WHAT IS TECHNOLOGY TRANSFER ARRANGEMENT?

Technology Transfer Arrangement refers to contracts or agreements, including renewals thereof, involving
the transfer of systematic knowledge for the manufacture of a product, the application of a process, or
rendering of a service including management contracts; and the transfer, assignment or licensing of all forms
of intellectual property rights, including licensing of computer software except computer software developed
for mass market.
The signing of Republic Act 8293, otherwise known as the Intellectual Property (IP) Code, on June 6, 1997
liberalizes regulations on technology transfer registration particularly the rate of fees or royalties and
strengthens intellectual property rights protection in the Philippines.
Voluntary Licensing has been provided by the Code. Recordal with the IP Philippines of agreements that
involve transmission of rights is necessary. However, registration is no longer required where the agreement
is in conformity of the requirements of the law under Sections 87 and 88.

Section 87 of the IP Code covers the prohibited clauses which are adverse to competition and trade.

Prohibited Clauses (Section 87, IP Code)

1. Those which impose upon the licensee the obligation to acquire from a specific source capital goods,
intermediate products, raw materials, and other technologies, or of permanently employing personnel
indicated by the licensor;
2. Those pursuant to which the licensee reserves the right to fix the sale or resale prices of the products
manufactured on the basis of the license;
3. Those that contain restrictions regarding the volume and structure of production;
4. Those that prohibit the use of competitive technologies in a non-exclusive technology transfer
arrangement;
5. Those that establish full or partial purchase option in favor of the licensor;
6. Those that obligate the licensee to transfer for free to the licensor the inventions or improvements that
may be obtained through the use of the licensed technology;
7. Those that require payment of royalties to the owners of patents for patents which are not used;
8. Those that prohibit the licensee to export the licensed product unless justified for the protection of the
legitimate interest of the licensor such as exports to countries where exclusive licenses to manufacture
and/or distribute the licensed product(s) have already been granted;
9. Those which restrict the use of the technology supplied after the expiration of the technology transfer
arrangement, except in cases of early termination of the technology transfer arrangement due to
reason(s) attributable to the licensee;
10. Those which require payments for patents and other industrial property rights after their expiration or
termination of the technology transfer arrangement;
11. Those which require that the technology recipient shall not contest the validity of any of the patents of
the technology supplier;
12. Those which restrict the research and development activities of the licensee designed to absorb and
adapt the transferred technology to local conditions or to initiate research and development programs
in connection with new products, processes or equipment;
13. Those which prevent the licensee from adapting the imported technology to local conditions, or
introducing innovation to it, as long as it does not impair the standards prescribed by the licensor;
and
14. Those which exempt the licensor from liability for non-fulfillment of his responsibilities under the
technology transfer arrangement and/or liability arising from third party suits brought about by the
use of the licensed product or the licensed technology.

On the other hand, Section 88 of the IP Code contains provisions which need to be included in voluntary
license agreement as follows:
1. That the laws of the Philippines shall govern the interpretation of the agreement and in the event of
litigation, the venue shall be the proper court in the place where the licensee has its principal office;
2. Continued access to improvements in techniques and processes related to the technology shall be
made available during the period of the technology transfer arrangement;
3. In the event the technology transfer arrangement shall provide for arbitration, the Procedure of
Arbitration of the Arbitration Law of the Philippines or the Arbitration Law of the United Nations
Commission on International Trade Law (UNCITRAL) or the Rules of Conciliation and Arbitration of the
International Chamber of Commerce shall apply and the venue of arbitration shall be the Philippines
or any neutral country; and
 4. The Philippine taxes on all payments relating to the technology transfer arrangement shall be borne by
the licensor.
(cc) “Technology Transfer Protocol” refers to policies, strategies and processes or procedures, which
RDIs adopt to identify, protect, manage and commercialize IPs and/or IPRs and undertake technology
transfer activities. These include, but are not limited to, the following:
i. Policies and procedures governing incentives to researchers to produce and to disclose IP
derived and generated from publicly funded research and development to the RDI including the
sharing of revenues between the RDI and its researchers as provided under these Rules;
ii. Policies and procedures for evaluating and processing invention and other IP disclosures in
order to determine (1) who shall be recognized as the inventor(s), author(s), creator(s) of the IP and
who will therefore be entitled to a share in revenues as provided under the Act and these Rules
including mechanisms for resolving disputes on inventorship, authorship and creatorship and revenue
sharing; (2) patentability/registrability; (3) commercial potential of IP; and (4) the most efficient mode
for protecting and commercializing or transferring the IP;
iii. Policies and procedures for determining meritorious cases in which a researcher-employee can
commercialize or pursue commercialization or participate in spin-off companies;
iv. Appropriate guidelines for the management of conflict of interest between the RDIs and the
researcher-employee;
v. Policies and procedures governing trade secrets and other similar confidential information
pursuant to the objectives of these Rules;
vi. The employer-employee contract and all other related agreements shall contain, but shall not
be limited to, the following: duties and responsibilities of the parties, membership of the research
team, degree of involvement of the researchers and the support staff, ownership of IP, sharing of
monetary and non-monetary benefits, technology disclosure and management of conflict of interest.
Section 3. Copyright Over Works Not Derived and Generated from Publicly Funded Research.
(a) Works that are not derived and generated from publicly funded research shall be excluded from the
coverage of these Rules, except by the following:
i. The ownership of copyright over works produced pursuant to the regular duties of an employee or
researcher of a private RDI shall vest in the private RDI, unless there is an agreement, express or implied, to
the contrary.
ii. The ownership of copyright over works produced not pursuant to the regular duties of an employee or
researcher of an RDI, whether public or private, shall belong to the employee or researcher who actually
authored the work, even if the employee or researcher uses the time, facilities and materials of the public or
private RDI where they are employed.
(b) When the work is produced pursuant to a commissioned contract, the copyright belongs to the person who
created the work, unless otherwise indicated in the contract.

