INTELLECTUAL PROPERTY CODE / COPYRIGHT (R.A. No. 8293, AS AMENDED.

State Policies

The State recognizes that an effective intellectual and industrial property system is:

 Vital to the development of  Protection of intellectual property is

domestic and creative activity; likewise mandated by the Constitution.
 Facilitates transfers of technology; Section 13 of Article XIV of the
Constitution provides that: “The State
 Attracts foreign investments; and shall protect and secure the exclusive
rights of scientists, investors, artists,
 Insures market access for our
and other gifted citizens to their
products.
intellectual property and creations,
 The State likewise recognizes that particularly when beneficial to the
the use of intellectual property people, for such period as may be
bears social function; provided by law.”

 It is also a State policy to streamline
administrative procedures concerning
intellectual property, liberalize
registration of transfer of technology,
and enhance the enforcement of
intellectual property rights;
 Treaties are part of our laws, hence,
various provisions of treaties are
incorporated in the Intellectual
Property Code.

What are intellectual property?

1. Geographic Indications
Indications which identify a good as originating in the territory or a region or locality in that territory, where a
given quality, reputation or other characteristics of the good is essentially attributable to its geographical
origins. Examples: Parmesan Cheese (cheese produced near Parma, Italy), Champagne (wine produced from
grapes grown in Champagne, France), Cuban Cigars (rolled from tobacco leaves found in Cuba), Florida
Oranges (oranges that came from Florida)

2. Protection of undisclosed information

Natural and legal persons shall have the possibility of preventing information lawfully within their control from
being disclosed to, acquired by, or used by others without their consent in a manner contrary to honest
commercial practices (breach of contract, breach of confidence, fraudulent inducement, etc.
Requirements for “undisclosed information” to be protected :
 The information is secret in the sense that is not, as a body or in the precise configuration and assembly of its
components, generally known among or readily accessible to persons within the circles that normally deal with
the kind of information in question;
 The information has commercial value because it is secret; and
 The information has been subject to reasonable steps under the circumstances, by the person lawfully in
control of the information, to keep it secret.
3. Topographies of integrated circuits
Refer to three-dimensional configurations of electronic circuits embodied in integral circuit products or layout
designs.
4. Industrial designs
Any composition of lines or colors or any three-dimensional form, whether or not associated with lines or colors
(Sec. 112, Intellectual Property Code).
A process of design applied to products that are to be manufactured through techniques of mass
production (en.Wikipedia.org)

International law related provisions

 Reciprocity - Any person who is a national or who is domiciled or has a real and effective industrial
establishment in a country which: (1) is a party to any convention, treaty, or agreement relating to intellectual
property rights or the repression of unfair competition to which the Philippines is also a party; or (2) extends
reciprocal rights to nationals of the Philippines by law, shall be entitled to benefits to the extent necessary to
give effect to any provision of such convention, treaty, or reciprocal law, in addition to the rights to which any
owner of an intellectual property right is otherwise entitled by this Act.

 National Treatment - Each member of the World Trade Organization’s (WTO) Agreement on Trade- Related
Aspects of Intellectual Property Rights (TRIPS) shall accord to nationals of the other members no less
favorable than that it accords its own nationals with regard to the protection of intellectual property.

 Most – Favored – Nation Treatment - With regard to the protection of intellectual property, any advantage,
favour, privilege, or immunity granted by a Member to the nationals of any other country shall be accorded
immediately and unconditionally to the nationals of all other members of TRIPS.

Functions of intellectual property office (IPO)

 Examine applications for grant of letters patent for inventions and register utility models and industrial designs;
 Examine applications for the registration of marks, geographic indications, integrated circuits;
 Register technology transfer arrangements and settle disputes involving technology transfer payments;
 Promote the use of patent information as a tool for technology development;
 Publish regularly in its own publication the patents, marks, utility models and industrial designs, issued and
approved, and the technology transfer arrangements registered;

 Administratively adjudicate contested proceedings affecting intellectual property rights; and

 Coordinate with other government agencies and the private sector to strengthen the protection of
intellectual property rights in the country

 The IPO now has enforcement functions supported by other government agencies like the PNP, NBI, and
Bureau of Customs. It also has visitorial powers
 5. Copyright
Right over literary and artistic works which are original intellectual creations in the literary and artistic domain
protected from the moment of creation.

