Professional Documents
Culture Documents
the three-dimensional disposition prepared for property right is otherwise entitled by the
an integrated circuit intended for manufacture IPC (Sec. 3).
(Sec. 112 [3], R.A. No. 8293, as amended).
Note: If the foreign corporation not doing
Note: For a layout-design to be entitled to business in the Philippines is suing as a party
protection it must be original in the sense that of a treaty to which the Philippines is a
they are the result of their creators’ own signatory, the fact that it is suing under Sec 3,
intellectual effort and are not commonplace RA 8293 need not be alleged anymore and the
among creators of layout-designs court may take judicial notice of such fact as it
(topographies) and manufacturers of is embodied in and supplied by the Paris
integrated circuits at the time of their creation. Convention which forms part of the law of the
land, provided that the party suing
Technology Transfer Arrangements substantially complied with the requirements
Contracts or agreements involving the transfer of the law (Puma Sportschufabriken Rudolf
of systematic knowledge for the manufacture Dassler,K.G. vs. IAC, GR 75067, Feb. 26,
of a product, the application of a process, or 1988).
rendering of a service including management
contracts; and the transfer, assignment or In another case, Leviton Industries, Inc.
licensing of all forms of intellectual property vs. Salvador, (GR No. 40163, June 19,
rights, including licensing of computer software 1982), the Court held that failure to allege
except computer software developed for mass reciprocity is fatal to foreign corporation’s
market (Sec. 4.2, IPC). cause it being shown that it failed to
comply with the requirements of the law.
Undisclosed Information
Information which: Principle of Reverse Reciprocity
1. is a secret in the sense that it is not, as a Any condition, restriction, limitation,
body or in the precise configuration and diminution, requirement, penalty or any similar
assembly of components, generally burden imposed by the law of a foreign
known among or readily accessible to country on a Philippine national seeking
persons within the circles that normally protection of intellectual property rights in that
deal with the kind of information in country, shall reciprocally be enforceable upon
question; nationals of said country within Philippine
2. has commercial value because it is jurisdiction (Sec. 231, IPC).
secret; and
3. has been subject to reasonable steps National Treatment Principle
under the circumstances, by the person The Philippines, upon becoming a member of
lawfully in control of the information, to the WTO, has adhered to the Trade-Related
keep it secret (Art. 39, TRIPS Aspects of Intellectual Property Rights
Agreement). (TRIPS), which provides that protection
afforded to the member-state (with respect to
INTERNATIONAL LAW RELATED intellectual property) must be extended to the
PROVISIONS nationals of other member-states.
1
San Beda College of Law
Laws on Intellectual Property
2
San Beda College of Law
2010 Centralized Bar Operations
3
San Beda College of Law
Laws on Intellectual Property
4
San Beda College of Law
2010 Centralized Bar Operations
5
San Beda College of Law
Laws on Intellectual Property
6
San Beda College of Law
2010 Centralized Bar Operations
rehabilitation in the same style as the its work or facilities, (iii) for use in its own
original of the building (Sec. 186); broadcast;
4. Private reproduction of published work in a 8. Use made of a work by or under the
single copy by a natural person for direction or control of the government for
research and private study (Sec. 187); public interest compatible with fair use;
5. Reprographic reproduction in a single 9. Public performance or the communication
copy by non-profit libraries, under certain to the public of a work in a place where no
circumstances (Sec. 188); admission fee is charged by a club on
6. Reproduction, under certain institution for charitable or educational
circumstances, of a computer program in purpose only and the aim is not profit-
one back-up copy by the lawful owner of making;
the program (Sec. 189); 10. Public display of the original or a copy of
7. Importation for personal purposes under the work not made by means of a film,
certain conditions (Sec. 190). slide, television, image or otherwise on
screen or by means of any other device or
General Limitations (R4QP2I-MU2) process either the work has been
Acts that do not infringe copyright: published, sold, given away, or transferred
1. Recitation or performance of a work: (i) to another person by the author or his
made accessible to the public, (ii) privately successor in title; and
done, (iii) free of charge, (iv) strictly for a 11. Use made of a work for the purpose of any
charitable or religious institution; judicial proceedings or for the giving of
2. Making of quotations from a published professional advice by a legal practitioner
work: (i) compatible with fair use, (ii) extent (Sec. 184).
is justified by the purpose, (iii) source and
name of the author, appearing on work, Fair Use
must be mentioned; A privilege, of persons other than the owner of
3. Reproduction or communication to the the copyright, to use the copyrighted material
public by mass media of articles on current in a reasonable manner without his consent,
political, social, economic, scientific or notwithstanding the monopoly granted to the
religious topic, lectures, addresses and owner by the copyright.
