CONTENTS IN Brie Chapter I: Intellectual Property Rights 1. Republic Act No, 8253... 2. Intellectual Property Ri 3. Technology Transfer Avanti Chapter II: Intellectual Property office 4. Intellectual Proy 5. Director Generals O™ 6. The Bureaus . Patentable and N . Elements of Patentability . Right to a Patent . Remedies of Persons Deprived of . Remedies Against Infringement . Limitations on Patent Rights . Voluntary Licensing.. Compulsory Licensing . |. Industrial Design: Chapter IV: Law on Trademark . Non-Regi 23. Procedure in Trademark Regi 24. Certificate of Registration . Duration of Certificate of1. Republic Act No. 8293....... 1 Property Rights See cae ited Stipuiations. 10 Fast Laws on Intellectual Property (Chapter 11: Intellectual Property Office Bureau of Legal Affairs ... xiwenative Case 2-1: ust TRE Final OUT ween 40 ion of the Director 43 43 ‘ s 43 6.1 Bureau of Patents 44 66.2 Bureau of Tademarss 44 6 Bere of ‘The Power 46 istrative Case 2-2: They Have 49 50 50 51 53 53 Changes in Patents. 54 11.25 Form and Publication 55 12. 55 55 57 BA 12.5 _ Effect of Cancellation of Patent or Ciai as 13. Remedies of Persons Deprived of Patent Owners 39 13.1 Person Declared by Final Court Order as 59 i 13.2 61 : 61 10. Right to a Patent 14. Remedies Against Infringement 10.1 Ownership of Paten a 14.1 10.2 First-to-File Rule 62 14.2 10.3 Inventions Pursu 62 14.3. Infringement Action by a Fé Employment. 14.4 Presumptions in Patent Infringement Actions, 10.4 Right of Prony 62 14.5 Prescription in Action for Infringe a 63 14.6 Defenses in Action for Infringement. 11, Procedure for the 11 Procedy “ 14.7 Criminal Action 2 Fi 64 15. Limitations on Patent Rights 11.3. Prohibted mane” 6 15.1 Acts Allowed Even Without Authorization 11.4 Unity of Invention 66 Iustrative Case 3-2: Bring In The Medicine ... - 66 RIT seesecon te ent 15.2, Prt anton by Govern 153 tection and PEEMeRE 154 Protea in Patent Infringemer of Cave quivalents 155 : nystrative Case 3 6, voluntary 16.1 vol 16.2 Pr fs jandatory Prov is 2 gms Reserved to Uensor an Tes Registration of License Contras + computor tices ‘ a Nawre ‘of Compulsory Licensing 12.2 dunsdiction. 17.3 Grounds. 17.4 Penod for Fi cen 17S Requirer Reasonable Commercial Terms... eo 17.6 Compulsory Licensing of Patents Involving Semi-Conductor TechnolOgy «..seo:eeseeeeseesess 17.7 Compulsory License Based on Interdependence of Patents . vb 12.8 Forms and Contents of Petition. ‘of Compulsory License ... tion, Surrender of Compulsory Licens 17.12 Ucensee's Exemption from 418, Assignment of Rights. 18.1 Assignment of Pater of i) gh 18.4 Rights of Joint Owe 19. UUity Mo sels 20. Industrial Designs... 20:1 Industrial Designg 107 108 108 110 20.2 Substantive Condition 20.3 Contents of the Stone 20.7 Term of Registration 20.8 Application of Other Sections 20.9 Rights Conferred of Lay Registration... Umitations of Layout of Integrated Circuit 10 Fast Laws on Patent Chapter IV: Law on Trademark 2. 22. Trademark .... 21.1 Trademarks... 21.2 Collective Mark 21.3 Acquiring a M 21.4 Functions... Non-Registrable Marks 22.1 Non-Registrable Mi 22.2 Falsely Suggesting Connecti IMlustrative Case 4-1; Goodwil 22.3 Identical with registered mark . Mlustrative Case 4-2: The Durable “Ang Tibay”... 22.4 Identity of Mark Alone is not Trademark Infringement.. 22.5 Colorable Imitation of a Registered Mark Mlustrative Case 4-3: Yummy “Big Mac” IMlustrative Case 4-4: One More Plea: 22.6 Confusion in Trademark Infringement .... 22.7 Tests to Determine Confusing Similarity Between Marks 22.8 Dominancy Test IMlustrative Case 4-5: This Beer Is Not Confusing IMlustrative Case 4-6: IF It Sounds Alike. 22.9suratve cose 47° Sal Monte" snystratve C252 Tests. ~ use of Both Mg: not once But 22.10 Case 4-12: Learning "Lyceum Case 4-13: Pale Pilsen for Al 23. Procedure in Trademark 23.1 The Applicati 23.2 The Applica 233 NICE Classification . 23.4 Disclaimers... 239. Revving Abandoned Ap 24.10 Opposing an Applicat 24. Cette of Registration 261 rma Face Evian Issuance and Publica if 243 Cancstion or Amendmert of Ce Comection in 155 2. 29. 30. 3. 32. Known Mat 26.4 Limitation Assignment and Transfer 27.4 27.2 27-3 Recording of Assignment and Transfer 27-4 License Contracts. |. Cancellation of Registration Exclusive Right over the Mark Ilustrative Case 4-14: You Can’t Touch Illustrative Case 4-15: Bring In The Medicine .. Rights Conferred to Owner of Well- 28.1 28.2 ‘When Filed; Grounds .. Effect of Cancellation .. jainst Trademark Infringement Mlustrative Case 4- ‘Trademark Dilution Illustrative Case 4~ luted” Jeans ‘Action for False or Fraudulent Declaration... 29.4 Damages and Injunction... 29.5 Destruction of Infringing Mate 29.6 Infringement Action by a Foreign National Presumption in Trademark Infringement Cases 30.3 30.4 Advertisement... 30.5 Imported Drugs ...... Trade Names or Business Names 31.1 Trade name, Defined 30.2 Names that Cannot be Used as a Trade Name.... Protected Even Without Registration ... 30.3 Illustrative Case 4-18: No Registration? 'No Problem Unfair Competition ... 32.1 Nature of Unfair Competition 32.2 Elements..yon wis-d-vis Used Containers... 4 325 Uae hed frm Infringement Fee Origin false Desanatio ation 32.7 Description or Represent 33. criminal enaky 314 10 Fast Laws on Trademark ... chapter V: Law on Copyright 351 384 36. Non-Copyrightable Works... 36.1 35. Scope of Copyright Onginal Works Publisher's Right Unprotected Subject Mustrative Case 5-1: Game Show ‘Works of the Government Government and Copyright B71 Rules on Copyright| y Prtight Owne ? Copyagnt Ownership in the Course 73 cog tbloyment pyight Owners 24 cg hthrswnen 7S co ec Hig Ow 37 is 6 or moUs an Payee 40. at. 42, 43, Mlustrative Case 5-2: Must Car Fair Use... IMlustrative Case 5~ Plagiarism and Copyright Infringement Distinguished ...... Copyright in Work of Reproduction of Published Work Reprographic Reproduction by Libraries. Reproduction of Computer Program .. Illustrative Case 5-4: Counterfeit “Installers” 39.8 Importation of Copyrighted Work. Moral Rights ..... 40.1 B8885 ankon 40.7 Breach of Contract Right to Proceeds in Subsequent Transfer of Copyright... 41.1 Sale or Lease of Work Performers, Producers, and Broadcasting ‘Organization. 42.1 Definition: 42.2 Scope of Performers’ Right 42.3 Moral Rights of Performers Term of Rights Granted to Limitation on Right... ‘Additional Remuneration for Subsequent ‘Communications or Broadcasts ..... ‘Scope of Right of Producers of Sound ‘Scope of Right of Broadcasting Organizations... 42.11 Limitations on Protection... Term of Copyrioht... 43.1 43.2 433 In Case of Joint Authorship... WorkSerssossse Unfortunate Copying In Case of Anonymous or PseudonymousF< : aaa tn ase of Works 292 lustrative Case 6-2: No Personal Knowledge... 