INTELLECTUAL PROPERTY LAW REVIEWER b.
The employer, if the inventive activity is the result of the performance of his regularly-
PATENTS
1.PATENTABLE INVENTION
Any technical solution of a problem in any field of human activity which is new, involves an
inventive step and is industrially applicable shall be patentable. It may be, or may relate to, a
product, or process, or an improvement of any of the foregoing.
NON-PATENTABLE INVENTION
Non-Patentable Inventions. - The following shall be excluded from patent protection:
22.1. Discoveries, scientific theories and mathematical methods;
22.2. Schemes, rules and methods of performing mental acts, playing games or doing business,
and programs for computers;
22.3 Methods for treatment of the human or animal body by surgery or therapy and diagnostic
methods practiced on the human or animal body. This provision shall not apply to products and
composition for use in any of these methods;
22.4. Plant varieties or animal breeds or essentially biological process for the production of
plants or animals. This provision shall not apply to micro-organisms and non-biological and
microbiological processes.
Provisions under this subsection shall not preclude Congress to consider the enactment of a law
providing sui generis protection of plant varieties and animal breeds and a system of community
intellectual rights protection:
22.5. Aesthetic creations; and
22.6. Anything which is contrary to public order or morality.
2. OWNERSHIP OF PATENT (SECTION 71)
Persons entitled to a patent
Inventor, his heirs, or assigns (IPC, Sec 28);
Joint invention – Jointly by the inventors (IPC, Sec. 28);
Two or more persons invented separately and independently of each other – To the person who
filed an application;
FIRST-TO-FILE RULE
1. If two (2) or more persons have made the invention separately and independently of each
other, the right to the patent shall belong to the person who filed an application for such
invention, or
2. Where two or more applications are filed for the same invention, to the applicant which has
the earliest filing date (IPC, Sec. 29).
INVENTIONS CREATED PURSUANT TO A COMMISSION
Pursuant to a commission: The person who commissions the work shall own the patent,
unless otherwise provided in the contract.
Pursuant to employment: In case the employee made the invention in the course of his
employment contract, the patent shall belong to:
a. The employee, if the inventive activity is not a part of his regular duties even if the employee
uses the time, facilities and materials of the employer;
assigned duties, unless there is an agreement, express or implied, to the contrary (IPC, Sec.
30).
Q: As between the inventor and the person who commissioned the inventor to create a
new work, who owns the patent?
A: The person who commissions the work shall own the patent, unless otherwise provided in the
contract. (IPC, Sec. 30)
RIGHT OF PRIORITY
Priority date
An application for patent filed by any person who has previously applied for the same invention
in another country which by treaty, convention, or law affords similar privileges to Filipino
citizens, shall be considered as filed as of the date of filing the foreign application(IPC, Sec. 31).
Filing Date is accorded only when all the requirements provided under Section 40 are present.
Priority Date comes into play when there is an application for patent for the same invention that
was filed in another country (Salao, 2012).
Conditions in availing of priority date
1.The local application expressly claims priority;
2. It is filed within 12 months from the date the earliest foreign application was filed; and
3. A certified copy of the foreign application together with an English translation is filed
within 6 months from the date of filing in the
Philippines. (Sec. 31, IPC)
3. GROUNDS FOR CANCELLATION OF PATENT (Sec. 61)
Cancellation of Patents. -
61.1. Any interested person may, upon payment of the required fee, petition to cancel the patent
or any claim thereof, or parts of the claim, on any of the following grounds:
(a) That what is claimed as the invention is not new or patentable;
(b) That the patent does not disclose the invention in a manner sufficiently clear and complete
for it to be carried out by any person skilled in the art; or
(c) That the patent is contrary to public order or morality.
61.2. Where the grounds for cancellation relate to some of the claims or parts of the claim,
cancellation may be effected to such extent only.
Grounds for cancellation of a utility model selling or offering for sale, or importing any product obtained directly or indirectly from such
process.
1. The invention does not qualify for registration as a utility model; 71.2. Patent owners shall also have the right to assign, or transfer by succession the patent,
2. That the description and the claims do not comply with the prescribed requirements; and to conclude licensing contracts for the same
3. Any drawing which is necessary for the understanding of the invention has not been
furnished;
4. That the owner of the utility model registration is not the inventor or his successor in 6. LIMITATION OF PATENT RIGHTS (Section 72)
title (IPC, Sec. 109.4).
Limitations of Patent Rights. — The owner of a patent has no right to prevent third parties from
Grounds for cancellation of an industrial design performing, without his authorization, the acts referred to in Section 71 hereof in the following
1. The subject matter of the industrial design is not registrable; circumstances:

2. The subject matter is not new; or 72.1. (DOCTRINE OF NATIONAL EXHAUSTION) Using a patented product which has been put
on the market in the Philippines by the owner of the product, or with his express consent, insofar
3. The subject matter of the industrial design extends beyond the content of the as such use is performed after that product has been so put on the said market;
application as originally filed (IPC, Sec. 120).