other works, delivered in public: (i) for
information purposes, (ii) not expressly It does not constitute infringement.
reserved, and (iii) source is already
indicated; Examples:
4. Reproduction and communication to the 1. Criticizing, commenting, and news
public of literary, scientific or artistic works reporting;
as part of reports of current events by 2. Using for instructional purposes, including
means of photography, cinematography or producing multiple copies for classroom
broadcasting to the extent necessary for use, for scholarship, research and similar
the purpose; purposes
5. Inclusion of a work in a publication, 3. Decompilation – the reproduction of the
broadcast or other communication to the code and translation of the forms of the
public, sound recording or film if made by computer program to achieve the inter-
way of illustration for teaching purposes operability of an independently created
compatible with fair use and the source computer program with other computer
and the name of the author appearing on programs (Sec. 185).
work, must be mentioned;
6. Recording made in schools, universities, Criteria to determine whether use is fair or
or educational institutions of a work not:
included in a broadcast for the use of 1. Purpose and the character of the use;
schools, universities or educational 2. Nature of the copyrighted work;
institutions. Such recording must be 3. Amount and substantiality of the portions
deleted with in a reasonable period; such used;
recording may not be made from audio- 4. Effect of the use upon the potential market
visual works which are part of the general of the copyrighted work (Sec. 185).
cinema, repertoire of feature films except
of brief excerpts of the work; Note: Concept of fair use only applies to
7. Making of ephemeral recordings; (i) by a copyrighted work and NOT to non-
broadcasting organization, (ii) by means of copyrightable material.
7
San Beda College of Law
Laws on Intellectual Property
8
San Beda College of Law
2010 Centralized Bar Operations
9
San Beda College of Law
Laws on Intellectual Property
10
San Beda College of Law
2010 Centralized Bar Operations
11
San Beda College of Law
Laws on Intellectual Property
Requisites of Patentability (Sec. 21) Persons Who May File an Application for a
A. Technical Solution of a problem in any Patent in the Philippines
field of human activity. As to the Legal
B. New (Novelty) – an invention shall not be As to Nationality Personality of the
considered new if it forms part of a prior Applicant
art (Sec. 23). 1. Filipino Nationals; 1. Inventor or his
2. Foreign Nationals or attorney-in-fact;
Prior Art (Sec. 24)
those domiciled or 2. Assignee of the
That which has been made available have a real and inventor
to the public anywhere in the world effective commercial
BEFORE the filing date or the priority establishment in a
date of the application; country which is
bound by treaty
General Rule: That which forms part of an (such as the Paris
application whether for patent, utility model Convention and the
or industrial design, effective in the TRIPS Agreement)
to grant Filipinos the
Philippines, provided that: same rights it grants
1. the inventors or applicants are not the to its own nationals;
same 3. Foreign Nationals
2. the contents of the application are whose country also
published in accordance with the accepts the patent
requirements of patent application application of
rules; Filipinos.
3. the filing date of the prior art is earlier
Note: To be able to effectively and legally
Exception: Non-prejudicial disclosure preclude others from copying and profiting
1. Disclosure of information contained in from the invention, a patent is a primordial
the application; requirement.
2. Made by:
a. The inventor; No Patent, No Protection
b. Patent office and the information The ultimate goal of a patent system is to bring
was contained: a) in another new designs and technologies into the public
application filed by the inventor domain through disclosure. Ideas, once
and should not have been disclosed to the public without the protection of
disclosed by the office; or b) in an a valid patent, are subject to appropriation
application filed without the without significant restraint (Pearl & Dean
knowledge or consent of the (Phil.) v. Shoemart, GR No. 148222, August
inventor by a third party which 15, 2003).
obtained the information directly
or indirectly from the inventor; or “First-to-File” Rule/ System
c. A third party which obtained the This is the system of patent registration
information directly or indirectly adopted under the IPC in lieu of the first-to-
from the inventor (Sec. 25). invent system.
3. Made during the 12 months preceding
the filing date or the priority date of Right to Priority of an Earlier-filed Foreign
the application. Application (Sec. 31)
Requisites:
C. Involves an Inventive Step 1. The local application expressly claims
(Inventiveness) – an invention involves priority;
inventive step of, having regard to prior 2. It is filed within 12 months from the date of
art, it is not obvious to a person skilled in the earliest foreign application;
the art at the time of the filing date or 3. Filing within 6 months from the certified
priority date of the application claiming the copy of the foreign application, with an
invention (Section 27). English translation, from the date of the
D. Industrially Applicable – an invention local application.
that can be produced and used in any
industry (Section 28).
