INTRODUCTION TO THE

INTELLECTUAL PROPERTY SYSTEM

AND THE FUTURE OF IP.

ATTY. DANIEL S. HOFILEÑA

J.D., MAE, BSC, DIP. BANKING, MSIARB, MPIARB.

CONSULTANT LECTURER ATTORNEY

IP ACADEMY, INTELLECTUAL PROPERTY SCHOOL OF LAW AND JURISPRUDENCE HOFILEÑA LAW
OFFICE OF THE PHILIPPINES CENTRO ESCOLAR UNIVERSITY
SCHOOL OF ECONOMICS
DE LA SALLE UNIVERSITY- MANILA
For the participants
• If you have questions, please feel free to send me an email at
danielhofilena@gmail.com or danielhofilena@hofilenalaw.com
• I have removed all non-ipophl images from the powerpoint. I
replaced them with “See: Item”
 Presentation Outline
A. The Philippine intellectual property system

B. The Future
 The Intellectual Property System

Public Private
Interest Interest

Intellectual
Property
 Ratio
“ The State shall protect and secure the exclusive
rights of scientists, inventors, artists and other gifted
citizens to their intellectual property and creations,
particularly, when beneficial to the people, for such
period as may be provided by law. ”
Sec. 13, Article XIV, 1987 Constitution

5
 Intellectual Property Rights
Patent Literary works

Utility Model Artistic works

Industrial Design industrial copyright Film

property

Trademark Computer programs

Layout-design of Rights of performers,

integrated circuits producers of
phonograms and
broadcasting
Trade Secrets organizations
 DEVELOPMENT- Promote the use of patent information as a tool for technological
development
DREAM Mandate
ORIENTED

Examine applications and grant patents, or register utility models,

REGULATORY industrial designs, trademarks, geographical indication, and
integrated circuit

Undertake enforcement functions supported by concerned

ENFORCEMENT agencies such a the PNP, NBI, Customs, OMB, LGUs, etc.

Hear and decide cases relating to violations of IP Rights,

ADJUDICATORY Cancellations and oppositions to registration, etc.

POLICY- Coordinate with relevant government agencies and the private sector
efforts to formulate and implement plans and policies to strengthen the
MAKING protection of intellectual property rights in the country.
7
IPOPHL VIDEO PRESENTATION
Some things to think about
in the next four days: The
future of IP in the
Philippines
POLL

• Are works created by an AI (machine learning) original?

Ownership: Artificial Intelligence
• Who will own the works created by Artificial Intelligence?
– 171.1. "Author" is the natural person who has created
the work;
– One purpose of the IP system is to incentive
– Should it belong to the public domain?
– SEC. 28. Right to a Patent. - The right to a patent
belongs to the inventor, his heirs, or assigns
– Originality and input data
 Ownership: Schools
• Who owns the works?
– SEC. 30. Ownership of
inventions. (Patent)
– SEC. 178. Rules on Copyright
Ownership.
– What happens in the Digital
Classroom? (modules and
recordings)
– Schools are mandated to have
an IP Policy
– University Technology Transfer
User Generated Content: Contracts of Adhesion?

• CASE OF DOTA
• SEE Terms and conditions of blizzard

180.2. The copyright is not deemed

assigned or licensed inter vivos, in
whole or in part, unless there is a
written indication of such intention.
POLL
• Can sharing content on Facebook be considered illegal?
Copyright and the Digital Era
• Liking and Sharing – is that aiding or abetting copyright
infringement?
• Is linking and embedding punishable?
• Is downloading punishable? (BMG v. Gonzales, US)
• How about ‘torrenting’?
• Orphan works?
Fair use and Free Speech in Soc. Med.
• First, the purpose and character of the use of the copyrighted
material must fall under those listed in Section 185, thus:
"criticism, comment, news reporting, teaching” (ABS CBN v.
Gozon)
• EU: Balance between Charter of Fundamental Rights: the freedom
of expression and the freedom of the arts, and the right to property.
• SEE ART. 13 issue in the EU, otherwise known as the “meme ban”
wars
POLL
• Are Characters protected by Copyright?
Characters and their characteristics.
• 21. Conan Doyle made the surprising
artistic decision to have his most
famous character—known around the
world as a brain without a heart—
develop into a character with a heart.
Holmes became warmer. He became
capable of friendship. He could
express emotion. He began to respect
women. (Complaint of the Estate of
Holmes on Enola holmes )
POLL
• Do we have a sui generis protection for Geographical Indicators?
Non-Traditional Marks
– TRIPS Article 15: Any sign, or any combination of signs, capable of
distinguishing the goods or services of one undertaking from those
of other undertakings, shall be capable of constituting a
trademark.
– Sounds? Smell? Taste?
121.1. "Mark" means any visible sign