Section 2. Protection of Undisclosed Information. Protection of Undisclosed Information or Trade Secrets is

one of the IPRs recognized under the IP Code and international treaties. The GFA and RDIs both recognize
the importance of the protection of undisclosed information but this should be consistent with the
policies and principles of the Act. The protection of undisclosed information shall be governed by the
following provisions:
(a) Protection of undisclosed information should be at the institutional level. RDIs are directed to
develop mechanisms to handle such protection.
(b) If the RDI in its judgment believes that any IP should be protected solely as undisclosed
information, it should inform the GFA in writing and the GFA, after review, may recognize the same
and may not obligate the RDI to file any application for IP protection.
(c) RDIs shall continue to submit regular reports on the IP protected as undisclosed information as required
by the GFA.
Section 3. Disclosures. Disclosure of potential IPRs and/or all biodiversity and genetic resource, traditional
knowledge, and indigenous knowledge, systems and practices shall be governed by the following rules:
(a) In order to ensure that any information pertaining to a potential IPR does not become part of prior art or
prejudice the novelty of the national IPR application that the RDI may file with the Intellectual Property Office
of the Philippines (IPO), or the Plant Variety Protection Board and/or the international application for IPR that
the RDI may file in a foreign country or in such other IP authority, all disclosures of potential IPRs shall be
covered by confidentiality agreements requiring the GFAs as well as their employees, consultants and
agents to keep confidential from the public any document or information relating to the potential IPR
until such time that the RDI has filed the appropriate national or international IPR application or
when it gives notice to the GFA allowing public disclosure. The term “IPR application” shall mean an
application for a patent for an invention, an application for a utility model, or an application for an industrial
design or application for protection of plant variety, as the case may be.
(c) With respect to biodiversity, genetic resources or materials associated traditional knowledge, and
indigenous knowledge, systems and practices, the following provisions shall govern:
i. The RDI shall provide the GFA with a written disclosure on the following:
(1) any biodiversity, genetic resources or materials, associated traditional knowledge, and indigenous
knowledge, systems and practices utilized in or which formed as basis in the development of the subject
matter contained in the IPR application;
(2) the primary source of any biodiversity, genetic resources or materials, associated traditional knowledge,
and indigenous knowledge, systems and practices utilized in or which formed as basis in the subject matter
contained in the IPR application; or
(3) the secondary source, if no information about the primary source is available.
ii. The disclosure requirement under this section shall apply when the subject matter contained in a national
or international IPR application is directly based on any biodiversity, genetic resources or materials,
traditional knowledge, and indigenous knowledge, systems and practices to which the RDI has had access to
prior to the filing of the IPR application. The subject matter contained in the IPR application must depend on
the specific properties of, or must be consciously derived from, such biodiversity and genetic resource or
materials, traditional knowledge, and indigenous knowledge, systems and practices. iii. Where the RDI, for
reasons beyond its control, does not have the necessary information to fulfill the disclosure requirement
pertaining to any biodiversity, genetic resources or materials, traditional knowledge, and indigenous
knowledge, systems and practices, such as, for instance, where a plant stored in a gene bank was collected
decades ago and no information about its source exists, the RDI shall submit an affidavit from its
researcher/s that the latter do not have the necessary information or that the source is unknown, and state
the reasons thereof. The GFA shall review the affidavit to determine if this will constitute compliance with the
disclosure requirement under this rule.
iv. The GFA that provided the research funds shall be responsible for ensuring that the RDI provides accurate
disclosure and complies with the requirements of this Section.
v. A national or international IPR application filed by the RDI before the appropriate IP office shall include in
the abstract and/or description of said application the same disclosure on biodiversity, genetic resources or
materials, associated traditional knowledge, and indigenous knowledge, systems and practices utilized in or
which formed as basis in the development of the subject matter contained in the said application,
notwithstanding that such disclosure may not be required for the grant or issuance of certificate of IPR
registration.
(d) Disclosure shall be made by the Researcher to the head of the RDI. The head of the RDI, consistent with
the RDIs obligations, shall make the disclosure to the head of the GFA.

