected against unfair competition.

Inventions, utility models and industrial designs are protected through registration with the IPO.
Such protection retroacts to the date of the filing of the patent/ utility model/ industrial application
such that, upon the issuance of the patent or certificate of registration, the rights holder can file
a case for infringing acts, including those done from the time of the application and prior to the
issuance of the patent or certificate of registration.

Copyright protection commences from the time of creation, without need of registration.
Certificates of deposit, issued by the National Library or the IPO, serve as evidence to establish
the subsistence and ownership of copyright to a work.

C. IP ENFORCEMENT

1. Judicial Remedies
Civil and criminal remedies are available to IP owners in cases of IP rights violation. Complaints
for violation of the IP rights may be filed with the appropriate regional trial courts (RTC), which
have specially designated commercial courts for the adjudication of commercial disputes,
including those involving IP. In the adjudication of IP disputes, the RTC has authority to grant
provisional remedies such as temporary restraining order (TRO) and/or preliminary injunction
and to issue warrants for the search and seizure of infringing goods as well as implements and
materials used in committing the infringing act. Decisions of the RTC are appealable to the
Court of Appeals and the Supreme Court.

13
Available at: http://www.wipo.int/wipolex/en/details.jsp?id=3432
14
Available at: http://www.wipo.int/wipolex/en/other_treaties/details.jsp?group_id=23&treaty_id=760
15
Available at: http://www.wipo.int/wipolex/en/other_treaties/details.jsp?group_id=23&treaty_id=703
16
Available at: http://www.wipo.int/wipolex/en/other_treaties/details.jsp?group_id=23&treaty_id=796
17
Available at: http://www.wipo.int/wipolex/en/other_treaties/details.jsp?
group_id=23&treaty_id=409http://www.wipo.int/wipolex/en/other_treaties/details.jsp?group_id=23&treaty_id=409
18
Available at: http://www.wipo.int/wipolex/en/other_treaties/details.jsp?group_id=24&treaty_id=444
19
Available at: http://www.wipo.int/wipolex/en/other_treaties/details.jsp?group_id=24&treaty_id=315
20
Available at: http://www.wipo.int/wipolex/en/other_treaties/details.jsp?group_id=24&treaty_id=421
21
Available at: http://www.wipo.int/wipolex/en/other_treaties/parties.jsp?
treaty_id=317&group_id=21http://www.wipo.int/wipolex/en/other_treaties/parties.jsp?treaty_id=317&group_id=21
2. Administrative Remedies
Under the IP Code, the Bureau of Legal Affairs (BLA) of the IPO has original jurisdiction to hear
cases involving the opposition to and cancellation of trademark registrations and the
cancellation of patent, utility model and industrial design registrations. The BLA also has
original jurisdiction to hear administrative complaints for IP violation, where the damages sought
are not less than Two Hundred Thousand Pesos (Php200,000). The BLA is authorized to grant
provisional remedies in accordance with the Rules of Court. The Director of Legal Affairs also
has the power to hold and punish for contempt all those who disregard orders or writs issued in
the course of the proceedings.

Under Customs Administrative Order No. 6-2002, the Bureau of Customs (BoC) has the
authority to issue hold or alert orders on goods suspected to be infringing, ex officio or upon
request of the IP rights holder, and examine the same. Upon the finding of a prima facie case of
infringement, the Collector of Customs is authorized to issue a warrant of seizure and detention
against the shipment. The Collector of Customs has the authority to hear and determine
whether the seized goods are infringing, and upon a finding of infringement, to order the
forfeiture of the infringing goods.

Under the Optical Media Act, the Optical Media Board has the authority to hear and resolve
administrative cases against violators of the Act and impose administrative sanctions including
the imposition of fines and penalties; confiscation of optical media, manufacturing material or
equipment used in the mastering, manufacture or replication of optical media; and suspension,
non-renewal or cancellation of the license to operate and/or closure of establishments or entities
that violate the provisions of the Act. The Board has the power to issue subpoena or subpoena
duces tecum to compel the attendance of witnesses and production of documents and other
effects.

3. Alternative Dispute Resolution

To facilitate the resolution of IP disputes, the RTC is authorized to refer civil cases for IP
infringement to the Philippine Mediation Center (PMC) for court-annexed mediation. If the
parties reach an amicable settlement, the compromise agreement is submitted to the RTC for
approval. Once approved, the court will issue a judgment based on the compromise
agreement, which may be enforced as in any court judgment on the merits. If the parties do not
reach an amicable settlement at the court-annexed mediation, the case goes back to the court
for judicial dispute resolution the judge. If an amicable settlement is reached and approved by
the judge, the court will issue a judgment based on the compromise agreement. If the parties
fail to reach an amicable settlement through judicial dispute resolution, the case will proceed to
trial. The decision of the RTC is appealable to the Court of Appeals (CA). At the CA level, the
Court may refer the case to PMC-Appeals Court Mediation. 22

At the IPO, cases pending before the BLA and the Office of the Director General (ODG) are
referred for mediation to the IPO Alternative Dispute Resolution (ADR) Center. Referral to the
IPO ADR Center is mandatory. However, the parties may choose whether or not to go through
the mediation proceedings. If amicable settlement is reached, the BLA or the ODG will issue a
judgment based on the compromise agreement. 23

22
Resolution A.M. No. 11-1-6-SC-PHILJA
23
IPO Office Order No. 154, Series of 2010; IPO Office Order No. 15-067, Series of 2015