12
San Beda College of Law
2010 Centralized Bar Operations
13
San Beda College of Law
Laws on Intellectual Property
14
San Beda College of Law
2010 Centralized Bar Operations
The claims of patent and the accused Note: The institution of an Inter Partes case
product must be juxtaposed within the for cancellation of a mark with the Bureau of
overall context of claims and specification Legal Affairs, IPO does not bar the adverse
(Godines v. CA, GR 97343, September party from filing a subsequent action for
13, 1993). infringement with the regular courts of justice
in connection with the same registered mark.
2. Doctrine of Equivalents Test This is because the certificate of registration
If two devices do the same work in upon which the infringement case is based,
substantially the same way, the same remains valid and subsisting for as long as it
result, and produce substantially the same has not been cancelled by the Bureau
result, they are the same even though they (Shangri-La International Hotel Mgt., Inc., v.
differ in name, form or shape (Godines v. Court of Appeals, GR No. 111580. June 21,
CA, Ibid.). 2001).
15
San Beda College of Law
Laws on Intellectual Property
If a person other than the applicant is declared be obtained through the use of the
by final court order or decision as having the licensed technology;
right to the patent, he may within 3 months 7. Those that require payment of
after such decision has become final (a) royalties to the owners of patents for
prosecute the application as his own; (b) file a patents which are not used;
new patent application; (c) request that the
8. Those that prohibit the licensee to
application be refused; or (d) seek cancellation
export the licensed product unless
of the patent.
justified for the protection of the
legitimate interest of the licensor such
Note: Applies to pending application and even
as exports to countries where
when patent is already granted.
exclusive licenses to manufacture
and/or distribute the licensed
Time to file: 1 year from date of publication of
product(s) have already been granted;
the application (Sec. 70).
9. Those which restrict the use of the
Assignment and Transfer technology supplied after the
Inventions and any right, title, or interest in and expiration of the technology transfer
to patents and inventions covered thereby, arrangement, except in cases of early
may be assigned or transmitted by inheritance termination of the technology transfer
or bequest or may be the subject of a license arrangement due to reason(s)
contract (Section 103.2). attributable to the licensee;
10. Those which require payments for
Licensing patents and other industrial property
May be Voluntary (Secs. 85-92, IPC) or rights after their expiration or
Compulsory (93-102, IPC). termination of the technology transfer
arrangement;
A. Voluntary (Secs. 11. Those which require that the
85-92) technology recipient shall not contest
The grant by the patent owner to a third the validity of any of the patents of the
person of the right to exploit a patented technology supplier;
invention.
12. Those which restrict the research
and development activities of the
Prohibited Clauses (Sec. 87)
licensee designed to absorb and
1. Those which impose upon the adapt the transferred technology to
licensee the obligation to acquire from local conditions or to initiate research
a specific source capital goods, and development programs in
intermediate products, raw materials, connection with new products,
and other technologies, or of processes or equipment;
permanently employing personnel
13. Those which prevent the licensee
indicated by the licensor;
from adapting the imported technology
2. Those pursuant to which the to local conditions, or introducing
licensee reserves the right to fix the innovation to it, as long as it does not
sale or resale prices of the products impair the standards prescribed by the
manufactured on the basis of the licensor;
license;
14. Those which exempt the licensor
3. Those that contain restrictions from liability for non-fulfillment of his
regarding the volume and structure of responsibilities under the technology
production; transfer arrangement and/or liability
4. Those that prohibit the use of arising from third party suits brought
competitive technologies in a non- about by the use of the licensed
exclusive technology transfer product or the licensed technology;
arrangement; and
5. Those that establish full or partial 15. Other cases with equivalent
purchase option in favor of the effects.
licensor;
6. Those that obligate the licensee to Mandatory Provisions (Sec. 88)
transfer for free to the licensor the 1. That the laws of the Philippines shall
inventions or improvements that may govern the interpretation of the
16
San Beda College of Law
2010 Centralized Bar Operations
17
San Beda College of Law
Laws on Intellectual Property
18
San Beda College of Law
2010 Centralized Bar Operations
competitor. goods or
What may NOT be registered (Sec. 133): services of
a. Immoral and deceptive matter; different
b. National flag or insignia; enterprises
which use the
c. Name, portrait or signature of living
sign under the
person or deceased President; control of the
d. Mark or trade name infringing another; registered
e. Mark constituting reproduction of owner of the
internationally well-known mark, collective
whether or not registered here; mark.