Author - The natural person who has created the work.

Collective Work - A work which has been created by two (2) or more natural persons at the initiative and under
the direction of another with the understanding that it will be disclosed by the latter under his own name and that
contributing natural persons will not be identified.

Joint Work - A work prepared by two or more authors with the intention that their contributions be merged into
inseparable or interdependent parts of a unitary whole.

Work of Applied Art - An artistic creation with utilitarian functions or incorporated in a useful article, whether made by
hand or produced on an industrial scale.

Performers - Actors, singers, musicians, dancers, and other persons who act, sing, declaim, play in, interpret, or
otherwise perform literary and artistic works.

CIVIL CODE PROVISIONS

 Intellectual creation is one of the modes of
acquiring ownership under the Civil Code.
 The following persons acquire ownership by
intellectual creation:
 The author with regard to his literary,
dramatic, historical, legal, philosophical,
scientific, or other work;
 The composer, as to his musical
composition;
 The painter, sculptor, or other artist, with
respect to the product of his art;
 The scientist or technologist or any other
person with regard to his discovery or
invention
 Letters and other private communications in
writing are owned by the person to whom
they are addressed and delivered, but they
cannot be published or disseminated without
the consent of the writer or his heirs

When are rights over copyright conferred?

 Rights over copyright are conferred from the moment of creation (Sec. 172.1, Intellectual Property Code).
 The work is deemed created if something original is expressed in a fixed manner.

Who owns the copyright?

ONE CREATOR - The creator, his heirs, or assigns owns the copyright.
JOINT CREATION - Co-authors shall be the original owners of the copyright and in the absence of agreement, their rights
shall be governed by the rules of co-ownership. Exception: Work of joint authorship consists of parts that can be used
separately and the author of each part can be identified, the author of each part shall be the original owner of the
copyright in the part that he has created.

COMMISSIONED WORK - The person commissioning owns the work; ownership of copyright remains with the creator,
unless there is a written stipulation to the contrary.
AUDIO-VISUAL WORK - Producer for purposes of exhibition; for all other purposes, the producer, the author of the
scenario, the composer, the film director, the photographic director and the author of the work are the owners.

ANONYMOUS OR PSEUDONYMOUS - Unless the author is undisputable known, the publisher shall be presumed to be
the representative of the author.

EMPLOYEE’S WORK DURING COURSE OF EMPLOYMENT - Employer, if the result of regular functions or duties,
but the employee owns it if it is not part of his duties.

DURATION OF COPYRIGHT

 Literary, artistic and derivative works – during the lifetime of the creator and 50 years after the death of said
creator.

 Joint creation – the economic rights shall be protected during the life of the last surviving author and for 50
years after the death of the said author.

 Anonymous or pseudonymous work – till the end of 50 years following the date of their first
publication. The 50-year duration commences from January 1 following the date of publication.

 Work of applied art – 25 years from the date of making.

 Photographic works – 50 years from the publication of the work, or from making if unpublished (the same
term is given to audio-visual works produced by photography or analogous processes).

 Broadcast – 20 years from the date of broadcast.

COPYRIGHTABLE OBJECTS

 Books, pamphlets, articles, and other

registrable as an industrial design, and
writings.
other works of applied art.
 Periodicals and newspapers.
 Illustrations, maps, plans, sketches, charts and
 Lectures, sermons, addresses, dissertations
three (3) dimensional works relative to
prepared for oral delivery, whether or not
geography, topography, architecture, or
reduced in writing or other material form.
science.
 Letters including electronic messages and
 Drawings or plastic works of a scientific or
text messages.
technical character.
 Dramatic or dramatico – musical
 Photographic works including works
compositions, choreographic works or
produced by a process analogous to
entertainment in dumb shows.
photography; lantern slides.
 Musical compositions with or without
 Audio-visual works and cinematographic works
words.
and works produced by a process analogous to
 Works of drawing, painting, architecture, cinematography or any process for making
sculpture, engraving, lithography or other audio-visual recordings.
works of art; models or designs for works of
 Computer programs.
art.
 Other literary, scholarly, scientific and
 Original ornamental designs or models for
artistic works
articles of manufacture, whether or not
 OTHER COPYRIGHTABLE WORKS