312 oe 293 48.4 Determining Probable Cause 319 ae Coast Hon of Term. 293 48.5 Searching Questions and Ai 320 OT Seem of Protection Mlustrative Case 6-3: Searching Questions os "293 and Answers Exemplified 320 remedies Against Inringeme’ 28, tenet acton 7 23 Chapter VII: Related Laws Penal he mon of Iirnging Copy of the Work ps 49. Optical Media Act 39 aa 295 49.2 330 4s 296 49.3 330 ay pwede = 50, Anti-Camcording Act of 2010 1. 332 44.8 Prescigtion of Action for Damages ae 50.1 332 Enforcement of Moral Rights eo 50.2 333 “ oo 51. Inventors and Invention Incentives Act. 333 45.1 Pons of tachment for Works under 7 ona 3a tsa ryest tO 72 ANG 173... 297 aS 330 {83 Pamsat Atachment or Performers, 297 51.4 Cash Reward for Invention: 34 {22 Pomsat Atachment for Sound Recor 298 51.5 Tax Incentives 335 ; hment for Broadcasts. 298 51.6 Tax Exemption 335 46, Deposit and Note... 51.7 Assistance Fund 335 420" Ian of Cr 298 51.8 Loan Assistance : : 336 83 Mevee of copy a 52. Act to Regulate Marked Cont 6 162. Queso of Deposit and nate a 52.1 Acts Penalized 2S of Registration and Deposit of Work 299 52.2 Sold Container 27 Mustrative Case 5-5- Unregis zs 52.3 Use for Native 337 registered Copyright... 299 53. Act Penalizing Fraudulent Advertising x i 301 53.1 Acts Penalized .... 337 302 53.2 Other Acts Punished ua 302 53.3 Penalty provided 339 Appendix Full Text of Republic Act No. 8293 as amended. 0 a3 ™ #6 303 305 306 310 310Cuapter I INTELLECTUAL Property RIGHTS Let us begin our study with this almost true story. Juan is a hard-working and honest middle-aged entrepreneur who managed to put up a business that offers innovative products and services. Before he started operation, he thought iong and hard on what is the appropriate name of his business. A trusted employee, Pedro, suggested “Michael's” named after the only son of his employe”. And so, "Michael’s” came into existence. Realizing what happened to the “lechon manok” craze during the 80's when kiosks selling grilled chicken mushroomed, Juan asked a relative what he can do to prevent others from imitating his business. The relative told him he has little idea about patents but est take an eternity considering that we a discouraged Juan to pursue patent af copyright registration over the technical drawing of his product which he got so easily at such a low cost The business flourished because of Juan's sheer guts and de- termination. Customers availing Juan's products increased in number Such that his production capacity is not enough to meet the demand To augment production, he decided to help Pedro estabiish his own Production unit and made him his independent supplier. Marco, another employee was envious because he was not given the same opportunity. Since he already learned the trick of the trade. he established his own business. He lowered his seliing price and convinced the biggest customer of Juan, YM Superdoope: avail his services instead. Dindo, a neighbor monitoring ev of Juan followed suit. He started his own business o! Products and services and even applied and “Michael's” as his trademark for instant good10d, YM Superdooper Store wring company Similar to id services at much lower veally 90 a siness 9s 237 $02 mt wee oc it established ble eyes gn andere 5 mer price. significant drop in the income The events natural fe a vee a lanyer: He learned that his ‘of Juan that forced Nal drawing is not enough to prevent others copyngnt over the techn oducts. He was also told that he cannot from manuf he product because it has been in the market have the paten already for almost five years. more innovative idea in his sleeves ang He however has one ingly. But just when his sales is pickin redesign nan ring te he sould Sap rors cee a bapa and red by Diedo. Because he cannot afford the cost of litigation, he was forced to abandon the goodwill of the trademark. If ony Juan hag been adequately advised, he should have been protected against the "Marcos" (overly-ambitious employees), the “Dindos” (deceitful employees) and “YM Superdooper Stores” (big businesses that gobble up every opportunity to earn). He should have known that exposing an invention to the public without a patent is ‘more precantous than buying a second-hand car without an OR/CR or 2 land without a ttl Clearly, patent costs could easily be justified. — 1 Resusuc Act No. 8293 1a Historical Background of Republic Act No, 8293 Republic Act No. 8293 or = th SSA 1 oe The law is a consolidat: No. 8098. It was approveg not Senate 6.1897 zed pbeastes ed by then Prey det as and House Bill This law was enacted tone cao" J20Uary 1, togpt RAMOS ON JUNE Aspects ofthe Intetecai Seto the ng geio38. (See Sec. 241) ODerty Rights sea want of Trade-Related was referred to en 3 INTELLECTUAL PROPERTY RIGHTS as TRIPS that was ratified by the Philippine Senate on December 14, 1994. 1.2. Non-Retroactivity By express provision of the law, Republic Act No. 8293 became effective on January 1, 1998. Assuming that there is an infraction of the law prior to this date, will an action based on Republic Act No. 8293 prosper? This was answered in the negative by the Supreme Court in Mighty Corporation v. E & J Gallo Winery, G.R. No. 154342, July 14, 2004, In this case, the Court said: “We therefore hold that the courts @ quo erred in retroactively applying the IP Code in this case. “It is fundamental principle that the validity and ‘obligatory force of a law proceed from the fact that it has first been promulgated. A law that is not yet effective cannot be considered as conclusively knowaby the populace. To make a law binding even before it takes effect may lead to the arbitrary exercise of the legislative power. Nova Constitutio futuris formam imponere debet non praeteritis. A new state of the law ought to affect the future, not the ast. Any doubt must generally be resolved against the Fetroactive operation of laws, whether these are original enactments, amendments or repeals. There are only a few Instances when laws may be given retroactive effect, none of which is present in this case. “The IP Code, repealing the Trademark Law, was approved on June 6, 1997. Section 241 thereof expressly decreed that it was to take effect only on January 1, 1998, without any provision for retroactive application. Thus, the Makati RTC and the CA should have limited the consideration of the present case within the parameters of the Trademark Law and the Paris Convention, the laws in force at the time of the filing of the complaint.” 