CHAPTER IV
MANAGEMENT OF IPs FROM R&D PERFORMED BY GOVERNMENT RDIs
THROUGH THEIR OWN BUDGET
RULE 13. Responsibilities of RDIs Performing R&D with their Own Budget. – All government RDIs performing
R&D through an annual budget provided by the government shall submit intellectual property management
reports annually to the national government agencies where they are attached. The report shall contain plans
for securing protection on IPs with commercial promise, the technology transfer approaches to be pursued,
and the progress of ongoing commercialization of technologies derived from R&D funded from their own
budget.
RULE 14. Responsibilities of the Concerned National Government Agencies. – Concerned government and/or
parent agencies shall monitor efforts and effectiveness of their RDIs in securing IP protection and pursuing IP
commercialization, based on the annual IP management reports submitted by the RDIs. National government
agencies are encouraged to adopt their respective rules, mechanisms and procedures to effectively implement
its aforestated responsibility.
Section 1. The Technology Transfer Protocol shall establish the grounds in determining the meritorious cases
where an RDI shall allow its researcher-employee to commercialize or pursue commercialization or create,
own, control, or manage a company or spin-off firm. The parties may also explore other options available for
commercialization as allowed under these Rules.
Section 4. The guidelines on spin-offs shall be included in the Technology Transfer Protocol.
RULE 18. Management of Conflict of Interest. – The RDIs shall properly manage any possible conflict of
interest by adopting appropriate guidelines for its researcher-employee. The guidelines for handling of such
conflicts shall include, but are not limited, to the following:
(a) RDls shall ensure that its researchers are made fully accountable for their research and that commercial
objectives do not divert them from carrying out the RDI's core research program;
(b) Heads of RDI should ensure that where researchers have any direct or indirect financial interest in a spin-
off company; they shall not act on behalf of the RDI in transactions with that company;
(c) Where researchers of RDI are nominated as non-executive directors to the Board of a spin-off company or
existing company in which the same RDI holds an equity stake, they should have a clear duty to ensure that
the RDI's interests are not compromised by their role;
(d) RDIs should take steps to ensure that collaborative undertaking with a spin-off or existing company is
governed by a formal written public agreement; and,
(e) In case of Higher Educational Institutions acting as RDIs, it shall be the decision of the said institution to
promulgate their rules governing the academic vis-à-vis the business responsibilities of the researcher
involved in a spin-off company.