DERIVATIVE WORKS

 Dramatizations, translations, adaptations, abridgements, arrangements, and other alterations of literary

or artistic works; and

 Collections of literary, scholarly or artistic works, and compilations of data and other materials which are
original by reason of the selectionor coordination arrangement of their contents.

UNPROTECTED WORKS

 Any idea, procedure, system, method or operation, concept, principle, discovery or mere data as such, even if
they are expressed, explained, illustrated or embodied in a work.

 The news of the day and other miscellaneous facts having the character of mere items of press
information.

 Any official text of a legislative, administrative or legal nature, as well as any official translation thereof.
 Any work of the government of the Philippines (prior approval of the Government is still needed).
RIGHTS OF THE AUTHOR

1. Economic rights
shall consist of the exclusive right to: (a) carry out, (b) authorize, or (c) prevent the following acts:
 Reproduction of the work or substantial portion of the work;
 Dramatizations, translation, adaptation, abridgement, arrangement or other transformation of the work;
 First public distribution of the original and each copy of the work
 Rental of the original or a copy of an audio-visual or cinematographic work;
 Public display of the original or a copy of the work;
 Public performance of the work;
 Other communication to the public of the work.

2. Moral rights

 Require that the authorship of the works be attributed to him, in a prominent way on the copies, and with the
public use of the work;

 Make any alteration of his work prior to, or to withhold it from publication;
 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

 Restrain the use of his name with respect to any work not of his own creation or in a distorted version of his
work.

Publisher’s Right

 The right to publish granted by the author, his heirs, or assigns;

  The publisher shall have a copyright consisting merely of the right of reproduction of the typographical
arrangement of the published edition of the work;

 If submitted to newspaper, magazine and the like, the right to publish once the materials sent by a writer,
a photographer, an artist to a periodical or newspaper publisher, but such writer or artist retains his
copyright on the piece.

ACTS that do not infringe copyright

 Recitation or performance of a work: (1) made accessible to the public, (2) privately done, (3) free of charge,
(4) strictly for a charitable or religious institution;

 Making of quotations from a published work: (1) compatible with fair use, (2) extent is justified by the
purpose, (3) source and name of the author, appearing on work, must be mentioned;

 Reproduction or communication to the public by mass media of articles on current political, social, economic,
scientific or religious topic, lectures, addresses, and other works, delivered in public: (1) for information
purposes, (2) not expressly reserved, and (3) source is already indicated;

 Reproduction and communication to the public of literary, scientific, or artistic works as part of reports of
current events by means of photography, cinematography or broadcasting to the extent necessary for the
purpose.

 Inclusion of a work in a publication, broadcast, or other communication to the public, sound recording or film if
made by way of illustration for teaching purposes compatible with fair use and the source and name of the
author, appearing on work, must be mentioned;

 Recording made in schools, universities, or educational institutions of a work included in a broadcast for the use
of such schools, universities or educational institutions. Such recording must be deleted within a reasonable
period; such recording may not be made from audio-visual works which are part of the general cinema
repertoire of feature films except for brief excerpts of the work;

 Making of ephemeral recordings: (1) by a broadcasting organization, (2) by means of its own facilities,
(3) for use of its own broadcast;

 Use of a work by or under the direction or control of the Government for public interest compatible with fair
use;

 Public performance or the communication to the public of a work in a place where no admission fee is charged
by a club or institution for charitable or educational purpose only and the aim is not profit- making;

 Public display of the original or a copy of the work not made by means of a film, slide, television image or
otherwise on screen or by means of any other device or process either the work has been published, sold, given
away or transferred to another person by the author or his successors in title;

 Any use made of a work for the purpose of any judicial proceedings; or for the giving of professional advise
by a legal practitioner;

 Single copy reproduction of a published work by natural persons exclusively for research and private study
(even without authorization of owner);
  Reproduction by non-profit libraries of: (1) fragile works, (2) isolated articles in composite works, (3) brief
portions of public work, (4) to preserve or replace copy that is lost, destroyed or rendered non – usable;

 One back-up copy of computer program.