1.3 State Policies on Intellectual and Industrial Property system The policies of the State on intellectual property rights are stated in Section 2 of the law, as follows: “The State recognizes that an effective intellectual and industrial property system is vital to the development of domestic and creative activity, facilitates transfer ofESSENTIALS a anvestments, and ensures eae it shall protect and secure 65 0 Ot atts, NveNtOTS, artists ang e nghts oF Steir wnellectual Property ang attr gifted ter an beneficial {0 the People, for creations Pp provaed in ti Act ceive of inrelectual property DESKS 3 social The use of tne State shall promote the diffusion amation forthe promotion of national yy, attracts fore! technolo) market acc the exclusi' and Stent and progress and the common good. ‘aso the policy of the State to streamline ad- manstratne procedures of registering patents, trademarks tad copynght, to liberalize the registration on the transfer the enforcement of intellec- snnoiagy, and to enhan jo ippines. tual property rights in the Pr 1.4 International Conventions and Reciprocity Any person who is 2 national or who is domiciled or has a real and effectve industrial establishment in a country which is a party to any convention, treaty or agreement relating to intellectual "ght or the repression of unfair com pines s #80 2 party, or extends reciprocal rights to nationals of the Philip- 31s by lan, shall be entitied to benefits to the extent necessary to Bir Ez 27Y Provision of such convention, treaty or reciprocal m to the eights to which any owner of an intellectual Proper nants ctherwise ented by the law. (sec, 3) . on. restriction, limitation, diminution, ae n, , requirement, ao depee. Ta eurden imposed by the law of a foreign country Fights in that courge nna SeekiNg protection of intellectual property afsala counts be enforceable upon nationals ion. (Sec, 231) Any con Penatty or an Duntry, shall reciprocal within Philippine jurisdi CHAPTER 1 INTELLECTUAL PROPERTY RIGHTS NBA Properties, Inc., against petitioners for pos 189 of the Rewsed Penal Code on the Revised Penal cial Powor of Attorney dated October 7, 1997, Rick » President of NBA Proparties, Inc., constituted the 1 Del Castillo, Bac as the company’s attorney-in-Fac and on behalf of the company, in the filing of criminal, ci and administrative complaints, among others. The Special Power of Attorney was notarized by Nicole Brown of New York County and certified by Norman Goodman, County Clerk and Clerk of the Supreme Court of the State of New York. Consul Cecilia B. Rebong of the Consulate General of the Philippines, New York, authenticated the certification. Welts also executed a Complaint-Affidavit on February 12, 1998, before Notary Public Nicole 3. Brown of the State of New York. Thereafter, in a Resolution dated July 15, 1998, Prosecution Attomey Aileen Marie S. Gutierrez recommended the fling of {an Information against petitioners for violation of Article 189 of the Revised Penal Code Before arraignment, petitioners filed 3 Motion to Quash the Information on the grounds that the facts charged do not constitute an offense and that the court had no jurisdiction over the offense charged of the person of the accused. In support of their motion, petitioners argue that the fiscal should have dismissed Welts’ complaint because under the rules, the complaint must be sworn to before the prosecutor and the copy on record appears to be only a fax transmittal, They also contend that complainant is a foreign corporation ‘not doing business in the Philippines, and cannot be protected by Philippine patent laws since it is not a registered patentee. Petitioners aver that they have been using the business name “ALLANDALE SPORTSLINE, INC.” since 1972, and their designs are original and do not appear to be similar to complainant's, and they do not use complainant's logo or design. The trial prosecutor of the RTC-Manila (Branch 1), Jaime M. Guray, filed his Comment/Opposition to the motion to quash, stating that he has the original copy of the complaint, and that complainant has an attorney-in-fact to represent Prosecutor Guray also contended that the State is entitled toand larch r dated Mm, for certiorari with the 25 CA-GR. SP No, 5215) n dated January 26, 2000 it the proper remedy jn id that the grounds trial of the case on Ruling: YES Unfair Comp an ts the latter which pri icipally 2d Party. The complainant's capacity to sue jar Penal Code, and the quashal aainst Manufacturers of garments 95 that of the pet Iminal offense, Revised Penal he completion INQ conducted ation shall be 9 of the lows after ¢ ‘StiVation b9j oF the infor © Special yee Prosecn CHAPTER 1 7 L PROPERTY BIG the latter which is pn the injured party although there is a ed party or victim of a crime has no standing to sue, in upholding the right of the petitioner to in the present suit before our courts for unfair compe infringement of trademarks of a foreign corporation, we are moreover recognizing our duties and the rights of foreign states under the Paris Convention for the Protection of Industrial Property to which the Philippines and France are solemn international commitment of the Philippines embodied in a multilateral treaty to which we are a arty and which we entered into because it is in our ational interest to do so.” /, with regard to petit s that the NBA Properties, Inc., is not en fotection under Philippine patent laws since it is not a registered patentee, that they competition. 'S are original and do not appear to be similar to complainant's, and they do not use complainant's logo or design, the Court finds that these are matters of defense that are better ventilated and resolved during trial on the ments of the case. 2 Iwretectuat Property RicHTs 2.1 Intellectual Property Rights, Defined ‘Trademarks and Service Marks; c) Geogra| trial Designs; ©) Patents; f) Layout D Copograpnies) ofJosed Infor protection of Undisclosed Information grated Circus: 2 itr ver does not quite capture hes ef e « 4) This statutory Jy enumerates what comprises thes sence of the term as merely Ne tet, being defined Pati 2.2 Differences Between Copyrights, Patents, ang Trade. marks gates, wader, and copyright cannot be interchange ang Acree sect The case of Eldad Kho v. Court Of Appeals, G.R. No. 115764 March 19, 2002, is qute instructive, Tt was in this case that ye Supreme Court succinctly said that: “Trademark, copyright and patents are different intel. roperty rights that cannot be interchanged with fabs trademark is any visible sign capable of wuishing the-goous (trademark) or services (service include a stamped or marked container of goods. In relation thereto, a sfade These cases, having the cose Woted if fu COmTeCE registration, CHAPTER INTELLECTUAL PROPERTY RIGHTS of Appeals reversing the October 31, 1996 d Regional Trial Court of maki 516 which declared private of trademark and copyright, and unt FACTUAL ANTECEDENTS, The May 22, 2001 “decision of the Court of Appeals contained 2 summary of this dispute. Plaintiff-appellant Pearl and De corporation engaged in the manufactur units simply referred to as Jight boxes. These ul ly printed posters sandwiched between pla: inated with back Pearl and Dean was able to isplay units. The advertising light boxes were marketed under the trademark "Poster Ads" The application for registration of the trademark was filed with the Bureau of Patents, Trademarks and Technology Transfer on June 20,'1983} but was approved only on September 12, 1989, per Registration No. 41165. From 1981 to about 1988 Peaft and Dean employed the services of Metro Industral Services to manufacture its advertising