72.2. Where the act is done privately and on a non-commercial scale or for a non-commercial
Grounds for Cancellation of Layout-Design of Integrated Circuits purpose: Provided, That it does not significantly prejudice the economic interests of the owner of
1. The layout-design is not protectable; the patent;

2. The right holder is not entitled to protection:
3. Where the application for registration of the layout-design, was not filed within two (2)
years from its first commercial exploitation anywhere in the world.
Where the grounds for cancellation are established with respect only to a part of the layout-
design, only the corresponding part of the registration shall be cancelled (IPC, Sec. 120.3, as
amended by RA 9150)
4. REMEDIES OF THE TRUE AND ACTUAL INVENTOR (SEC. 68)
If a person, who was deprived of the patent without his consent or through fraud is declared by
final court order or decision to be the true and actual inventor, the court shall order for his
substitution as patentee, or at the option of the true inventor, cancel the patent, and award actual
and other damages in his favor if warranted by the circumstances.
Remedies of persons with a right to a patent
If a person other than the applicant is declared by final court order or decision as having the right
to a patent, he may within 3 months after such decision has become final:
72.3. Where the act consists of making or using exclusively for the purpose of experiments that
relate to the subject matter of the patented invention;
72.4. Where the act consists of the preparation for individual cases, in a pharmacy or by a
medical professional, of a medicine in accordance with a medical prescription or acts concerning
the medicine so prepared;
72.5. Where the invention is used in any ship, vessel, aircraft, or land vehicle of any other
country entering the territory of the Philippines temporarily or accidentally: Provided, That such
invention is used exclusively for the needs of the ship, vessel, aircraft, or land vehicle and not
used for the manufacturing of anything to be sold within the Philippines. (Secs. 38 and 39, R.A.
No. 165a)
Prior user
Person other than the applicant, who in good faith, started using the invention in the Philippines,
or undertaken serious preparations to use the same, before the filing date or priority date of the
application shall have the right to continue the use thereof, but this right shall only be transferred
or assigned further with his enterprise or business (IPC, Sec. 73).
Use by Government

1. Prosecute the application as his own

A Government agency or third person authorized by the Government may exploit the invention
2. File a new patent application even without agreement of the patent owner where:
3. Request the application to be refused; or a. The public interest, in particular, national security, nutrition, health or the development
4.Seek cancellation of the patent (IPC, Sec. 67.1).
of other sectors, as determined by the appropriate agency of the government, so requires; or
5. RIGHTS CONFERRED BY PATENT b. A judicial or administrative body has determined that the manner of exploitation, by the
owner of the patent or his licensee, is anti- competitive; or
Sec. 71. Rights Conferred by Patent. - c. In the case of drugs and medicines, there is a national emergency or other
71.1. A patent shall confer on its owner the following exclusive rights: circumstance of extreme urgency requiring the use of the invention; or
(a) Where the subject matter of a patent is a product, to restrain, prohibit and prevent any d. In the case of drugs and medicines, there is a public non-commercial use of the patent
unauthorized person or entity from making, using, offering for sale, selling or importing that
by the patentee, without satisfactory reason; or
product;
(b) Where the subject matter of a patent is a process, to restrain, prevent or prohibit any e. In the case of drugs and medicines, the demand for the patented article in the
unauthorized person or entity from using the process, and from manufacturing, dealing in, using, Philippines is not being met to an adequate extent and on reasonable terms, as determined by
the Secretary of the Department of Health. jurisdiction, to recover from the infringer such damages sustained thereby, plus attorney's fees
and other expenses of litigation, and to secure an injunction for the protection of his rights.

7. PATENT INFRINGEMENT 76.3. If the damages are inadequate or cannot be readily ascertained with reasonable certainty,
the court may award by way of damages a sum equivalent to reasonable royalty.
-The making, using, offering for sale, selling, or importing a patented product or a product
obtained directly or indirectly from a patented process, or the use of a patented process without 76.4. The court may, according to the circumstances of the case, award damages in a sum
the authorization of the patentee constitutes patent infringement above the amount found as actual damages sustained: Provided, That the award does not
exceed three (3) times the amount of such actual damages.
Civil Infringement
76.5. The court may, in its discretion, order that the infringing goods, materials and implements
The making, using, offering for sale, selling, or importing a patented product or a product predominantly used in the infringement be disposed of outside the channels of commerce or
obtained directly or indirectly from a patented process, or the use of a patented process without destroyed, without compensation.
the authorization of the patentee constitutes patent infringement.