DOCTRINE OF FAIR USE

 Fair use is the privilege to use the copyrighted material in a reasonable manner without the consent of the
copyright owner or as copying the theme or ideas rather than their expression.
 Fair use of copyrighted work for criticism, comment, news reporting, teaching, including multiple copies
for classroom use, scholarship, research and similar purposes is not an infringement of copyright

Factors to consider to determine whether use is fair

 Purpose and the character of use;  Effect of the use upon the potential market of
 Nature of copyrighted work; copyrighted work.

 Amount and substantiality of the portions

used;

TRANSFORMATIVE TEST - Test used in reviewing the purpose and character of the usage of the copyrighted work. If
the copy of the work adds new expression, meaning or message to transform it into something else, then it falls
under fair use.

INFRINGEMENT - There is infringement when there is piracy or substantial reproduction. If so much is taken that the
value of the original work is substantially diminished or the labors of the original author are substantially and to an
injurious extent appropriated by another (Habana v. Robles, G.R. No. 131522, July 19,1999).

Lack of intent to pirate is not a defense.

A person infringes a right protected under this Act when one:

 Directly commits an infringement;

 Benefits from the infringing activity of another person who commits an infringement if the person benefitting
has been given notice of the infringing activity and has the right and ability to control the activities of the
other person;

 With knowledge of infringing activity, induces, causes or materially contributes to the infringing conduct
of another.

REMEDIES
 Injunction to prevent  Action for damages;  Criminal Action for
infringement; Copyright Infringement.
 INTELLECTUAL PROPERTY CODE / TRADEMARKS (RA No. 8293, as amended)

TRADEMARK/SERVICE MARK

• Any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an
enterprise and shall include a stamped or marked container of goods.

• In relation thereto, a trade name means the name or designation identifying or distinguishing an
enterprise.

Basic requirements of trademark

• There must be a visible sign. It can be words, acronyms, logos, slogans, designs, figures, pictograph, or
portraits.

• Distinctiveness: It must be capable of distinguishing the goods of the enterprise.

Collective Mark

• Any visible sign designated as such in the application for registration and capable of distinguishing the origin or
any other common characteristic, including the quality of goods or services of different enterprises which use
the sign under the control of the registered owner of the collective mark.

Functions of trademark

• To indicate the origin of the goods to which

they are attached; • To guarantee the standard of quality of the
goods;

• To advertise the goods.

How marks are acquired

• The rights in the mark shall be acquired through registration with the Intellectual Property Office.

• Registration is necessary before one can file an action for infringement.

• Registration of a mark is not necessary for purposes of filing a case for unfair competition or false
designation of origin.

• When the law states that the right is acquired from the time of registration, it is actually referring to the
filing date of application.

• However, the right may also be protected from the priority date, subject to reciprocity.

ACTUAL USE

• Prior use in the Philippines is not required before registration.

• However, there must be actual use of the mark with evidence to that effect within 3 years from the filing
date of application otherwise it may be cancelled.

• The registrant is required to file a declaration of actual use and evidence to that effect or shall show a valid
reason of non-use within 1 year from the fifth anniversary date of registration.
Marks that cannot be registered

• 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;

• Consists of the flag or coat of arms or other insignia of the Philippines or any of its political
subdivisions, or any foreign nation, or any simulation thereof;

• Consists of a name, portrait or signature identifying a particular living individual except by his written consent,
or other 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;

• Identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority
date, in respect of: (1) the same goods or services, or (2) closely-related goods or services, or
(3) if it nearly resembles such a mark as to be likely to deceive or cause confusion;

• Generic terms for goods or services;

• Customary sign in everyday language;
• Descriptive marks including characteristic of
goods like quality or quantity; • Color by itself;

• Shapes
LIMITATIONS:

Doctrine of Secondary Meaning

• A generic or descriptive mark may later acquire the characteristic of distinctiveness and can later be registered
if it acquires a meaning which is different from its ordinary connotation. For this to happen, there must be
exclusive and continuous use for a period of at least 5 years.