displays. Sometime in 1985, Pearl and Dean negotiated with defendant-appeliant Shoemart, Inc. (SMI) for the lease and installation of the light boxes in SM City North Edsa. Since SM City North Edsa was under construction at that time, SMI offered as an alternative, SM Makati and SM Cubao, to which Pearl and Dean agreed. On September 11, 1985, Pear and Dean's General Manager, Rodolfo Vergara, submitted for signature the contracts covering SM Cubao and SM Makati to SMI's Advertising Promotions and Publicity Division Manager, Ramonlito Abano. Only the contract for SM Makati, however, Was returned signed. On October 4, 1985, Vergara wrote Abano inquiring about the other contract and reminding that their agreement for installation of light boxes was:n only for its SM Makati branch, but also for SM Cubao. SMi did not bother to reply. Instead, in a letter dated January 14 house counsel informed Pear! and Dean that it was r the contract for SM Makati due to non-porformance terms thereof. In his reply dated Febr Protested the unilateral action of SMI, saying it was withouhe pushed f0F Whe signing of. industiial Services, the co fed by Pearl and Dean to fabricate its pd “Tgeonstat ight boxes for Shoemart’ ope aY raves the proposal and ten (10) light bone! event fabmeated by Metro Industrial for: gp cs.ontaat wih Netto Industrial Was terminated, ot ines. ces of YO Rainbow Advertising Corporati ight boves, Some 300 units were fabricatey( st ese wer ceivered on a staggered basis and inetane. nd SM City. ete in 1989, Pearland Dean, received reports that fect copes fits ght boxes were installed at SM City ang fs ‘astons section of SM Cubao, Upon investigation, Pest £72 Be2” found out that aside from the two (2) reported ant FERS, [ett doves similar to those it manufactures wong BS nstaied in "ough ts marketing arm, Se sae, Branly to sell advertising sy ns ising space in lighted Neue, SMES different branches. Peart and S858y units "ss" "0160 that NEMI a sister company of SMP ne ght Of ts cis mb 11 19g fees: Pearland Dean sent a letter on Pesos (p ett ty letter, SMI suspended the Ou" (224) tight ‘boxes and res. Poster Ads” from the RS demangeiming that both SMI nt of ese Pearl and Dean filed radeMark and copyright, CHAPTER 1 rr INTELLECTUAL PROPERTY RIGHTS was only for stationeries such as letterheads, envelopes, and the like. Besides, according to SMI, the word "Poster Ads” is @ generic term which cannot be appropriated as 2 trademarky and, as such, regi It also stressed that Pearl and De reliefs prayed for in its complaint units contained no copyright notice, in violation of Section 27 of PD. 49. SmI alleged that Pearl and Dean had no cause of action against it and that the suit was purely intended to malign SMI’s good name. On this basis, SMI. aside trom praying for the dismissal of the case, also counterclaimed for moral, actual and exemplary damages and for the cancellation of Pearl and Dean's Certification of Copyright Registration No. PD-R-2558 dated January 20, 1981 and Certificate of ‘Trademark Registration No. 4165 dated September 12, 1988, NEMI, for its part, denied having manufactured, installed OF used any advertising display units, nor having engaged in the business of advertising. It repleaded SMI's averments, admissions and denials and prayed for similar reliefs and counterclaims as SMI. The RTC of Makati City decided in favor of P & D: Wherefore, defendants SMI and NEMI are found jointly and severally liable for infringement of copyright under Section 2 of PD 49, as amended, and infringement of trademark under Section 22 of RA No. 166, as amended, and are hereby penalized under Section 28 of PD 49, as amended, and Sec- lons 23 and 24 of RA 166, as amended. Accord- ingly, defendants are hereby directed: (1) to pay plaintiff the following damages: (2) _ actual damages —P16,600,000.00, representing profits derived by detendants as a result of infringement of plaintiff's copyright from 1991 to 1992 (b) moral damages ~- P1,000,000.00 (c)_ exemplary damages — 1,000,000.00 (d) attorney's fees — P1,000,000.00 plus (e) costs of suitng copies, label wiaps, to be properly classified as a class ‘0’ work, we have to agree with posited that what was copyrighted were al drawings only, and not the light boxes tremselves, thus: 2, when a drawing is technical and depicts 3 vtitanan object, @ copyright over the drawings ‘ke plstit-appelint’s extend to the actual v. Seiden (101 U.S. Selden had obtained a “ton for a book entitled 'Selden's Salden’s copyright d exclusiaty to the acu Ts ime CHAPTER 1 INTELLECTUAL PROPERTY RIGHTS, Feason was that to grant 4 monopoly ng art when ne examination of its been made would be a surprise @ fraud upon the ‘s the province of Patent, not of copyright “ And that is precisely © point. No doubt aware that design would never pass the ni Of @ patent applicati te foist a fraudulent monopoly on the public by Conveniently resarting to a capyright registration which merely employs a recordal system without the benefit of an in-depth examination of novelty, “The principte in Baker v. Selden was likewise applied in Muller v. Tribarough Bridge Authority (43 F. Supp. 298 [5.0.N.¥. 1942]). In this case, Muller had obtained a copyright over an unpublished Grawing entitled “Bridge Approach — the drawing showed a novel bridge approach to unsnart traffic Congestion”. The defendant constructed a bridge approach which was alleged to be an infringement of the new design illustrated in plaintiff's drawings. tr this case, it was held that protection of the drawing. does not extend to the unauthorized duplication of the object drawn hecause copyright extends only to the description or expression of the object and not to the object itself. It does not prevent one from using the drawings to construct the object portrayed in the drawing “yg “In two other cases, imperial Homes Corp. v. Lamont, 458 F. 2d 895 and Scholtz Homes, Inc. v. Maddox, 379 F. 24 84, it was held that there is no Copyright infringement when one who, without being authorized, uses a copyrighted architectural pian to construct a structure. This is because the copyright does not extend to the structures themselves, “In fine, we cannot find SMI liable for infringing Pearl and Dean's copyright over the technical Grawings of the latter’s advertising display units. appellant fought YOK 9008 23%, “The Supreme Court trenchantly held in Faberge, Incorporated v. Intermediate Appellate Court that the protective mantle of the Trademark Law extends only to the goods used by the first,y 41205, es such yids and wee rhe legal ton son to tion of 4 20 when a stated, her that te ened gt “ei feate of registiation were to era stoate MoS 99695 nat specined therein, be tested ts aa te Whercby an sppicant ay ee ny and a a ‘ had 95005 Hes Naik FoF the said Pat Shs registration 1s Tuark Law THE HONORABLE COURT OF APPLALS ERRED IN HAT NO COPYRIGHT INFRINGEMENT WAS COMMIT TLO BY RESPONDENTS SM AND NEMLCHAPTER 1 7 INTELLECTUAL PROPERTY