76.6. Anyone who actively induces the infringement of a patent or provides the infringer with a
component of a patented product or of a product produced because of a patented process
Exemptions:
knowing it to be especially adopted for infringing the patented invention and not suitable for
substantial non-infringing use shall be liable as a contributory infringer and shall be jointly and
a. Parallel importation for patented drugs and severally liable with the infringer. (Sec. 42, R.A. No. 165a)
medicines;
Parallel importer is one who imports, distributes, and sells genuine products in the market,
independently of an exclusive distributorship or agency agreement with the manufacturer;
b. In the case of drugs and medicines, where the act includes testing, using, making or
CRIMINAL ACTION FOR INFRINGEMENT
selling the invention including any data related thereto, solely for purposes reasonably related to
the development and submission of information and issuance of approvals by government
Criminal Action for Repetition of Infringement. — If infringement is repeated by the infringer or by
regulatory agencies required under any law of the Philippines or of another country that
anyone in connivance with him after finality of the judgment of the court against the infringer, the
regulates the manufacture, construction, use or sale of any product;
offenders shall, without prejudice to the institution of a civil action for damages, be criminally
c. Use of Invention by Government;
liable therefor and, upon conviction, shall suffer imprisonment for the period of not less than six
d. Compulsory licensing; and
(6) months but not more than three (3) years and/or a fine of not less than One hundred
e. Procedures on Issuance of a Special
thousand pesos (P100,000) but not more than Three hundred thousand pesos (P300,000), at
Compulsory License under the TRIPS Agreement for patented drugs and medicines.
the discretion of the court. The criminal action herein provided shall prescribe in three (3) years
from date of the commission of the crime. (Section 84)
Contributory Infringement
Anyone who actively induces the infringement of a patent or provides the infringer with a
component of a patented product or of a product produced because of a patented process
knowing it to be especially adopted for infringing the patented invention and not suitable for
substantial non- infringing use shall be liable as a contributory infringer and shall be jointly and NOTICE TO INFRINGER
severally liable with the infringer. (Sec. 76.6, IPC)
Criminal Infringement Damages cannot be recovered for acts of infringement committed before the infringer had
known, or had reasonable grounds to know of the patent. It is presumed that the infringer had
known of the patent if on the patented product, or on the container or package in which the
If infringement is repeated by the infringer or by anyone in connivance with him after finality of
article is supplied to the public, or on the advertising material relating to the patented product or
the judgment of the court against the infringer, the offenders shall, without prejudice to the
process, are placed the words "Philippine Patent" with the number of the patent. (Section 80)
institution of a civil action for damages, be criminally liable. (IPC, Sec. 84)
B. TRADEMARKS
The criminal liability will arise only if the infringement is repeated, even if after the finality of
judgment of the court in the civil action against the infringer or anyone in connivance with him,

CIVIL ACTION FOR INFRINGEMENT 1. MARKS VS COLLECTIVE MARKS VS TRADE NAMES

SECTION 76. CIVIL ACTION FOR INFRINGEMENT.
76.1. The making, using, offering for sale, selling, or importing a patented product or a product
obtained directly or indirectly from a patented process, or the use of a patented process without
the authorization of the patentee constitutes patent infringement.
76.2. Any patentee, or anyone possessing any right, title or interest in and to the patented
invention, whose rights have been infringed, may bring a civil action before a court of competent
- "Mark" means 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;
-"Collective mark" means any visible sign designated as such in the application for registration
and capable of distinguishing the origin or any other common characteristics, 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;
-‘Trade name" means the name or designation identifying or distinguishing an enterprise, also
known or referred to as business identifier.
2. ACQUISITION OF OWNERSHIP
The right to register a trademark should be based on ownership. When the applicant is not the
owner of the trademark being applied for, he has no right to apply for the registration of the
same. Under the Trademark Law, only the owner of the trademark, trade name or service mark
used to distinguish his goods, business or service from the goods, business or service of others
is entitled to register the same. An exclusive distributor does not acquire any proprietary interest
in the principal's trademark and cannot register it in his own name unless it is has been validly
assigned to him (Superior Commercial Enterprises, Inc. v. Kunnan Enterprises, G.R. No.
169974, April 20, 2010).
The rights in a mark shall be acquired through registration made validly in accordance with the
provisions of the IP Code (IPC, Sec. 122).
Registration does not confer upon the registrant an absolute right to the registered mark. The
certificate of registration is merely a prima facie proof that the registrant is the owner of the
registered mark or trade name. Evidence of prior and continuous use of the mark or trade name
by another can overcome the presumptive ownership of the registrant and may very well entitle
the former to be declared owner in an appropriate case.
CONCEPT OF ACTUAL USE
Your trademark registration shall be in force for (10) years, and may be renewed indefinitely for
periods of ten (10) years. However, to maintain your trademark registration, the IP Code requires
you to file a declaration and evidence of actual use, otherwise, the protection granted to your
mark will lapse. Thus, by law, you must submit a Declaration of Actual Use and proof of use
(e.g., labels, brochures, and other evidence that you are using the mark) within the following
periods:
• three (3) years from the date of filing your application; and
• one (1) year from the 5th anniversary of the date of registration of your mark.
The filing of Declarations of Actual use is also needed upon renewal and mid-renewal.