• Example: “Selecta” for bakery products and “Ang Tibay” for shoes.

Composite Marks

• Although they cannot be registered by themselves, generic and descriptive marks, colors, and shapes may be
part of a composite mark but there should be a disclaimer and the person who registers them as part of a
mark will not acquire ownership thereto.

Contractions and Coined Marks

• Similarly, marks may be registered even if they are contractions of or coined from generic and descriptive
terms (e.g. Salonpas which came from the chemical component Methyl Salicylate which passes through the
skin and goes directly to the site of your pain).

Arbitrary Use

• Generic and descriptive terms may also be registered as trademarks if they are used in an arbitrary or fanciful
manner.

• Example: “Ivory” is generic for elephant tusk but arbitrarily used for soap. “Papa” is another word for
father but arbitrarily used for ketchup.
INTERNATIONALLY WELL-KNOWN MARKS

• The person who may question the mark (that is, oppose registration, petition for cancellation thereof, sue for
unfair competition) includes persons whose internationally well-known mark, whether or not registered, is
identical with or confusingly similar to or constitutes a translation of a mark that is sought to be registered or is
actually registered.

• There is also protection for internationally known marks registered in the Philippines for goods that are not
similar with respect to which registration is applied for.

• The Supreme Court ruled that foreign marks that are not yet registered are still accorded protection against
infringement and / or unfair competition under the Paris Convention and Nice Convention.

RIGHTS CONFERRED BY TRADEMARK

• The right to the exclusive use of the mark for one’s own goods and services.

• The right to prevent others from the use of the same mark for identical goods or services in the course of trade.

• The right to the exclusive use of one’s already registered mark even for goods or services into which one’s
venture expands, if used by others for dissimilar products that will likely damage the business interests of
the first venturer

DURATION OF TRADEMARK

• The duration of trademark is ten (10) years subject to indefinite renewal for periods of ten (10) years each.

Elements of trademark infringement under ra No. 8293

• The trademark being infringed is registered in the Intellectual Property Office; however, in the
infringement of trade name, the same need not be registered;

• The trademark or trade name is reproduced, counterfeited, copied, or colorably imitated by the
infringer;

• The infringing mark or trade name is used in connection with the sale, offering for sale, or advertising of any
goods, business or services; or infringing mark or trade name is applied to labels, signs, prints, packages,
wrappers, receptacles or advertisements intended to be used upon or in connection with such goods,
business or service.

• The use or application of the infringing mark or trade name is likely to cause confusion or mistake or to deceive
purchasers or others as to the goods or services themselves or as to the source or origin of such goods or
services or the identity of such business; and

• It is without consent of the trademark or trade name owner or the assignee thereof
 TYPE OF CONFUSIONS

CONFUSION OF GOODS - When an otherwise prudent purchaser is induced to purchase one product in the belief that he
is purchasing another, in which case defendant’s goods are then bought as the plaintiff’s and its poor quality reflects
badly on the plaintiff’s reputation.

CONFUSION OF BUSINESS - Wherein the goods of the parties are different but the defendant’s product can
reasonably (though mistakenly) be assumed to originate from the plaintiff, thus deceiving the public into believing
that there is some connection between the plaintiff and defendant which, in fact, does not exist.

What must be considered to determine infringement?

• The resemblance between the trademarks;

• The likely effect on the purchaser;
• The similarity of the goods to which the
trademarks are attached; • The registrant’s express or implied consent;

• Other fair and equitable considerations

Tests for infringement

1. Dominancy Test - The test focuses on the similarity of the prevalent features of the competing trademarks
which may cause confusion or deception, and thus infringement. If the competing trademark contains the main,
essential, or dominant features of another, and confusion or deception is likely to result, infringement takes
place.