Section 191. Registration and Deposit with National Library and the Supreme Court Library. - After the first
public dissemination of performance by authority of the copyright owner of a work falling under Subsections
172.1, 172.2 and 172.3 of this Act, there shall, for the purpose of completing the records of the National
Library and the Supreme Court Library, within three (3) weeks, be registered and deposited with it, by
personal delivery or by registered mail two (2) complete copies or reproductions of the work in such form as
the directors of said libraries may prescribe. A certificate of deposit shall be issued for which the prescribed
fee shall be collected and the copyright owner shall be exempt from making additional deposit of the works
with the National Library and the Supreme Court Library under other laws. If, within three (3) weeks after
receipt by the copyright owner of a written demand from the directors for such deposit, the required copies or
reproductions are not delivered and the fee is not paid, the copyright owner shall be liable to pay a fine
equivalent to the required fee per month of delay and to pay to the National Library and the Supreme Court
Library the amount of the retail price of the best edition of the work. Only the above mentioned classes of
work shall be accepted for deposit by the National Library and the Supreme Court Library. (Sec. 26, P.D. No.
49a)
Section 193. Scope of Moral Rights. - The author of a work shall, independently of the economic rights in
Section 177 or the grant of an assignment or license with respect to such right, have the right:
193.1. To require that the authorship of the works be attributed to him, in particular, the right that his name,
as far as practicable, be indicated in a prominent way on the copies, and in connection with the public use of
his work;
193.2. To make any alterations of his work prior to, or to withhold it from publication;
193.3. To object to any distortion, mutilation or other modification of, or other derogatory action in relation to,
his work which would be prejudicial to his honor or reputation; and
193.4. To restrain the use of his name with respect to any work not of his own creation or in a distorted
version of his work. (Sec. 34, P.D. No. 49)
Section 195. Waiver of Moral Rights. - An author may waive his rights mentioned in Section 193 by a written
instrument, but no such waiver shall be valid where its effects is to permit another:
195.1. To use the name of the author, or the title of his work, or otherwise to make use of his reputation with
respect to any version or adaptation of his work which, because of alterations therein, would substantially
tend to injure the literary or artistic reputation of another author; or
195.2. To use the name of the author with respect to a work he did not create. (Sec. 36, P.D. No. 49)
RIGHTS TO PROCEEDS IN SUBSEQUENT TRANSFERS
Section 200. Sale or Lease of Work. - In every sale or lease of an original work of painting or sculpture or of
the original manuscript of a writer or composer, subsequent to the first disposition thereof by the author, the
author or his heirs shall have an inalienable right to participate in the gross proceeds of the sale or lease to
the extent of five percent (5%). This right shall exist during the lifetime of the author and for fifty (50) years
after his death. (Sec. 31, P.D. No. 49)
Section 201. Works Not Covered. - The provisions of this Chapter shall not apply to prints, etchings,
engravings, works of applied art, or works of similar kind wherein the author primarily derives gain from the
proceeds of reproductions. (Sec. 33, P.D. No. 49)
Section 218. Affidavit Evidence. - 218.1. In an action under this Chapter, an affidavit made before a notary
public by or on behalf of the owner of the copyright in any work or other subject matter and stating that:
(a) At the time specified therein, copyright subsisted in the work or other subject matter;
(b) He or the person named therein is the owner of the copyright; and
(c) The copy of the work or other subject matter annexed thereto is a true copy thereof, shall be admitted in
evidence in any proceedings for an offense under this Chapter and shall be prima facie proof of the matters
therein stated until the contrary is proved, and the court before which such affidavit is produced shall
assume that the affidavit was made by or on behalf of the owner of the copyright.
Section 219. Presumption of Authorship. - 219.1. The natural person whose name is indicated on a work in
the usual manner as the author shall, in the absence of proof to the contrary, be presumed to be the author
of the work. This provision shall be applicable even if the name is a pseudonym, where the pseudonym leaves
no doubt as to the identity of the author.
219.2. The person or body corporate whose name appears on a audio-visual work in the usual manner shall,
in the absence of proof to the contrary, be presume Rule 101. Registrability. A mark cannot be registered if
it:
(a) Consists of immoral, deceptive or scandalous matter, or matter which may disparage or falsely suggest a
connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt
or disrepute;
(b) Consists of the flag or coat of arms or other insignia of the Philippines or any of its political subdivisions,
or of any foreign nation, or any simulation thereof;
(c) Consists of a name, portrait or signature identifying a particular living individual except by his written
consent, or the name, signature, or portrait of a deceased President of the Philippines, during the life of his
widow, if any, except by written consent of the widow;
(d) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or
priority date, in respect of:
(i) The same goods or services, or
(ii) Closely related goods or services, or
(iii) If it nearly resembles such a mark as to be likely to deceive or cause confusion;
(e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by
the competent authority of the Philippines to be well-known internationally and in the Philippines, whether or
not it is registered here, as being already the mark of a person other than the applicant for registration, and
used for identical or similar goods or services; Provided, That in determining whether a mark is well-known,
account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large,
including knowledge in the Philippines which has been obtained as a result of the promotion of the mark;
(f) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known in
accordance with the preceding paragraph, which is registered in the Philippines with respect to goods or
services which are not similar to those with respect to which registration is applied for: Provided, That use of
the mark in relation to those goods or services would indicate a connection between those goods or services,
and the owner of the registered mark: Provided, further, That the interests of the owner of the registered
mark are likely to be damaged by such use;

(g) Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin
of the goods or services. Geographical indications are indications which identify a good as originating in the
territory of a country which is a member of, or a region or locality in that territory, where a given quality,
reputation or other characteristic of the good is essentially attributable to its geographical origin.
(h) Consists exclusively of signs that are generic for the goods or services that they seek to identify;
(i) Consists exclusively of signs or of indications that have become customary or usual to designate the goods
or services in everyday language or in bona-fide and established trade practice;
(j) Consists exclusively of signs or of indications that may serve in trade to designate the kind, quality,
quantity, intended purpose, value, geographical origin, time or production of the goods or rendering of the
services, or other characteristics of the goods or services;
(k) Consists of shapes that may be necessitated by technical factors or by the nature of the goods themselves
or factors that affect their intrinsic value;
(l) Consists of color alone, unless defined by a given form; or
(m) Is contrary to public order or morality.
As regards signs or devices mentioned in paragraphs (j), (k), and (l), nothing shall prevent the registration of
any such sign or device which has become distinctive in relation to the goods or services for which
registration is requested as a result of the use that has been made of it in commerce in the Philippines. The
Office may accept as prima facie evidence that the mark has become distinctive, as used in connection with
the applicant’s goods or services in commerce, proof of substantially exclusive and continuous use thereof by
the applicant in commerce in the Philippines for five (5) years before the date on which the claim of
distinctiveness is made.
The nature of the goods or services to which the mark is applied will not constitute an obstacle to
registration.

d to be the maker of said work. (n)