f. Mark identical with well-known mark,
on non-competing goods, registered Trademark Trade Name
here; Separate Existence
g. Mark likely to mislead the public; Has an existence
h. Mark consisting exclusively of signs distinct from the
generic for the goods or services; existence of the Attached to the natural
proprietor or juridical or juridical person who
i. Mark consisting exclusively of signs or person doing business does business and
of indications which are customary or and producing the produces the goods or
usual to designate goods or services goods or the services services
in everyday language or bona fide and offered by such person
established trade practices; or enterprise
j. Mark consisting of signs or of Purpose
indications used in trade; Designates the goods Identifies and
k. Mark consisting of shapes; or services offered by distinguishes an
l. Mark consisting of color alone, unless person or enterprise enterprise
defined by form; Registration
Must be registered in No need to register in
m. Contrary to public order or morality.
order to secure order to secure
protection for them protection for them
Note: Mere geographical names are Transferability
ordinarily regarded as common property, Change of ownership
and it is a general rule that the same May be transferred
of trade name must be
cannot be appropriated as the subject of with or without transfer
made with transfer of
of the business (Sec.
an exclusive trademark or trade name enterprise or part
149.1)
(Ang Si Heng v. Wellington Department thereof (Sec. 165.4)
Store, GR No. L-4531, January 10, 1953).
Trademark Goodwill
Trade Name Reputation and public
Right which protects
Any individual name or surname, firm name, confidence that a
the interests of
device or word used by manufacturers, business venture has
producers in their
earned through a
industrialists, merchants, and others to identify marks and in the
period of creditable
their businesses, vocations or occupations goodwill earned.
dealings.
(Converse Rubber Corp., v. Universal Rubber Trademark Label
Products, Inc., GR No. L-27425, L-30505, Merely names what is
April 28, 1980). Designed to identify within the container or
the user or origin. package; may or may
Collective not be trademark.
Trademark Service Mark
Mark
Any visible Any visible Any visible Note: In practice, a word, a name or a phrase,
sign which is sign capable sign coupled with indicators of business
adopted and of designated as organization, such as “Inc.”, “Corp.” or “Co.”
used to distinguishing such in the
will NOT be registered as trademarks or
identify the the services of application for
source of an enterprise registration service marks.
origin of from the and capable
goods, and service of of Requirements to Get a Filing Date
which is other distinguishing On receipt of the application, an examiner
capable of enterprises. the origin or checks if the application includes the following
distinguishing any other requirements:
them from common Request for a Philippine registration of
goods characteristic,
mark;
emanating including the
from a quality of Identity of applicant;
19
San Beda College of Law
Laws on Intellectual Property
20
San Beda College of Law
2010 Centralized Bar Operations
21
San Beda College of Law
Laws on Intellectual Property
22
San Beda College of Law
2010 Centralized Bar Operations
23
San Beda College of Law
Laws on Intellectual Property
24
San Beda College of Law
2010 Centralized Bar Operations
25
San Beda College of Law
Laws on Intellectual Property
Infringement of
Unfair Competition
is so because the crime of unfair competition
Trademark punishable under Article 189 of the Revised
Definition Penal Code is a public crime. It is essentially
The passing off of an act against the State and it is the latter
Unauthorized use of a
one’s goods as those which principally stands as the injured party.
trademark
of another
The complainant’s capacity to sue in such
Fraudulent Intent
case becomes immaterial (Melbarose Sasot,
Fraudulent intent is Fraudulent intent is
unnecessary essential et al., vs. People of the Philippines, GR No.
Registration 143193, June 29, 2005).
Prior registration of the
Registration is not a While foreign corporations may have the
trademark is a
prerequisite to an
prerequisite to the capacity to sue for infringement irrespective of
action.
action lack of business activity in the Philippines but
Scope the question of whether they have an
Limited scope Wider scope exclusive right over the symbol as to justify
Goods Involved issuance of an injunctive writ will depend on
Same class of goods Different classes of actual use of their trademarks in the
or services must be goods or services may
Philippines. To be entitled to an injunctive
involved be involved
writ, a foreign corporation must show that
there exists a right to be protected and that the
Note: An action for infringement of a mark
fact against which injunction is directed are
cannot be brought at the same time with an
violative of such right (Philip Morris, et al., vs.
action for unfair competition because the
Fortune Tobacco Corporation, GR No.
element of fraud and deceit, which is essential
158589, June 27, 2006).
to the latter, is absent in the former (Clarke v.
Manila Candy Co., 36 Phil. 100, GR 10487,
Sale is not an indispensable element in an
January 23, 1917).
action for infringement or unfair competition
(Pro Line Sports v. CA, GR 118192, October
A foreign corporation not engaged in and
23, 1997).
licensed to do business in the Philippines may
maintain an action for unfair competition. This
26
San Beda College of Law
2010 Centralized Bar Operations
(Notes on Selected Commercial Laws A Guide for Bar Reviewees, Tristan Catindig, 2003ed)
27
San Beda College of Law
Laws on Intellectual Property
28