Aural effects / idem sonans rule - In dominancy test, what are taken into account are signs, colors, design,
peculiar shape or name, or some special, easily remembered earmarks of the brand that readily attracts and
catches the attention of the ordinary consumer.

2. Holistic Test - The test requires that the entirety of the marks in question be considered in resolving the
confusing similarity. Comparison of words is not the only determining factor. The trademarks in their entirety
as they appear in their respective labels or hang tags must also be considered in relation to the goods to which
they are attached.

The discerning eye of the observer must focus not only on the predominant words but also on the other
features appearing in both labels in order that he may draw his conclusion whether one is confusingly similar
to the other.

Expansion of business rule

The protection to which the owner of the trademark is entitled is not limited to guarding his goods or business
from actual market competition with identical or similar products of the parties, but extends to all cases in which
the use by a junior appropriator of a trademark or trade name is likely to lead to a confusion of source, as where
the prospective purchasers would be misled into thinking that the complaining party has extended his business
into the field or is in any way connected with the activities of the infringer; or when it forestalls the normal
potential expansion of his business.
Use of identical marks not necessarily prohibited

• The use of identical mark does not, by itself, lead to a legal conclusion that there is trademark
infringement if they are not used for identical, similar or related goods.

• However, the use of identical mark can lead to unfair competition in certain cases.

• Also, if the mark is identical to an internationally well-known mark, there can possibly be trademark
infringement despite the products of both marks not being similar.

Protection of trade name

A trade name (including a corporate name) need not be registered with the IPO before an infringement suit may
be filed by its owner against the owner of the infringing trade name / trademark.

Example: The trademark “San Francisco Coffee” is an infringement of the trade name “San Francisco Coffee &
Roastery, Inc.” even if the latter trade name is not registered with the IPO.

Unfair competition

• This involves employing deception or any other means contrary to good faith by which a person passes off his
goods or business or services for those of one who has already established goodwill thereto.

Essential elements of unfair competition with respect to goods

• Confusing similarity in general appearance of the goods; and

• Fraud or intent to deceive the public and defraud a competitor

Test of unfair competition

• The test of unfair competition is whether or not the acts of the perpetrator have the intent of deceiving or
are calculated to deceive the ordinary buyer making his purchases under the ordinary conditions of the
particular trade to which the controversy relates.

Infringement vs. unfair competition

• AS TO NATURE. In infringement, there is an unauthorized use of a trademark while unfair competition under
the IPC involves the passing off of one’s goods as those of another and giving one’s goods the appearance of
that of another.

• AS TO INTENT. Intent to commit infringement is not necessary in the case of trademark infringement while
intent to commit unfair competition is necessary in order to be liable for the said act.

• AS TO REGISTRATION OF THE MARK. It is necessary for the mark to be registered in order for the owner
to complain trademark infringement but not necessary to complain for unfair competition.

• AS TO SCOPE. Trademark infringement is limited in scope, while unfair competition is broader.

 Inter Partes Cases

• These are contested cases filed before the Intellectual Property Office. It includes: (1) opposition against the
registration of a mark published for opposition; (2) petition to cancel the registration of a mark

When to file Inter partes cases:

OPPOSITION TO APPLICATION FOR REGISTRATION

• Within 30 days after

publication • Ground: Registration • Venue: IPO
will damage the
oppositor
CANCELLATION

• Within 5 years from date of registration

• Ground: Mark is confusingly similar

• Venue: IPO

• At any time

• Grounds: (1) the mark becomes generic or descriptive (e.g. aspirin, thermos, escalators), (2) abandonment or
failure to use the mark for an uninterrupted period of three years, or (3) the mark is being used to
misrepresent the source of goods or services.