Actual use of the mark in commerce is very important because if you are not using the mark in
your business, your mark will be removed from the trademarks register. To prove use of the
mark, you need to submit the declarations of use within the prescribed period.
EFFECT OF REGISTRATION
HOW CAN YOU PROTECT YOUR MARK?
In the Philippines, a trademark can be protected through registration. Registration gives the
trademark owner the exclusive right to use the mark and to prevent others from using the same
or similar marks on identical or related goods and services.
The right to a trademark is granted to the one who first files a trademark application with the IP
Philippines. Before applying for trademark registration, it would help if you conduct a search in
the trademarks database to determine if there are identical or similar marks that would prevent
the registration of your mark. This is to prevent future conflicts with marks that are already
registered or with earlier filing dates.
The trademark protection granted by IP Philippines protects your mark only in the Philippines. If
you want your mark protected outside the country, you will need to file applications in the
countries where you want your mark registered.
3. NON- REGISTRABLE MARKS (Sec. 123.)
123.1. 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;
(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.
123.2. 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
for which registration is requested as a result of the use that have 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.
123.3. The nature of the goods to which the mark is applied will not constitute an obstacle to
registration.
4. WELL KNOWN MARKS-In determining a mark as well-known, the fact that the mark is
neither registered nor used in the Philippines is of no consequence.
(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;
5. Sec. 131. Priority Right. -
131.1. An application for registration of a mark filed in the Philippines by a person referred to in
Section 3, and who previously duly filed an application for registration of the same mark in one of
those countries, shall be considered as filed as of the day the application was first filed in the
foreign country.
131.2. No registration of a mark in the Philippines by a person described in this section shall be
granted until such mark has been registered in the country of origin of the applicant.
131.3. Nothing in this section shall entitle the owner of a registration granted under this section to
sue for acts committed prior to the date on which his mark was registered in this country: Provided,
That, notwithstanding the foregoing, the owner of a well-known mark as defined in Section
123.1(e) of this Act, that is not registered in the Philippines, may, against an identical or confusingly
similar mark, oppose its registration, or petition the cancellation of its registration or sue for unfair
competition, without prejudice to availing himself of other remedies provided for under the law.
131.4. In like manner and subject to the same conditions and requirements, the right provided in
this section may be based upon a subsequent regularly filed application in the same foreign
country: Provided, That any foreign application filed prior to such subsequent application has been
withdrawn, abandoned, or otherwise disposed of, without having been laid open to public
inspection and without leaving any rights outstanding, and has not served, nor thereafter shall
serve, as a basis for claiming a right of priority.
Brief:
An application for registration of a mark filed in the Philippines by a person referred to in Section
3 of the IP Code, and who previously duly filed an application for registration of the same mark in
one of those countries, shall be considered as filed as of the day the application was first filed in
the foreign country. No registration of a mark shall be granted until such mark has been
registered in the country of origin of the applicant. (Sec. 131, IPC)
The owner of a mark seeking priority right is not entitled to sue for acts committed prior to the
date on which his mark was registered in the Philippines: except in the case of an owner of a
well-known mark.
6. RIGHTS CONFERRED BY REGISTRATION
The owner of a registered mark shall have the exclusive right to:
a. Use the mark for one’s own goods or services;
b. Prevent third parties from using, without his consent, signs or containers which are
identical or similar to the registered trademark 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
shal be presumed. (IPC, Secs. 147, 147.1)
Certificate of registration prima facie evidence of validity
A certificate of registration of a mark shall be prima facie evidence of the validity of the
registration, the registrant’s ownership of the mark, and of the registrant’s exclusive right to use
the same in connection with the goods or services and those that are related thereto specified in
the certificate (IPC, Sec. 138).
Issuance and publication of certificate
The certificate of registration shall be issued when the period for filing the opposition has
expired, or when the Director of Legal Affairs shall have denied the opposition, and upon
payment of the required fee (IPC, Sec. 136).
The registered mark shall be published, in the form and within the period fixed by the
Regulations. Marks registered at the Office may be inspected free of charge and any person
may obtain copies thereof at his own expense. This provision shall also be applicable to A: A trademark registration may be cancelled by any person who believes that he will be
transactions recorded in respect of any registered mark (IPC, Sec. 138). damaged by the registration of the mark:

Duration of a certificate of trademark registration 1. Within 5 years, from the date of the registration of the mark; or
2. At any time;
A certificate of registration shall remain in force for ten (10) years, provided that the registrant a. If the registered mark becomes the generic name for the goods or services, or a
shall file a declaration of actual use and evidence to that effect, or shall show valid reasons portion thereof, for which it is registered;
based on the existence of obstacles to such use, as prescribed by the Regulations, within one b. If the mark has been abandoned;
(1) year from the fifth anniversary of the date of the registration of the mark. Otherwise, the mark c. If its registration was obtained fraudulently
shall be removed from the Register by the Office. (IPC, Sec. 145) or contrary to the provisions of the IPC;
d. If the registered mark is being used by, or with the permission of, the registrant so as
to misrepresent the source of the goods or services on or in connection with which the
The applicant or the registrant shall file a declaration of actual use of the mark with evidence to mark is used;
that effect, as prescribed by the Regulations within three (3) years from the filing date of the e. Non-use of the mark within the Philippines, without legitimate reason, for an
application. Otherwise, the application shall be refused or the mark shall be removed from the uninterrupted period of 3 years.