– SEE: Channel No. 5, 20th century fox, and MGM

 Nominative Fair Use of Marks (US guidelines)

• First, the product or service in question

must be one not readily identifiable without
use of the trademark;
• Second, only so much of the mark or marks
may be used as is reasonably necessary to
identify the product or service; and
• Third, the user must do nothing that would,
in conjunction with the mark, suggest
sponsorship or endorsement by the
trademark holder.
• SEE: Cereals of Shop Rite
Rise of Cybersquatting – ICANN UDRP
• Is domain name protected by trademark law or copyright law?
• A domain name is a human-friendly form of an Internet address
(WIPO)
• (6) Cyber-squatting. – The acquisition of a domain name over the
internet in bad faith to profit, mislead, destroy reputation, if such is:
– (i) Similar, identical, or confusingly similar to an existing registered
trademark
– (ii) Identical with the name of a person
– (iii) Acquired without right or IP interest
IP and Public Health
• MEDICINES - According to PhRM: average time to develop a drug is
between 10 to 15 years, with an average cost of around $2.6 billion per
drug.
• PPE - WHO said that the current global stockpile of PPEs is inadequate
• TESTING KITS – Locally developed test kits - testing capacity of
laboratories was hindered due to a shortage of key laboratory supplies
• CONTACT TRACING – Who owns the data after COVID?
Patents and Public Health
• What should we do with COVID-19
Vaccines/Medicines?
– TRIPS flexibilities and DOHA
Declaration
• Compulsory licensing in the PH is
underutilized.
– Grounds: 1) National emergency or
extreme urgency; (2) If public interest
requires or for the development of vital
sectors of the economy;
Territoriality in Outer space
• IP rights are territorial. What are the rights in outer
space?
• Can you enforce infringement in Space?
• Transportation for launch, already infringement?
– Doctrine of temporary presence
• ARTICLE I The exploration and use of outer space, shall be
carried out for the benefit of all mankind.
• Where Registered – Jurisdiction over object
• SEE: DIWATA LAUNCH
Enforcement
• Arbitration
– Private party decides.
Enforceable.
– Does IP serve a public
purpose? Public policy?
– Can a private person overrule
the grant/denial of protection
by the State?
– Binding only between parties?
• IP Code only provides AD HOC
Arbitration for TTAs (mandatory).
POLL
• Are franchise agreements covered by the provisions on technology
transfer?
Enforcement: Teeth for TTA.
• IP CODE: Non-conformance with any of the provisions of Sections 87
and 88, however, shall automatically render the technology transfer
arrangement unenforceable, unless said technology transfer
arrangement is approved and registered with DITTB.
– Is it unenforceability under the Civil Code? What if it is ratified?
What if there is partial performance?
– Are franchise agreements covered by TTA?
• The transfer, assignment or licensing of intellectual property rights will be
considered a technology transfer arrangement only if it involves the
transfer of systematic knowledge. (MC 2020-002)
Enforcement : Anonymity and the Digital Age
• Intellectual Property Rights are Territorial and Criminal Jurisdiction
is also territorial. How do we catch pirates abroad?
• Websites keep on popping up.
• Is it time for a Philippine version of the Digital Millennium Copyright
Act?
• Telegram
• SEE: Anonymity update for telegram.
Credits
• Atty. Katrina Rivera
• IPOPHL
• WIPO
• WIPO-UNIGE Summer School
 Thank you!
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