• Venue: IPO
INTELLECTUAL PROPERTY CODE / PATENTS
WHAT CAN BE PATENTABLE?
Patentable inventions refer to any technical solution of a problem in any field of human activity which is new, involves
and inventive step and is industrially applicable.
WHAT ARE THE REQUISITES FOR THE INVENTION TO BE PATENTABLE?
A technical solution of a problem in any field of human activity (aka inventive step);
The technical solution must be novel;
It must be industrially applicable.
INVENTIVE STEP- An invention involves an inventive step if, having regard to prior art, it is not obvious to a “person skilled
in the art” at the time of the filing date or priority date of the application claiming the invention.
In the case of drugs and medicines, there is no inventive step if the invention results from:
Mere discovery of a new form or new property of a known substance which does not result in the enhancement of the
known efficacy of the substance;
Mere discovery of any new property or new use for a known substance; or
Mere use of a known process unless such known process results in a new product that employs at least one reactant.
PERSON SKILLED IN THE ART
Presumed to be an ordinary practitioner aware of what was common general knowledge in the art at the relevant
date.
He is presumed to have knowledge of all references that are sufficiently related to one another and to the pertinent
art and to have knowledge of all arts reasonably pertinent to the particular problems with which the inventor was
involved.
 He is presumed also to have had at his disposal the normal means and capacity to routine work and experimentation.
NOVEL IDEA
The idea must be novel or new or does not form part of prior art.
A prior art is (1) that which has been made available to the public anywhere in the world before filing date or the
priority date of application; (2) that which forms part of an application whether for patent, utility model or industrial
design, effective in the Philippines; Provided, that the inventor or applicants are not the same and the contents of the
application are published in accordance with the requirements of patent application rules and the filing date of prior
art is earlier.

INDUSTRIAL APPLICABILITY
The invention must be able to be produced and used in any industry.

PURPOSE OF PATENT
The patent law seeks to foster and reward invention;
It promotes disclosures of inventions to stimulate further innovation and to permit the public to practice the invention
once the patent expires.
The stringent requirements for patent protection seeks to ensure that ideas in the public domain remain there for the
free use of the public.

CLASS OF PATENTABLE INVENTIONS

Useful machine;
A product;
A process;
Improvement on the above – mentioned;
Microorganism;
Non – biological and microbiological process.

NON – PATENTABLE INVENTIONS

 Discoveries, scientific theories, and mathematical method;

 Schemes, rules, and methods of performing mental acts, playing games, or doing business, and programs for
computer;

 Methods of treatment of the human body or animal body by surgery or therapy and diagnostic methods
practiced on the human or animal body;

 Plant varieties or animal breeds of essentially biological process for the production of plants and animals;

 Aesthetic creations;

 Anything which is contrary to public order or morality .

In the case of drugs and medicines, there is no patentable invention in the following instances:
Mere discovery of a new form or new property of a known substance which does not result in the enhancement of the
known efficacy of the substance;
Mere discovery of any new property or new use for a known substance; or
Mere use of a known process unless such known process results in a new product that employs at least one reactant.

PERSONS ENTITLED TO PATENT RIGHT

The right to a patent belongs to the inventor, his heirs or assigns;
When two or more persons have jointly made an invention, the right to a patent shall belong to them jointly;
First to File Rule – if two or more persons have made the invention separately and independently of each other, the
right to the patent shall belong to the person who first filed an application for such invention. If the person who was
first to file merely stole or copied the invention of another, this rule will not apply. The person entitled to the patent
right is the true creator of the invention.
PREJUDICIAL DISCLOSURE
Whatever right one has to the invention covered by the patent arises alone from the application date. Thus, if the
inventor voluntarily discloses it, such as by offering it for sale, the world is free to copy and use it with impunity. Ideas,
once disclosed to the public without protection of a valid patent, are subject to appropriation without significant
restraint.

NON – PREJUDICIAL DISCLOSURE

Any disclosure of the invention made within 12 months before the filing date does not prejudice the application if the
disclosure is made by (1) the inventor himself (or anyone who has the right to patent), (2) a patent officer and (3) a
third party who obtained the information directly or indirectly from the inventor.

TERM OF PATENT
The term of the patent is 20 years from the filing date of application.
INFRINGEMENT
Infringement is the making, using, offering for sale, selling or importing a patented product or a product obtained
directly or indirectly from a patented process without the authorization of the patentee.