Register by the Director (IPC, Sec. 124.2). NOTE: If in a petition for cancellation of a trademark, it was established that the petitioner was
not its owner, prior registration can be cancelled without need of filing a separate petition (E.Y.
Effect of failure to file Declaration of Actual Use Industrial Sales, Inc. v. Shen Dar Electricity and Machinery Co. Ltd., G.R. No. 184850, October
20, 2010).
The applicant or the registrant shall file a declaration of actual use (DAU) of the mark with 8. TRADEMARK INFRINGEMENT
evidence to that effect, within three (3) years 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. Use without consent of the trademark owner of any reproduction, counterfeit, copy or colorable
(IPC, Sec. 124.2) limitation of any registered mark or trade name. Such use is likely to cause confusion or mistake
or to deceive purchasers or others as to the source or origin of such goods or services, or
A fifth anniversary use is also required. This is done by filing a declaration of actual use and Identity of such business. (Esso Standard Eastern v. CA, supra)
evidence to that effect within one year from the fifth anniversary of the registration. The form and
evidence of use required are similar to the third year DAU. Failure to submit the fifth anniversary 9. UNFAIR COMPETITION
use and evidence to that effect shall merit the cancellation of the mark.
Employing deception or any other means contrary to good faith by which a person passes off his
Renewal of registration goods or business or services for those of one who has already established goodwill thereto.
(IPC, Sec. 168.2)
A certificate of registration may be renewed for periods of ten (10) years at its expiration. Each
request for renewal of registration must be made within 6 months before the expiration of the It is the passing off (or palming off) or attempting to pass off upon the public of the goods or
registration or within 6 months after such expiration on payment of the additional fee prescribed. business of one person as the goods or business of another with the end and probable effect of
(IPC, Sec. 146) deceiving the public. Passing off (or palming off) takes place where the defendant, by imitative
devices on the general appearance of the goods, misleads prospective purchasers into buying
his merchandise under the impression that they are buying that of his competitors. Thus, the
Rights of a registered mark owner defendant gives his goods the general appearance of the goods of his competitor with the
intention of deceiving the public that the goods are those of his competitor. (Republic Gas
Except in cases of importation of drugs and medicines allowed under Section 72.1 of the IP Corporation v. Petron Corporation, G. R. No. 194062, June 17, 2013)
Code and of off- patent drugs and medicines, 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 INFRINGEMENT OF TRADEMARK UNFAIR COMPETITION
course of trade identical or similar signs or containers for goods or services
Unauthorized use of a trademark. The passing off of one’s goods as those of
which are identical or similar to those in respect of which the trademark is registered where such another.
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.
Fraudulent intent is unnecessary. Fraudulent intent is essential.
There shall be no infringement of trademarks or trade names of imported or sold patented drugs
and medicines allowed under Section 72.1 of the IP Code, as well as imported or sold off-patent GR: Prior registration of the trademark is a prerequisite to the action.
drugs and medicines; Provided, That said drugs and medicines bear the registered marks that
have not been tampered, unlawfully modified, or infringed upon, under Section 155 of the IP XPN: Well-known marks
Code. (Sec. 147, IPC)
Registration is not necessary. (Del Monte Corp. v. CA, G.R. No. 78325, January 23, 1990)
6. CANCELLATION OF REGISTRATION
Q: In what way is an infringement of a trademark similar to that which pertains to unfair is created shall be necessary for exploitation of such work for profit. Such agency or office, may,
competition? (2003 Bar) among other things, impose as condition the payment of royalties.
XPN: No prior approval or conditions shall be required for the use of any purpose of statutes,
A: The similarity lies in both their ability to disrupt fair competition amongst business enterprises rules and regulations, and speeches, lectures, sermons, addresses, and dissertations,
and other businesses. They can also create confusion, mistake, and deception as to the minds pronounced, read, or rendered in courts of justice, before administration agencies, in deliberative
of the consumers with regard to the source or identity of their products or services due to its assemblies and in meetings of public character (IPC, Sec. 176).
similarity in appearance or packaging.
7. TV programs, format of TV programs (Joaquin v. Drilon, G.R. No. 108946,
Jan. 28, 1999)
COPYRIGHTS 8. Systems of bookkeeping; and
9. Statutes.
A right over literary and artistic works which are original intellectual creations in the literary and
artistic domain protected from the moment of creation (IPC, Sec. 171.1). 3. RIGHTS CONFERRED BY REGISTRATION

1. COPYRIGHTABLE WORKS
The author of a work has copy or economic rights, as well as moral rights over the work.