RIGHTS REO ar OF APPEALS ERE Ur OF PEARL & DEAN'S CDmnttTTED BY RESPON- on its belief that extended ipso fact in said drawings. the copyright Ags alone and not to the light box 'h the appellate court Betitioner’s application for @ copyright certincate 15 Copyright Certifc . ABLE COURT OF APPEALS ened IN waeo OF THE TRIAL COURT, Df E tof bisbuTeo 8 THE HONORABL THAT si WAS NLTY OF BAD am w'OF AGVEWTISING CONTRACTS WI tute then ‘Pressly enumerated tha works oinor R01 COURT OF APPEALS ERRE Sets Sm ano NEM LABLE TO PEARL ACTUAL, MORAL & EXEMPLARY DAMAGES, costs oF Suit subject to copyright: SEC. 2. The rights granted by this Decree sha the moment of creation, subsist with respect to any of the following works: 200 3000 9006 sting case, we are challenged ‘spective four main concerns |4a\ property 'aw ~ patents, copyrights, trademarks competition arising from infringement of any of ‘ee. Vie shell focus then on the following issues: or technical drawings of an Int dex) are granted copyright certiicete of registration) by the ‘ight box depicted in such engineering 0 facta also protected by such copyright? ht box be registered separately sued by the Bureau of Patents, ogy Transfer (now Intellectual saagh” *ddttion to the copyright of the (0) Prints, pictorial illustrations, advertising copies, labels, tags, and box wraps; 2X HK HX Although petitioner's copyright certificate was entitled “Advertising Display Units” (which depicted the box-type Electrical devices), its claim of copyright infringement cannot be sustained, Copyright, in the strict sense of the term, is purely 2 statutory right. Being a mere statutory grant, the rights ‘ed to what the statute confers, It may be obtained 2nd enjoyed only with respect to the subjects and by the Persons, and on terms and conditions specified in the statute "Accordingly, it can cover only the works fall statutory enumeration or description. P & D secured its copyright under the classification class (0 mork. This being so, petitioner's copyright protection Extended only to the technical drawings and not to thi box itself because the latter was not at all in the cate “prints, pictorial illustrations, advertising and box wraps.” Stated otherwise, even as & D indeed owned a valid copyright, the same feferred only to the technical drawings within the category of “Pictorial illustrations.” It could not have possibly stretched Out to include the underlying light box. The strict apouicaton red trademark legally rk if It is a mere 've of his goods, services orfan artistic work Obuously, there © contusion regarding what ought or he piper of copyrights, patents and (ase of M0 v. Court of Appeals, c completely distinct in afforded 0 cover items or to the others, tellec of distinguish- (Service mark) of an ‘amped or marked container nae in ‘moment er hand, Id of hu MD and ig For sono reayin of aniaher, oe a patent for the ight pases Fights which prevent anyare t using the contraption. 1 Court of appeals, we hela @ patent un from the grant of patent. «x «1Ajn ineentor tox ¢ law right to a monopaiy of his invention. He nae to make use of and vend his meer discloses it, such as by offering i fur save Copy and use it with impunity A patent, inventor the nght to evclude the exclusive right of making, On the assumption that pet patentable inventions, pet bublic by submittins National Library. To be able to effectively and legai'y preclude others {fom copying and profiting from the invention, o hater anenmerdial requirement. No patent, no protection, The Of @ patent system 1s to bring new designs into the public domain through discloses restraint, On one side of the coin is the public which will beneht {fo™ new ideas; on the other are the inventors whe mare be protected. As held in Bauer & Cie v. O'Donnel "the on Secured to the inventor the exclusive right to mak? uss, and vend the thing patented, and consequently to prevent Others tom exercising like privileges without the concent {he patentee. It was passed for the purpose of encouragte between the carefully crafted closure of new gy and design, tion for ‘may keep is invention f sideration of its: 2 the community, 's guaranteed « expiration of that period, the nares to the people, who are thus Sractece (tard profit by its use. + am nas gfhree toid purposes “frst, patent enerc nvertion; secand, it promotes imuiate further innovation ce the invention once the requirements for patent the public domain on @raustive 48d. Such en in-depth investigation “warding @ usetul invention, the ust be fairly dealt with the prerequisites to 1 oUserved and ase of copyrights nor Grant te the ef ofa work. 1 ol tf that a Ww conters, copyright brary CHAPTER 1 INTELLECTUAL PROPERTY RIGHTS ot having gone through the arduous '. the petitioner cennot exclude others le or commercial use of the light 4S copyright certificate over the nical dravnings Stated otherwise, what pettioner seeks 1¢ exclusivity without any opportunity for tne, potent ottce na ity 95.9 patertabie uenton, 15 that, had. petitioner secured ‘potent instead, is exclusivity would have been for {year ee But through the implied procedure of copynght-eeceeron withthe National Library ~ without underfone these detencing the patentabiity ofits mvention Bator the IPB acd the public ~ the petitioner would be protectes far Soran This situation could not have been the intention of tre ean In the oft-cited case of Baker v. Selden, the United States Supreme Court heid that only the expression of on idea is protected by copyright, not the idea itselt. In that case, {the plaintif held the copyright of a book which expounded on @ new accounting system he had developed. The publication Mlustrated blank forms of ledgers utilized in such a system The defendant reproduced forms similar to those illustrated Im the plaintiff's copyrighted book. The US Supreme Court ruled that: “There is no doubt that a work on the subject of Bookkeeping, though only explanatory of well known systems, may be the subject of a copyright; but, then, it is claimed only as a book. » x x. But there is a clear distinction between the books, a Such, and the art, which it is, intended to illustrate. The mere statement of the proposition is so evident that it requires hardly any argument to support it. The same distinction may be predicated of every other art as well as that of bookkeeping. A treatise on the composition and use of medicines, be they old or new; on the coristruction and use of Ploughs or watches or churns; oF on the mixture and application of colors for painting or dyeing; or on the mode of drawing lines to produce the effect of perspective, would be the subject of copyright; but no one would contend that the copyright of the treatise would give the exclusive right to the art or manufacture described therein. The copyright of the 2Chapter 1 “a INTELLECTUAL PROPERTY RIGHTS. cotmy art is a totally different thing trom a publication of the book explaining it. The copynght of a book on