Rule 102. Criteria for determining whether a mark is well-known. In determining whether a mark is well-
known, the following criteria or any combination thereof may be taken into account:
(a) the duration, extent and geographical area of any use of the mark, in particular, the duration, extent and
geographical area of any promotion of the mark, including advertising or publicity and the presentation, at
fairs or exhibitions, of the goods and/or services to which the mark applies;
(b) the market share, in the Philippines and in other countries, of the goods and/or services to which the
mark applies;
(c) the degree of the inherent or acquired distinction of the mark;
(d) the quality-image or reputation acquired by the mark;
(e) the extent to which the mark has been registered in the world;
(f) the exclusivity of registration attained by the mark in the world;
(g) the extent to which the mark has been used in the world;
(h) the exclusivity of use attained by the mark in the world;
(i) the commercial value attributed to the mark in the world;
(j) the record of successful protection of the rights in the mark;
(k) the outcome of litigations dealing with the issue of whether the mark is a well-known mark; and,
(l) the presence or absence of identical or similar marks validly registered for or used on identical or similar
goods or services and owned by persons other than the person claiming that his mark is a well-known mark.
Rule 103. Trade Names or Business Names. (a) A name or designation may not be used as a trade name if
by its nature or the use to which such name or designation may be put, it is contrary to public order or
morals and if, in particular, it is liable to deceive trade circles or the public as to the nature of the enterprise
identified by that name.
(b) Notwithstanding any laws or regulations providing for any obligation to register trade names, such names
shall be protected, even prior to or without registration, against any unlawful act committed by third parties.
In particular, any subsequent use of the trade name by a third party, whether as a trade name or a mark or
collective mark, or any such use of a similar trade name or mark, likely to mislead the public, shall be
deemed unlawful.
(c) The remedies provided for cancellation and infringent of marks in Sections 153 to 156 and Sections 166
and 167 of the IP Code shall apply to tradenames mutatis mutandis.
Rule 204. Declaration of actual use. The Office will not require any proof of use in commerce in the
processing of trademark applications. However, without need of any notice from the Office, all applicants or
registrants shall file a declaration of actual use of the mark with evidence to that effect within three years,
without possibility of extension, from the filing date of the application. Otherwise, the application shall be
refused or the mark shall be removed from the register by the Director motu proprio.
Rule 205. Contents of the declaration and evidence of actual use. The declaration shall be under oath, must
refer to not more than one application or registration, must contain the name and address of the applicant or
registrant declaring that the mark is in actual use in the Philippines, list the goods where the mark is
attached; list the name or names and the exact location or locations of the outlet or outlets where the
products are being sold or where the services are being rendered, recite sufficient facts to show that the mark
described in the application or registration is being actually used in the Philippines, specifying the nature of
such use, attaching certified or original copies of purchase orders, sales invoices, official receipts, stating the
volume of sales during the fiscal year immediately preceding the filing of the declaration, furnishing copies of
printed advertisement and other proofs of advertising with a statement of the advertising cost in the
immediately preceeding fiscal year as shown in the corresponding audited financial statements where
applicable, or income tax returns in all cases. The declarant should also attach five labels as actually used on
the goods or the picture of the stamped or marked container visibly and legibly showing the mark as well as
proof of payment of the prescribed fee.
Rule 400. Requirements of application. All applications must be addressed to the Director and shall be in
Filipino or English and shall contain the following:
(a) a request for registration;
(b) the name and address of the applicant;
(c) the name of a State of which the applicant is a national or where he has domicile; and the name of a State
in which the applicant has a real and effective industrial or commercial establishment, if any;
(d) where the applicant is a juridical entity, the law under which it is organized and existing;
(e) the appointment of an agent or representative, if the applicant is not domiciled in the Philippines;
(f) where the applicant claims the priority of an earlier application, a declaration claiming the priority of that
earlier application, together with an indication of:
- the name of the State with whose National Office the earlier application was filed or if filed with an Office
other than a National Office, the name of that Office;
- the date on which the earlier application was filed; and
- where available, the application number of the earlier application;
(g) where the applicant wishes to claim color as a distinctive feature of the mark, a statement to that effect as
well as the name or names of the color or colors claimed and an indication, in respect of each color, of the
principal parts of the mark which are in that color;
(h) where the mark is a three-dimensional mark, a statement to that effect;
(i) a reproduction of the mark and facsimiles thereof as provided in these Regulations;
(j) a transliteration or translation of the mark or of some parts of the mark, as prescribed in these
Regulations;
(k) the names of the goods or services for which the registration is sought, grouped according to the classes of
the Nice Classification, together with the number of the class of the said Classification to which each group of
goods or services belongs;
(l) where the application is for a collective mark, a designation to that effect;
(m) a signature by, or other self-identification of, the applicant or his representative;
(n) Power of Attorney if the filing is through a representative; and
(o) sworn Statement that the applicant is a small entity if such be the fa Rule 401. Office Application Form.
For the convenience of applicants, the Office shall draw up and make available a standard application form
which may be reproduced at will by applicants and other persons at their own cost.