1. Literary and Artistic Works
The author has the exclusive right to carry out, authorize or prevent the:
a. Books, pamphlets, articles and other writings
• Reproduction of the work or substantial portion of the work;
• Dramatization, translation, adaptation, abridgment, arrangement or other
b. Lectures, sermons, addresses, dissertations prepared for Oral delivery, whether or not
transformation of the work;
reduced in writing or other material form
• The first public distribution of the original and each copy of the work by sale
c. Letters
or other forms of transfer of ownership;
d. Dramatic, choreographic works
• Rental of the original or a copy of an audio-visual or cinematographic work,
e. Musical compositions
a work embodied in a sound recording, a computer program, a compilation of data and other
f. Works of Art
materials or a musical work in graphic form, irrespective of the ownership of the original or the
g. Periodicals and Newspapers
copy which is the subject of the rental;
h. Works relative to Geography, topography, architecture or science
• Public display of the original or a copy of the work;
i. Works of Applied art
• Public performance of the work; and
j. Works of a Scientific or technical character
• Other communication to the public of the work.
k. Photographic works
l. Audiovisual works and cinematographic works
m. Pictorial illustrations and advertisements
Moral rights confer the following on the author of a work:
n. Computer programs; and
o. Other literary, scholarly, scientific and artistic works (IPC, Sec. 172.1). • To require that the authorship of the works be attributed to him, in particular;
2. Derivative Works the right that his name, as far as practicable, be indicated in a prominent way on the copies, and
a. Dramatizations, translations, adaptations, abridgements, arrangements, and other in connection with the public use of his work;
alterations of literary or artistic works; • To make any alterations of his work prior to, or to withhold it from
b. Collections of literary, scholarly, or artistic works and compilations of data and other publication;
materials which are original by reason of the selection or coordination or arrangement of their • To object to any distortion, mutilation or other modification of, or other
contents (IPC, Sec. 173). derogatory action in relation to, his work which would be prejudicial to his honor or reputation;
and
2. NON-COPYRIGHTABLE WORKS • 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.
Non-copyrightable works
Neighboring rights
1. Idea, procedure, system, method or operation, concept, principle, discovery
or mere data as such 1. Performers rights
2. News of the day and other items of press information 2. Producers of sound recordings
3. Any official text of a legislative, administrative or legal nature, as well as any 3. Broadcasting organizations
official translation thereof
4. Pleadings
5. Decisions of courts and tribunals – this refers to
original decisions and not to annotated decisions such as the SCRA or SCAD as these already
fall under the classification of derivative works, hence copyrightable
6. Any work of the government of the Philippines
GR: Conditions imposed prior the approval of the government agency or office wherein the work
4. OWNERSHIP OF A COPYRIGHT
Original literary and artistic works
Author of the work. (IIPC, Sec. 178.1).
Joint authorship
Co-authors – in case of works of joint authorship; in the absence of agreement, their rights shall
be governed by the rules on co-ownership.
NOTE: If work of joint authorship consists of parts that can be used separately, then the author
of each part shall be the original owner of the copyright in the part that he has created (IPC, Sec.
178.2)
Audiovisual work
GR: Producer, the author of the scenario, the composer of the music, the film director, and the
author of the work so adapted
XPN: Unless otherwise provided in an agreement, the producers shall exercise the copyright to
an extent required for the exhibition of the work in any manner, except for the right to collect
performing license fees for the performance of musical compositions, with or without words,
which are incorporated into the work (IPC, Sec. 178.5)
Anonymous and pseudonymous works
The publishers shall be deemed to represent the authors of articles and other writings published
without the names of the authors or under pseudonyms, unless the contrary appears, or the
pseudonyms or adopted name leaves no doubt as to the author's identity, or if the author of the
anonymous works discloses his identity (IPC, Sec. 179).
Commissioned work
The person who commissioned the work shall own the work but the copyright thereto shall
remain with the creator, unless there is a written stipulation to the contrary (IPC, Sec. 178.4).
Collective works
When an author contributes to a collective work, his right to have his contribution attributed to
him is deemed waived unless he expressly reserves it. (IPC, Sec. 196)
In the course of employment
The employee, if not a part of his regular duties even if the employee uses the time, facilities and
materials of the employer.
The employer, if the work is the result of the performance of his regularly-assigned duties,
unless there is an agreement, express or implied, to the contrary. (IPC, Sec. 178.3)
Letters
In respect of letters, the copyright shall belong to the writer subject to the provisions of Article
723 of the Civil Code. (IPC, Sec. 178.6).
Civil Code of the Philippines
Article 723. 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. However, the court may authorize their publication or
dissemination if the public good or the interest of justice so requires.