bunkkeeping cannot secure the exclusive right to make, sell and use account books prepared upon the plan set forth in such book, wh ‘might not have {5 rot before us. It was not patented, and is open nd free to the use of the public. And, of course, the art, the ruled ines and headings of anily be Used as «cident to it. “The plausibility of the claim put forward by the complainant in this case arises trom 3 satus, Of ideas produced by the peculiar nature uf the ot described in the books, which have uecn, made the subject of copyright’ In describing the art the ilustrations and diagrams emnplayed. hoprenca to correspond more closely than usual mith the actual work performed by the operatar nhs uses the art. x x x The descrigtion of the ant ima book, though entitled to the benefit ot cupyright, lays mo foundation for an exclusive claim to the at wocth, The object of the one is explanation; the object of the other is use. The former may be secured by Copyright. The latter can only be Secured, fit con be secured at all, by letters patent” If he desires must obtain a art, manutacture ter. He may copyright his ON THE ISSUE OF TRADEMARK INFRINGEMENT This issue concerns the use by respondents of the mark “Poster Ads” which petitioner's president said was a contraction of "poster advertising.” P & D was able to secure a tradernark Certificate for it, but one where the goods specified were “stationeries such as letterheads, envelopes, calling cards and newsletters.” Petitioner admitted it did not commerciaily engage in or market these goods. On the contrary, it deal in electrically operated backlit advertising units and the sale of advertising spaces thereon, which, however, were not at all Specified in the trademark certificate. Under the circumstances, the Court of Appeals correctly Gited Faberge, Inc. v. Intermediate Appeuiate Court, where we, invoking Section 20 of the old Trademark Law, ruled that “the certificate of registration issued by the Director “The copyright of 2 book on perspective, no matter Now many dra lustrations it may grntain. ges no exclusive right to the modes of Peary oescnbed, though they may nevér have een Or used before, By publishing the book Brent Patent for the art, the latter is Practice and use th e art, any Of Patents can confer (upon petitioner) the exclusve right thas described and tusttated thera elt which he to use its own symbol only to those yoods speuified in the thercin. The use of theaoston and nt th jrnrg yhich are praducts WKN. 2 fer pe correct anid Was s Kaisha v. Court ee ly quality hte secure a jgademark 5 meant that \gement since q n ehould have been for unfair vas possible even if P & D tioner’s complaint tho trial court did etitioner did not nark or trade name may, that the name S or product in chapter 1 2s INTELLECTUAL PROPERTY RIGHTS field of poster advertising, the very business engaged in by ‘Secondary meaning” means that a word or phrase incapable of exclusive appropriation with reference market (because it 1s geographically or otherwise descriptive) mi less have been used for 50 long and so exclusive! oducer with reference to his article that, in the and to that branch of the purchasing public, the word or phrase has come to mean that the article was his property. The admission by petitioner's ‘own expert witness that he himself could not associate “Poster Ads” with petitioner P & D because it was "too generic definitely precluded the application of this exception. Having discussed the most important ang critical issues, we see no need to belabor the rest. ‘old, the Court finds no reversible error committed by the Court of Appeals when it reversed the Regional Ti Court of Makati City. WHEREFORE, the petition is hereby DENIED and the decision of the Court of Appeals dated May 22, 2001 1s AFFIRMED in toto. Titustaarive Case 1-3 Elidad C, Kho, doing business under the name and style of KEC Cosmetics Laboratory v. Hon, Court of Appeals, Summerville General Mechandising Compay and Ang Tiam Chay G.R. No. 115759, March 19, 2002 De Leon, 3r., J. Before us is a petition for review on certiorar? of ion dated May 24, 1993 of the Court of Appeals sett aside and declaring as null and void the Orders dated F 10, 1992 and March 19, 1992 of the Regional W Branch 90, of Quezon Cily granting the isuw jorenty LLECTUAL FA sg TIALS OF INTE! % est Tauance ofa wrote Teance ot awn of Case No. 2911 Geierat Perenanesing 3 ea ang ran .. complant ame a ie! ed owner of tt etitioner, Jes that_pet dite of KEC Cosmetics copyrights Chin Case, as shown Wo, 01358 and No. ae rights on chin Chun Su cated ream ater purchasing a cheng, ystered owner ther se Pruippine Patent Office seo uncer Registration Certificate No. 4529; Summervilo advertised and sold petivoners Synger the biand name chin Chun Su, in sett perio thereby misleading we in the petitioner's re respondents should ging on the copyrights and ft Pgisteation ‘ther hand, alleged as their authorized Summerville Jugge name Chin Chun Su Medicated Cream pine Patent Cificd and other appropriate KEC Cosmetics Laboratory of the ights through misrepresentation 1, that the euthority of Quintin Cheng, patent registration certificate, to distribute Chun Su products in the Philippines. had inated by the said Taiwanese Manufacturing ue ear ne nnd OF the application for pre minary ted the same in an Ord positive portion of wi ACCORDINGLY, the app ‘one aig business under the for pret i, cuted t0 ed thousand pesos CHAPTER I INTELLECTUAL PROPERTY RIGHTS (P500,000.00) to the effect that plaintiff wil pay to defendants al damages wihich defendants may sustain by reason of the injunction if the Court should finally decide that plaintitt is not entitled thereto, SO ORDERED. The respondents moved for reconsideration but their motion for reconsideration was denied by the tr Order dated March 19, 1992. On April 24, 1992, the respondents fled @ petition for certiorari with the Court of Appeals, docketed as CA-G.R. SP No. 27803, praying for the nullification of the said writ of pre~ liminary injunction issued by the trial court. after the respon. dents filed their reply and almost a month after petitioner submitted her comment, or on August 14, 1992, the latter moved to dismiss the petition for violation of Supreme Court Circular No. 28-91, a circular prohibiting forum shopping, Ac- cording to the petitioner, the respondents did not state the docket number of the civil case in the caption of their petition and, more significantly, they did not include therein a certifi- cate of non-forum shopping. The respondents opposed the petition and submitted to the appellate court a certificate of ‘Aon-forum shopping for their petition. ‘On May 24, 1993, the appellate court rendered a Decision in CA-G.R. SP No. 27803 ruling in favor of the respondents, the dispositive portion of which reads: WHEREFORE, the petition is hereby given due Course and the orders of respondent court dated February 10, 1992 and March 19, 1992 granting the wnt