Lesson 9: Intellectual Property Law (Republic Act No.

8293, As Amended by RA 10372)

Exercises: Situational questions. Each answer must be supported by a legal basis.

1. What is protected — first to invent or first to register?

Answer: Under the old law, RA 165, the one protected is the first to invent. In this old law exists
a "first-to-invent" system. However, under the new law which is RA 8293, also known as the
Intellectual Property Code of the Philippines, what exists is the "first-to-file system". Therefore,
the one protected by law is the first one to register

2. Who is the owner of the ‘Anonymous and Pseudonymous Works’?

Answer: According to Section 178 and 179 of Republic Act 8293, the copyright ownership is
under the following rules:

For anonymous works and works under a pseudonym, the publisher shall represent the work's
author who are either anonymous or under a pseudonym, unless the contrary appears or the
author discloses his/her identity.

The duration or term of protection of works in case of anonymous or pseudonymous works shall
last for 50 years from the date on which the work was first lawfully published. If the work was not
published, it shall be protected for 50 years counted from the creation of the work.

3. Discuss the principles of ‘idem sonans’ and ‘dominancy test’ in trademarks.

Answer: Idem sonans is a legal doctrine whereby a person's identity is presumed known
despite the misspelling of his or her name. The presumption lies in the similarity between the
Phonology, or sounds of the correct name and the name as written.

Meanwhile, the Supreme Court describes the dominancy test as follows:

The dominancy test focuses on 'the similarity of the prevalent or dominant features of the
competing trademarks that might cause confusion, mistake, and deception in the mind of the
purchasing public. Duplication or imitation is not necessary; neither is it required that the mark
sought to be registered suggests an effort to imitate. Given more consideration are the aural
and visual impressions created by the marks on the buyers of goods, giving little weight to
factors like prices, quality, sales outlets, and market segments. Dominancy test generally
favours established international brands .

4. What are those which are patentable inventions?

Answer: 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.

5. What are those which are not patentable inventions?

Answer: As stated in the Section 22 of RA 8293, Non-patentable inventions includes the
following:
a. Discoveries, scientific theories and mathematical methods
b. Schemes, rules and methods of performing mental acts, playing games or doing
business, and programs for computers
c. Methods for treatment of the human or animal body by surgery or therapy and diagnostic
methods practiced on the human or animal body.
d. Plant varieties or animal breed or essentially biological process for the production of
plants or animals.
e. Aesthetic creations
f. Anything which is contrary to public order or morality.