5.LIMITATIONS ON COPYRIGHT
Sec. 184. Limitations on Copyright. -
184.1. Notwithstanding the provisions of Chapter V, the following acts shall not constitute
infringement of copyright:
(a) the recitation or performance of a work, once it has been lawfully made accessible to the public,
if done privately and free of charge or if made strictly for a charitable or religious institution or
society; (Sec. 10(1), P. D. No. 49)
(b) The making of quotations from a published work if they are compatible with fair use and only
to the extent justified for the purpose, including quotations from newspaper articles and periodicals
in the form of press summaries: Provided, That the source and the name of the author, if appearing
on the work, are mentioned; (Sec. 11, Third Par., P. D. No. 49)
(c) The 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 of the same
nature, which are delivered in public if such use is for information purposes and has not been
expressly reserved: Provided, That the source is clearly indicated; (Sec. 11, P. D. No. 49)
(d) The 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; (Sec. 12, P. D. No. 49)
(e) The inclusion of a work in a publication, broadcast, or other communication to the public, sound
recording or film, if such inclusion is made by way of illustration for teaching purposes and is
compatible with fair use: Provided, That the source and of the name of the author, if appearing in
the work, are mentioned;
(f) The 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: Provided, That such
recording must be deleted within a reasonable period after they were first broadcast: Provided,
further, That such recording may not be made from audiovisual works which are part of the general
cinema repertoire of feature films except for brief excerpts of the work;
(g) The making of ephemeral recordings by a broadcasting organization by means of its own
facilities and for use in its own broadcast;
(h) The use made of a work by or under the direction or control of the Government, by the National
Library or by educational, scientific or professional institutions where such use is in the public
interest and is compatible with fair use;
(i) The public performance or the communication to the public of a work, in a place where no
admission fee is charged in respect of such public performance or communication, by a club or
institution for charitable or educational purpose only, whose aim is not profit making, subject to
such other limitations as may be provided in the Regulations; (n)
(j) 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: Provided, That either
the work has been published, or, that original or the copy displayed has been sold, given away or
otherwise transferred to another person by the author or his successor in title; and
(k) Any use made of a work for the purpose of any judicial proceedings or for the giving of
professional advice by a legal practitioner.
184.2. The provisions of this section shall be interpreted in such a way as to allow the work to be
used in a manner which does not conflict with the normal exploitation of the work and does not
unreasonably prejudice the right holder's legitimate interest.
6.DOCTRINE OF FAIR USE
Sec. 185. Fair Use of a Copyrighted Work. -
185.1. The fair use of a 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. Decompilation, which is understood here to be the reproduction of the
code and translation of the forms of the computer program to achieve the inter-operability of an
independently created computer program with other programs may also constitute fair use. In
determining whether the use made of a work in any particular case is fair use, the factors to be
considered shall include:
(a) The purpose and character of the use, including whether such use is of a commercial nature
or is for non-profit education purposes;
(b) The nature of the copyrighted work;
(c) The amount and substantiality of the portion used in relation to the copyrighted work as a
whole; and
(d) The effect of the use upon the potential market for or value of the copyrighted work.
185.2 The fact that a work is unpublished shall not by itself bar a finding of fair use if such finding
is made upon consideration of all the above factors.
Doctrine of Fair Use
“Fair use” permits a secondary use that “serves the copyright objective of stimulating productive
thought and public instruction without excessively diminishing the incentives for creativity”.
The fair use of a copyrighted work for criticism, comment, news reporting, teaching including
limited number of copies for classroom use, scholarship, research, and similar purposes is not
an infringement of copyright.
7.COPYRIGHT INFRINGEMNENT
Under Philippine law, copyright infringement occurs when there is a violation of any of the
exclusive economic or moral rights granted to the copyright owner. It may also consist in aiding
or abetting such infringement. The IP Code also provides for the liability of a person who at the
time when copyright subsists in a work has in his possession an article which he knows, or ought
to know, to be an infringing copy of the work for the following purposes: (a) selling or letting for
hire, or by way of trade offering or exposing for sale or hire, the article; (b) distributing the article
for the purpose of trade, or for any other purpose to an extent that will prejudice the rights of the
copyright owner in the work; or (c) trade exhibit of the article in public.
The unauthorized use of copyrighted material in a manner that violates one of the copyright
owner’s exclusive rights, such as the right to reproduce or perform the copyrighted work, or to
make derivative works that build upon it
Copyright Infringement
It is the doing by any person, without the consent of the owner of the copyright, of anything the
sole right to do which is conferred by statute on the owner of the copyright. The act of lifting from
another’s book substantial portions of discussions and examples and the failure to acknowledge
the same is an infringement of copyright.
Trademark Dilution
It is the lessening of the capacity of a famous mark to identify and distinguish goods or services,
regardless of the presence or absence of (1) competition between the owner of the famous mark
and other parties; or (2) likelihood of confusion, mistake or deception. Subject to the principles of
equity, the owner of a famous mark is entitled to an injunction against another person’s
commercial use in commerce of a mark or trade name, if such use begins after the mark has
become famous and causes dilution of the distinctive quality of the mark (Levi Strauss & Co., vs.