 In case of infringement, the patentee shall have the exclusive right to:

 Restrain the unauthorized entity from making, using, offering for sale, selling or importing the product;

 Prevent or prohibit the use of the process or from selling, offering for sale, or importing products obtained
from the process;

 Recover damages in a civil action for infringement which can be equivalent to royalty or an amount that does
not exceed 3 times the amount of actual damages; and

 Ask the court to order the infringing products or goods to be destroyed.

STEPS IN DETERMINING INFRINGEMENT

Determine if there is literal infringement. If there is literal infringement, the perpetrator is liable.
If there is no literal infringement, then the doctrine of equivalents should be applied.

LITERAL INFRINGEMENT
There is infringement of patent under this test if one makes, uses or sells an item that contains all the elements of the
patent claim. This test is satisfied in either of the following:

 Exactness Rule: the item that is being sold, made or used conforms exactly to the patent claim of another.

 Additional Rule: One makes, uses, or sells an item that has all the elements of the patent claim of another plus
other elements.

DOCTRINE OF EQUIVALENTS
The doctrine of equivalents provides that an infringement also takes place when a device appropriates a prior invention
by incorporating its innovative concept and, although with some modification and change, performs substantially the
same way to achieve substantially the same result.

COMPULSORY LICENSING
A Compulsory License is a license issued by the Director General of the IPO to exploit a patented invention without the
permission of the patent holder, either by manufacture or through parallel importation.

GROUNDS FOR COMPULSORY LICENSING

National emergency or other circumstances of extreme urgency;
Where the public interest, in particular, national security, nutrition, health or the development of other vital sectors of
the national economy as determined by the appropriate agency of the Government, so requires;
Where a judicial or administrative body has determined that the manner of exploitation by the owner of the patent or
his licensee is anti – competitive;
GROUNDS FOR COMPULSORY LICENSING
In case of public non – commercial use of the patent by the patentee, without satisfactory reason;
If the patented invention is not being worked in the Philippines on a commercial scale, although capable of being
worked, without satisfactory reason: Provided that the importation of the patented article shall constitute working or
using the patent; and
Where the demand for patented drugs and medicines is not being met to an adequate extent and on reasonable terms,
as determined by the Secretary of the Department of Health.

IN WHOSE FAVOR SHALL THE COMPULSORY LICENSE BE ISSUED?

o Compulsory license should be granted to any person who has shown his capability to exploit the invention.

o A compulsory license can be applied before the expiration of a period of 4 years from the date of filing of
application or 3 years from the date of the patent whichever period expires last.

o The compulsory license will only be granted after the petitioner has made efforts to obtain authorization from the
patent owner on reasonable commercial terms and conditions but such efforts have not been successful within a
reasonable period of time.

o Effort to obtain authorization is not required in the following instances:

Where the petition for compulsory license seeks to remedy a practice determined after judicial or administrative
process to be anti – competitive;

o In situations of national emergency or other circumstances of extreme urgency;

o In cases of public non – commercial use;

o In cases where the demand for the patented drugs and medicines is not being met to an adequate extent and on
reasonable terms, as determined by the DOH Secretary.

TECHNOLOGY TRANSFER AGREEMENT

Refers to contracts or agreements 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. It is in the nature of a Voluntary License Contract.

TRADE SECRETS
A trade secret is a plan or process, tool, mechanism or compound known only to its owner and those of his employees
to whom it is necessary to confide it. It includes a secret formula or process not patented, but known only to certain
individuals using it in compounding some article of trade having commercial value.
A trade secret is protected even though it is not patentable. It is covered by the proprietary rights of the owner of the
trade secret. Courts cannot generally issue an injunction to compel such disclosure.

FACTORS TO CONSIDER IN TRADE SECRETS

 The extent to which the information is known outside of the employer’s business;

 The extent to which the information is known by employees and others involved in the business;

 The extent of measures taken by the employer to guard the secrecy of the information;

 The value of the information to the employer and to competitors;

 The amount of effort or money expended by the company in developing the information; and
 The extent to which the information could be easily or readily obtained through an independent source