Rule 402. Label. The applicant may include the label as actually used or intended to be used on the goods or
a copy or duplicate made by photo engraving or some similar process.
The mark must be bigger and more dominant than the generic term of goods except in the case of medicine as
required by law.

Rule 403. Drawing. (a) The drawing of the mark shall be substantially exact representation thereof as
actually used or intended to be used on or in connection with, the goods or services of the applicant.
(b) A typed drawing may be accepted by the Examiner if no special characteristics have to be shown such as
design, style of lettering, color, diacritical marks, or unusual forms of punctuation.
A computer print-out may also be accepted by the Examiner if it substantially complies with the requirement
that it must be the exact representation of the mark.
(c) The provisions of this Rule shall, however be construed liberally in determining whether the applications
shall be considered complete for the purpose of granting a filing date.
Rule 404. Drawing for a service mark may be dispensed with in certain cases. The drawing of a service mark
may be dispensed with but the application must contain an adequate description of such mark.
Rule 405. Drawing to be on Bristol board. The Drawing must be made upon pure white paper of a thickness
of a Bristol board. The surface of the paper must be calendered and smooth.
Rule 406. Size of board; “sight”. The size of a sheet on which a Drawing is made must be exactly two
hundred ten millimeters (210 mm) by two hundred ninety-seven millimeters (297 mm) or the size of an A4
paper. Nineteen millimeters (19 mm) from its edges, a single marginal line is to be drawn, leaving the “sight”
precisely one hundred seventy-two millimeters (172 mm) by two hundred fifty-nine millimeters (259 mm).
Within this margin all work and signatures must be included. One of the shorter sides of the sheet should be
regarded as its top.
Rule 407. Drawing to be with the pen or by other processing giving satisfactory results. If colors are not
claimed, all Drawings must be made with pen only or by a process which will give them satisfactory
reproduction characteristics. Every line and letter, signatures included, must be absolutely black. This
direction applies to all lines, however fine, and to shading. All lines must be clean, sharp, and solid, and
they must not be too fine or crowded. Surface shading, when used, should be open.
Rule 408. The name of the owner to be within marginal lines. The name of the proprietor of the trademark or
service mark trade name must be within the marginal lines and should not encroach upon the drawing. It
should be signed by the owner or his Attorney of record. However, a printed or stamped signature or the use
of seal accompanied by an indication in letters of the name of signatory is also accepted.
Rule 409. When board may be turned on its side. When the view is longer than the width of the sheet, the
sheet should be turned on its side.
Rule 410. Manner of mailing the Drawing to the Bureau. Drawing transmitted to the Office should be sent
flat, protected by a sheet of heavy binder’s board, or should be rolled for transmission in a suitable mailing
tube. They should never be folded.
Rule 411. Color. Where color is a material feature of the mark as used or intended to be used, the color or
colors employed may be actually reproduced in the drawings and facsimiles. Otherwise, a statement must be
made giving the name or names of the color or colors claimed indicating the principal part or parts of the
mark which are in such color or colors.
Rule 412. Informal Drawing. A Drawing not executed in conformity with the foregoing rules may be accepted
for the purpose of examination, but the Drawing must be corrected or a new one furnished, as may be
required, before the mark can be published for opposition or the application allowed. Substitute Drawings
will not be accepted unless they have been required by the Examiner or unless correction of original Drawing
would require that the mark or trade name be substantially entirely redrawn.
Rule 413. Use of an old Drawing in a new application. In an application filed in place of an abandoned or
rejected application, a new complete application is required, but the old Drawing, if suitable, may be used.
The application must be accompanied by a request for the transfer of the Drawing, and by a permanent
photographic copy, or an order for such copy, of the Drawing to be placed in the original file. A drawing so
transferred or to be transferred cannot be amended.

Rule 414. The Small facsimiles of the Drawing, how prepared. The ten small facsimiles of the Drawing must
be printed in black ink or in color, if colors are claimed, one facsimile on Bristol board and the other nine
facsimiles on an ordinary coupon bond paper and must be capable of being satisfactorily reproduced when
published in the IPO Gazette. The size of the sheet on which these facsimiles are to be printed must be
seventy millimeters (70 mm) long and thirty-five millimeters (35 mm) wide.