Clinton Apparelle, Inc., G.R. No. 138900, September 20, 2005).
Note: The Intellectual Property Code does NOT expressly provide protection against trademark
dilution. Nonetheless, its concept is very much present in the protection of Internationally well-
known marks
McDonald’s claimed to have suffered and continue to suffer actual damages in the form of injury
to their business reputation and goodwill and of the dilution of the distinctive quality of the
McDonald’s marks, in particular, the mark “Big Mac” (McDonald’s Corp v. L.C. Big Man Burger,
Inc., supra).
Trademark infringement
The use without consent of the trademark owner of any a) reproduction, b) counterfeit, c) copy or
d) colorable imitation of any registered mark or tradename in connection with the sale, offering
for sale, or advertising of any goods, business or services on or in connection with which such
use is likely to cause confusion or mistake or to deceive purchasers or others as to the source or
origin of such goods or services, or identity of such business; or reproduce, counterfeit, copy or
colorably imitate any such mark or tradename and apply such reproduction, counterfeit, copy or
colorable limitation to labels, signs, prints, packages, wrappers, receptacles or advertisements
intended to be used upon or in connection with such goods, business or services (Esso
Standard Eastern v. CA, G.R. No. L‐29971, Aug. 31, 1982)
Use without consent of the trademark owner of any reproduction, counterfeit, copy or colorable
limitation of any registered mark or trade name. Such use is likely to cause confusion or mistake
or to deceive purchasers or others as to the source or origin of such goods or services, or
Identity of such business. (Esso Standard Eastern v. CA, supra)
A crucial issue in any trademark infringement case is the likelihood of confusion, mistake or
deceit as to the identity, source or origin of the goods or identity of the business as a
consequence of using a certain mark. Likelihood of confusion is admittedly a relative term, to be
determined rigidly according to the particular (and some- times peculiar) circumstances of each
case. Thus, in trademark cases, more than in other kinds of litigation, precedents must be
studied in the light of each particular case. (Mighty Corporation vs. E. J. Gallo Winery, G.R. No.
154342, 14 July 2004)
Failure to present proof of actual confusion does not negate their claim of trademark
infringement. Trademark infringement requires the less stringent standard of “likelihood of
confusion” only. While proof of actual confusion is the best evidence of infringement, its absence
is inconsequential. (McDonalds Corporation v. L. C. Big Mak Burger, Inc., G.R. No. 143993,
August 18, 2004)
CLOSELY-RELATED PRODUCTS
WELL-KNOWN MARKS
It refers to a mark considered well-known by the competent authority of the country where
protection for the mark is sought
The scope of protection initially afforded by Article 6bis of the Paris Convention has been
expanded via a nonbinding recommendation that a well-known mark should be protected in a
country even if the mark is neither registered nor used in that country (Sehwani, Incorporated vs.
In-N-Out Burger, Inc., G. R. No. 171053, October 15, 2007).
A junior user of a well-known mark on goods or services which are not similar to the goods or
services, and are therefore unrelated, to those specified in the certificate of registration of the
well- known mark is precluded from using the same on the entirely unrelated goods or services,
subject to the following requisites, to wit:
Sec. 24. Prior Art. - Prior art shall consist of:
24.1. Everything which has been made available to the public anywhere in the world,
before the filing date or the priority date of the application claiming the invention; and
24.2. The whole contents of an application for a patent, utility model, or industrial
design registration, published in accordance with this Act, filed or effective in the
Philippines, with a filing or priority date that is earlier than the filing or priority date of
the application: Provided, That the application which has validly claimed the filing date
of an earlier application under Section 31 of this Act, shall be prior art with effect as of
the filing date of such earlier application: Provided further, That the applicant or the
inventor identified in both applications are not one and the same. (Sec. 9, R. A. No.
165a)
Sec. 26. 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. (n)
Sec. 27. Industrial Applicability. - An invention that can be produced and used in any industry
shall be industrially applicable. (n)
Copyright
Literary and artistic works which are original intellectual creations in the literary and artistic
domain protected from the moment of their creation.
Trademark
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. (RA 8293, Sec.

1. The mark is well-known internationally and in the Philippines

2. The use of the well-known mark on the entirely unrelated goods or services would
result to the likelihood of confusion of origin or business or some business connection or
relationship between the registrant and the user of the mark;

3. The interests of the owner of the well-known mark are likely to be damaged (246
Corporation, doing business under the name and style of Rolex Music Lounge v. Hon. Reynaldo
B. Daway, in his capacity as Presiding Judge of RTC Branch 90, Quezon City, G.R. No. 157216,
November 20, 2003).

Patentable Inventions. - Any technical solution of a problem in any field of human activity which is
new, involves an inventive step and is industrially applicable shall be patentable. It may be, or may
relate to, a product, or process, or an improvement of any of the foregoing.

Sec. 23. Novelty. - An invention shall not be considered new if it forms part of a prior art. (Sec. 9,
R. A. No. 165a)