of preliminary injunction and denying Petitioners’ motion for reconsideration are hereby Set aside and declared null and void. Respondent court is directed to forthwith proceed with the trial Of Civil Case No. Q-91-10926 and resolve the issue raised by the parties on the merits ‘SO ORDERED. ing the petition, the appellate court ruled that: The registration of the trademark or brand- fame “Chin Chun Su” by KEC with the supplemental Fegister of the Bureau of Patents, Trademarks and 2co we night to be deceptive for a fe than a tegisitatian in the re before courts the Principal private respo Patent office action on that ‘registrants 1s after is, therefore, ‘shaky foundation. The ot only. runs counter to in Kule 124 of the Revised ippine Patent Office Cases but considering all the facts related petitions respondent, AS even in cases ard precept may factually be Nave eld that the presumption js rive (Prople v. Lim Hoa, GR Mar 30, 1 Meported). One npetitor even if his (Parke, Davis & 928, La Yebana {or Feconsideration. This 'e declae respondents in cnaptcey ROME RTE IGHTS 9 advertisements nohfying af the assailed decision of that genuine Chun Chun 5: only from Surnmerville General I court went on to hear 7 jachion and damages. On ¥ 22, 19°73, the tral cour rendered 9 Decision batting the petitioner frorn using the trademark Chin Chun Su and upholding the right of the respunderte w use the saine, but recog! Copyright of the petitioner over the oval shaped container of her beauty crear. The trial court did not award damages and casts to any of the parties but to their fespective counsels were awarded Seventy-ive Thousand Pesos (P75,000.00) each as attornay’s fees. The petitener duly appealed the said decision to the Court of appesis On June 3, 1994, the Court of Appeals promulgated a Resolution denying the petitioner's motions for reconsideration and for contempt of court in CA-G.R. SP No. 27805, Hence, this petition anchored on the following assign- ment of errors: J. RESPONDENT HONORABLE COURT OF APPEALS COM- MITTED GRAVE ABUSE OF DISCRETION AMOUNTING TO LACK OF JURISDICTION IN FAILING TO RULE ON PETITION. ER’S MOTION TO DISMISS. IT. RESPONDENT HONORABLE COURT OF APPEALS FOMMITTED GRAVE ABUSE OF DISCRETION AMOUNTING FO LACK OF JURISDICTION IN REFUSING TO PROMPTS RESOLVE PETITIONER'S MOTION FOR RECONSIDERATION IV RESPONDENT HONORABLE COURT OF APPEALS COMMITTED GRAVE ABUSE OF DISCRETION AMOUNTING to TACK OF JURISDICTION IN FAILING TO CITE THE PRIVAT RESPONDENTS IN CONTEMPT. The petit 5 the appellate court tor not ois: the ground of violation of Supreme - 28-91, Also, the petitioner contends that 2Ty LAW ESSENTIALS OF INTELLECTUAL PROPER v he Revised fale 9 Of Med to rule eninety (90) days Me gm the. appellate ‘ube the umme ot 15 $ se of from tne une or tne lapse of court vi 1¢ 3, 1994. he respondents. Rule 58 of the Revised Rules sunds for the issuance of a mary in is a proof that the applicant is ‘afk demanded, andthe whole or pat of such or continuance i imited period ‘Te Same shows facts entithng the applicant to the relief flovanded nis the reason why we have ruled that It must Ze shown that the invasion ofthe right sought to be protected that the nght of complainant is ‘and, that there is an urgent and deramcunt necessity for the wet to prevent serious damage. Jn the case at bar, the petitioner applied for the issuance @ orehwranary injunctive order on the ground that she is "ed to the use of the trademark on Chin Chun Su and its based on ner copyright and patent over the same, tt appropriate to rule on whether the copyright 'e name and container of a beauty cream registrant to the use and ownership ners, (Service mark) of an ‘or marked container ste name means the name 6-0 ta hereto, sea CHAPTER 1 a INTELLECTUAL PROPERTY RIGHTS of their creation. Patentable inventions, on the other hand, refer to any technical solution of a problem in any field of kuz man activity which is new, involves an inventive step and is industrially applicable. Petitioner has no right to support her claim for the exclusive use of the subject trade name and its container, The name and container of @ beauty cream product are proper subjects of a trademark inasmuch as the same falls squarely within its definition. In order to be entitied to excl ively use the same in the sale of the beauty cream Product, the user must Suficlonty proye that she registered or used i before anybody else did. The petitioner's copyright and patent registration of the name and container would not guarantee her the right to the exclusive use of the same for the resean it they are not appropriate subjects of the said intellectual rights. Consequently, a preliminary injunction order cannct be issued for the reason that the petitioner has no! proven that she has a clear right over the sald name and container to thé exclusion of others, not having proven that she nas registered 2 trademark thereto or used the same before anyone did. We cannot likewise overtook the decision of the trial court in the case for final injunction and damages. The dispositive held that the petitioner does not have the name andcontainer of the beauty cream product. The said decision on the merits of the tris! (ourt rendered the issuance of the writ of a preliminary injunction moot and academi ing the fact that the same has been appealed in the Court of Appeals. This is Supported by our ruling in La Viste Association, Inc. v. Court of Appeals, to wit: Considering that preliminary injunction is a provisional remedy which may be granted at any time after the commencement of the action and before judgment when it i established that the plaintiff is er and only when his complaint shows Xx x and it appearing th the issuance of a fina decision rendered after Fesolved to dismiss the ins 1m Raving been rendered Moot and academic. An issued by the thal court after it has already made a clear pronouncement as to the Plaintiff's right thereto, that is, after the same issue decided on the merits, the trial cou't having apprecan ancl tion cannot the decision = —— nounced that the iss “aed 7 question on oe an mar paar 1d academic i sa Car ee oe en oP the cecision eran cenying the applicant-pl ee a ), although sepenied, ton aime 3 “eres es thatthe appellate re peony for cerioar for non-compliance msropoin. we dsagree Fst the nical objec 0 he te oto renders moot and ‘olution of a writ of iss the petition 2 motion to dismiss the petion for cero Sree of the Revised Rules of Ci proces Serone Count ‘and tha 1 pettions for certiorari a rovisions of Section 2, Rule 56, si Se tsenen dete vg due cause theft, the court may require the respondents to file their comment to, an not a motion to dismiss, the petition x x x". Secondly, the issue was raised one month after petitioner had filed her ansner/comment and after private respondent had replied thereto, Under Section 1, Rule 16 of the Revised Rules of Civil mation to dismiss shall be filed within the time for but before