Rule 415. Translation/Transliteration. A translation or transliteration of the mark or of some parts of the mark
must accompany the application if the mark or of some parts of the mark is/are foreign word(s), letter(s) and
character(s), or foreign sounding.
Transliteration is an act, process or instance of representing or spelling of words, letters or characters of one
language in the letters and characters of another language or alphabet.
Translation is an act, process or instance of translating as rendering from one language or representational
system into another.
ct.
Rule 416. Nice Classification. The applicant must indicate the names of the goods or services for which the
registration is sought, grouped according to the classes of the Nice Classification, together with the number of
the class of the Nice Classification to which each group of goods or services belongs.
CLASSIFICATION OF GOODS
TITLE CLASS
1 Chemical products used in industry, science, photography, agriculture, horticulture, forestry; artificial and
synthetic resins; plastics in the form of powders, liquids or plates, for industrial use; manures (natural and
artificial); fire extinguishing compositions; tempering substances and chemical preparations for soldering;
chemical substances for preserving foodstuffs; tanning substances; adhesive substances used in industry.
2 Paints, varnishes, lacquers, preservatives against rust and against deterioration of wood; colouring matters;
dyestuffs; mordants; natural resins; metals in foil and powder form for painters and decorators.
3 Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive
preparations; soaps; perfumery; essential oils, cosmetics, hair lotions, dentrifices.
4 Industrial oils and greases (other than edible oils and fats and essential oils); lubricants; dust laying and
absorbing compositions; fuels (including motor spirit) and illuminants; candles, tapers, nightlights and
wicks.
5 Pharmaceutical, veterinary and sanitary substances; infants’; and invalids’ foods; plasters, material for
bandaging; material for stopping teeth, dental wax; disinfectants; preparations for killing weeds and
destroying vermin.
6 Unwrought and partly wrought common metals and their alloys; anchors, anvils, bells, rolled and cast
building materials; rails and other metallic materials for railway tracks; chains (except driving chains for
vehicles); cables and wires (non-electric); lock-smith’ work ; metallic pipes and tubes; safes and cash boxes;
steel balls; horseshoes; nails and screws; other goods in non-precious metal not included in other classes;
ores.
7 Machines and machine tools; motors (except for land vehicles); machine couplings and belting (except for
land vehicles); large size agricultural implements; incubators.
8 Hand tools and instruments; cutlery, forks and spoons; side arms.
9 Scientific, nautical, surveying and electrical apparatus and instruments (including wireless), photographic,
cinematographic, optical, weighing, measuring, signalling, checking (supervision), life saving and teaching
apparatus and instruments; coin or counter-freed apparatus; talking machines; cash registers; calculating
machines; fire-extinguishing apparatus.
10 Surgical, medical, dental and veterinary instruments and apparatus (including artificial limbs, eyes and
teeth).
11 Installations for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water
supply and sanitary purposes.
12 Vehicles; apparatus for locomotion by land, air or water.
13 Firearms; ammunition and projectiles; explosive substances; fireworks.
14 Precious metals and their alloys and goods in precious metals or coated therewith ( except cutlery, forks
and spoons); jewellery, precious stones; horological and other choronometric instruments.
15 Musical instruments (other than talking machines and wireless apparatus).
16 Paper and paper articles, cardboard and cardboard articles; printed matter, newspaper and periodicals,
books; bookbinding materials; photographs; stationery, adhesive materials (stationery); artists’ materials;
paint brushes; typewriters and Office requisites (other than furniture); instructional and teaching material
(other than apparatus);playing cards; (printers’) type and cliches (stereotype).
17 Gutta percha, indiarubber, balata and substitutes, articles made from these substances, and not included
in other classes; plastics in the form of sheets, blocks and rods, being for use in manufacturers; materials for
packing, stopping or insulating; asbestos, mica and their products; hose pipes (non-metallic).
18 Leather and imitations of leather, articles made from these materials, and not included in other classes;
skins, hides, trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and
saddlery.
19 Building materials, natural and artificial stone, cement, lime, mortar, plaster and gravel; pipes of
earthenware or cement; road-making materials; asphalt, pitch and bitumen; portable buildings; stone
monuments; chimney pots.
20 Furniture, mirrors, picture frames; articles (not included in other classes) of wood, cork, reeds, cane,
wicker, horn, bone, ivory, whale-bone, shell, amber, mother-of-pearl, meerschaum, celluloid, substitutes for
all these material, or of plastic.
21 Small domestic utensils and containers (not of precious metal, nor coated therewith);combs and sponges;
brushes (other than paint brushes);brush-making materials; instruments and materials for cleaning
purposes; steel wool; unworked or semi-worked glass (excluding glass used in building); glassware, porcelain
and earthenware not included in other classes.
22 Rope, string, nets, tents, awnings, tarpaulins, sails, sacks; padding and stuffing materials (hair, capoc,
feathers, seaweeds, etc.); raw textile materials.
23 Yarns, threads.
24 Tissues (piece goods); bed and table covers; textile articles not included in other classes.
25 Clothing, including boots, shoes and slippers.
26 Lace and embroidery, ribbons and braids; buttons, press buttons, hooks and eyes, pins and needles;
artificial flowers.
27 Carpets, rugs, mats and matting; linoleums and other materials for covering existing floors; wall hangings
(non-textile).
28 Games and playthings; gymnastic and sporting articles (except clothing); ornaments and decorations for
Christmas trees.
29 Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies,
jams; eggs; milk and other dairy products; edible oils and fats; preserves, pickles.
30 Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour, and preparations made from cereals;
bread, biscuits, cakes pastry and confectionery, ices; honey, treachel; yeast, baking-powder; salt mustard;
pepper, vinegar, sauces; spices; ice.
31 Agricultural, horticultural and forestry products and grains not included in other classes; living animals;
fresh fruits and vegetables; seeds; live plants and flowers; foodstuffs for animals, malt.
32 Beer, ale and porter; mineral and aerated waters and other non-alcoholic drinks; syrups and other
preparations for making beverages.
33 Wines, spirits and liquors.
34 Tobacco, raw or manufactured; smokers’ articles; matches.
(b) CLASSIFICATION OF BUSINESS OR SERVICES
35 Advertising and business
36 Insurance and financial
37 Construction and repair
38 Communication
39 Transportation and storage
40 Material treatment
41 Education and entertainment
42 Miscellaneous

Rule 417. Broad terms. In any application, the use of broad terms in identifying the goods, business or
services shall be unacceptable. Applicants whose application are based on foreign registration shall be
required to specify the goods covered by such foreign registration in all cases where the foreign registration
used broad terms in identifying the goods, business or services.
Rule 418. Single registration for goods and/or services. One (1) application may relate to several goods
and/or services, whether they belong to one (1) class or to several classes of the Nice Classification. Where
goods and/or services belonging to several classes of the Nice Classification have been included in one (1)
application, such an application shall result in one registration.

Rule 419. Division of Applications. (a) Any application referring to several goods or services referred to as
the “ initial application” may be divided by the applicant into two (2) or more applications hereafter referred to
as the “divisional applications” by distributing among the latter the goods or services referred to in the initial
application.
(b) A single class shall not be subdivided.
(c) The divisional applications must be submitted before examination of the initial application or within two
(2) months from mailing date of the first action of the Bureau.
(d) Upon receipt of the divisional applications, the Office shall cancel the initial application together with its
application number. New application numbers shall be given to the divisional applications but the filing date
shall be the same as the filing date of the initial application. The divisional applications shall likewise
preserve the benefit of the right of priority of the initial application.
Rule 600. Application prosecuted ex parte; protests. An application for registration is prosecuted ex parte by
the applicant; that is, the proceedings are like a lawsuit in which there is a plaintiff (the applicant) but no
defendant, the court itself (the Examiner) acting as the adverse party.
No attention shall be paid to ex parte statements or protests of persons concerning pending applications to
which they are not parties, unless information of the pendency of these applications shall have been
voluntarily communicated by the applicants.
Rule 800. Rights conferred. (a) The owner of a registered mark shall have the exclusive right to prevent all
third parties not having the owner’s consent from using in the course of trade identical or similar signs or
containers for goods or services which are identical or similar to those in respect of which the mark is
registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for
identical goods or services, a likelihood of confusion shall be presumed.
(b) The exclusive right of the owner of a well-known mark which is registered in the Philippines, shall extend
to goods and services which are not similar to those in respect of which the mark is registered: Provided, That
use of the mark in relation to those goods or services would indicate a connection between those goods or
services and the owner of the registered mark: Provided further, That the interests of the owner of the
registered mark are likely to be damaged by such use.
Rule 801. Duration. A certificate of registration shall remain in force for ten (10) years; Provided, That,
without need of any notice from the Office, the registrant shall file a declaration of actual use and evidence to
that effect, or shall show valid reasons based on the existence of obstacles to such use, as prescribed by these
Regulations, within one (1) year from the fifth anniversary of the date of the registration of the mark.
Otherwise, the Office shall remove the mark from the Register. Within one (1) month from receipt of the
declaration of actual use or reason for non-use, the Examiner shall notify the registrant of the action taken
thereon such as acceptance or refusal.
Rule 803. Use of a mark in a different form. The use of the mark in a form different from the form in which it
is registered, which does not alter its distinctive character, shall not be ground for cancellation or removal of
the mark and shall not diminish the protection granted to the mark.

Rule 804. Use of a mark for goods belonging to the class registered. The use of a mark in connection with one
or more of the goods or services belonging to the class in respect of which the mark is registered shall prevent
its cancellation or removal in respect of all other goods or services of the same class.

Rule 805. Use of a mark by related company. The use of a mark by a company related with the registrant or
applicant shall inure to the latter’s benefit, and such use shall not affect the validity of such mark or of its
registration: Provided, That such mark is not used in such manner as to deceive the public. If use of a mark
by a person is controlled by the registrant or applicant with respect to the nature and quality of the goods or
services, such use shall inure to the benefit of the registrant or applicant.