fling the answer to the complaint or pleading asserting a daim. She therefore could no longer submit 3 motion to oismiss nor reise defenses and objections not comment she had earlier tendered and equity require this Court not ved writ of injunction in favor of a party ht thereto merely on a technical infirmity. CHAPTER T INTELLECTUAL PROPERTY RIGHTS The petitioner likewise contends that the appellate court unduly delayed the res, r ation. But we find that petitioner contributed to this delay when she flied successive contentious motions in the same proceeding, the last of which was on October 27, 1993, ne= cessitating counter-manifestations from private respondents with the last one being fied on November 9, 1993. None theless, it is well-settled that non-observance of the period for deciding cases or their incidents does not render such Judgments ineffective or void. With respect to tne purported damages she suffered due to tH€alleged delay in resolving her motion for reconsideration, we find that the ssid issue has likewise been rendered moot and academic by our ruling that she has no right over the trademark and, consequently, to the issuance of a writ of preliminary injunction, Finally, we rule that the Court of Appeals correctly denied the petitioner's several motions for contempt of court. There is nothing contemptuous about the advertisements complained of which, as regards the proceedings in CA-G.R. ‘SP No. 27803 merely announced in plain and straightforward language the promulgation of the assailed Decision of the appellate court, Moreover, pursuant to Section 4 of Rule 39 of the Revised Rules of Civil Procedure, the said decision nullifying the injunctive writ was immediately executory. WHEREFORE, the petition is DENIED. The Decision and Resolution of the Court of Appeais dated May 24, 1993 and June 3, 1994, respectively, are hereby AFFIRMED. With costs against the petitioner. SO ORDERED. —— 3 Tecunovocy TRANSFER ARRANGEMENT Technology Transfer Arrangement, Defined This term refers to “contracts or agreements involving the transfer of systematic knowledge for the manufacture of 3 inetyg ero duSts the application of a process, or rendering of a servi including management contracts; and the transfer, assignment or li Sensing of all forms of intellectual property rights, including licensing ©f computer software developed for mass market” (Sec. 42)iment tein te ful te domain hOUgh easary to preven ee aoe ition and trade. ‘ayn Stipulations 1 Arrangements contain lg ‘At the same time, fe contract certain nequred and Pronibited mandates that Technology mandatory provisions.’ ‘conn a5 mafereto 10 tetude in th its partes theret ‘auses. ure to comply with ould automatically render t Srentorceable. (See Sec. 92) certain exceptional cases,? the Techt ‘valid even if it contains a probi ‘Arrangement may stil Be valid ever oe DO caorpied ited clauses h mandatory and prohibite Mee facrnology ‘ansfer Arrangement Transfer Bureau Hy tata 210 tions are required in all ments? pulations that are prohib- ransfer agreements, CHAPTER | 35 INTELLECTUAL PROPERTY RIGHTS fo Ten Fast Laws on Intellectual Property Rights 1 ve 10. ‘The law that primarily governs Intellectual Property Rights In our country is Republic Act No. 8293 which took effect on January 1, 1998. .. Republic Act No. 8293 has no retroactive effect. }. The principle of reciprocity applies in Intellectual Property Rights. |. Unfair Competition is a public crime. . The term “int tual property rights" consists of: a) Copyright and Related Rights; b) Trademarks and Service Marks: c) Geographic Indications; d) Industrial Designs; e) Patents; ) Layout Designs (Topographies) of integrated Circuits; and 9} Protection of Undisclosed Information. Trademark, copyright and patents are different intellectual property rights that cannot be interchanged with one another. A trademark is 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 ‘elation thereto, a trade name means the name or designation Identifying or distinguishing an enterprise. The scope of a copyright is confined to literary and artistic works which are original intellectual creations in the literary and artistic domain protected from the moment of their creation. : Patentable inventions refer to any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable. Technology Transfer Arrangement is a contract. The law states that there are mandatory and prohibited clauses in such contracts.Cuarrer IT OFFICE INTELLECTUAL PROPERTY to replace el eh (ine Orisfer i one OF The creation et, ademarks 3nd Technoloay the Barns of Pte, Fpepubc Ac NO, 6293- the pr e challenges broua} Fappleatons may be addressed. It was aso aimed gronng wel cy ofthe orice trough Faster Pro Somes nl otestns fit partes cases: ‘The proponents of the law led by the ite senior Pass ret explained that the said objectives will be achieves igh: *"(Fjirst, distribution of the policy formulation, adjudi- caton snd dmisrebvefuneions which at present ore a cea oe atents to different Cunlously however, this topic about the Intellectual Property Office is not included in the Supreme Court Bar Exam Syllabus. , there portant concepts in this Chapter, that ees fae to bet iar with specifically the or; ‘ctual Property Office including the administrative penalties thatthe Office may impose upon an infringer. Serer Ral Res Someta pes. on Rep. Ast No. £263 Octobe 8, 1996), 38 CHAPTER It 7 INTELLECTUAL PROPERTY OFFICE ee @ ~—_Inrewectuat Property Orrice 4.1. Creation ‘he Intellectual Property Office was created under Republic Act No. 8293. This Office replaced the Bureau of Patents, Trademarks and Technology Transfer. 4.2 Organization ‘The Intellectual Property Office is headed by a Director General who Is assisted by two (2) Deputies Director General. The Office Is divided into (6) Bureaus, each of which is headed by a Director and assisted by an Assistant Director. These Bureaus are: 2) The Bureau of Patents; b) The Bureau of Trademarks; ©) The Bureau of Legal Affairs;’ ) The Documentation, Information and Technology Transfer Bureau; ) The Management Information System and EDP Bureau; and f) The Administrative, Financial and Personnel Services Bureau. The Director General, Deputies Director General, Directors and Assistant Directors of the Office are all appointed by the President. The other officers and employees of the Office shall be appointed by the Secretary of the Department of Trade and Industry, conformably with and under the Civil Service Law. (Sec. 6) 4.3, Functions The following are declared functions of the Office: 3) Examine applications for grant of letters patent for inven- tions and register utility models and industrial designs: b) Examine applications for the registration of marks, 9¢0- Graphic indication, integrated circults; ©) Register technology transfer arrangements and settie dis- utes involving technology transfer payments covered by the provisions of Part IL, Chapter IX on Voluntary Licens-