Intellectual Property Code of the Philippines

(R.A. No. 8293)

Intellectual Property Law

a. The Law on Patents, Utility Model and Industrial Design

i. Definition of Patent – It is a grant issued by the government

through the Intellectual Property Office of the Philippines. It is an
exclusive right granted for a product, process or an improvement of
a product or process which is new, inventive and useful. This
exclusive right gives the inventor the right to exclude others from
making, using or selling the product of his invention during the life
of the patent.
ii. Definition of Utility Model – It is a protection option, which
is designed to protect innovations that are not sufficiently inventive
to meet the inventive threshold required for standard patents
application. It may be any useful machine, implement, tools,
product, composition, process, improvement or part of the same,
that is of practical utility, novelty and industrial applicability. It is
entitled to seven (7) years of protection from the date of filing, with
no possibility of renewal.
iii. Definition of Industrial Design – It is any composition of
lines or colors or any three-dimensional form whether or not
associated with line or colors; Provided, That such composition or
form gives a special appearance to and can serve as pattern for an
industrial product or handicraft. It shall be valid for five (5) years
from the filing date of the application. It may be renewed for not
more than two (2) consecutive periods of five (5) years each, by
paying the renewal fee.
iv. Mode of creation of right – It must be registered with IPO to
be protected by law.
v. Term of Patent – A patent has a term of protection of twenty
(20) years providing an inventor significant commercial gain. In
return, the patent owner must share the full description of the
invention. This information is made available to public in the form
of the Intellectual Property Official Gazette and can be utilized as
basis for future research and will in return promote innovation and
development.
vi. Requisites of Patentable Inventions
1. It must be a technical solution to a problem in any field of
human activity. It may be, or may relate to, a product, or process,
or an improvement of any of the foregoing.
 2. (Novelty) It must be new. An invention shall not be considered
new if it forms part of a prior art.
a. Prior art shall consist of:
i. 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
ii. The whole contests 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 validity
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 applicant or the inventor identified in both
applications are not one and the same.
3. (Inventive Step) It must involve an 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.
4. (Industrial Applicability) It must be industrially applicable. An
invention that can be produced and used in any industry shall
be industrially applicable.
vii. Non-Patentable Inventions. The following shall be excluded
from patent protection:
1. Discoveries, scientific theories and mathematical methods;
2. Schemes, rules and methods of performing mental acts,
playing games or doing business and programs for computers.
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;
4. Plant varieties or animal breeds or essentially biological
process for the production of plants or animals. The provision
shall not apply to microorganisms 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;
5. Aesthetic creations; and
6. Anything which is contrary to public order or morality.
viii. First to File Rule – 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 where two or more applications are filed for the
same invention, to the applicant who has the earliest date or, the
earliest priority date.
ix. Right of Priority – 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: Provided, Tat: a local application expressly
claims priority; b. It is filed within twelve (12) months from the date
the earliest foreign application was filed; and c. a certified of the
foreign application together with an English translation is filed
within six (6) months from the date of filing in the Philippines.
x. Right to a Patent – The right to a patent belongs to the
inventor, his heirs, or assigns. When two (2) or more persons have
jointly made an invention, the right to a patent shall belong to them
jointly.
xi. Inventions Created Pursuant to a Commission. The person
who commissions the work shall own the patent, unless otherwise
provided in the contract. 30.2.
1. 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.
b. The employer, if the invention is the result of the
performance if his regularly-assigned duties, unless there is
an agreement, express or implied, to the contrary.
xii. Patent Infringement refers to the unauthorized making,
using, offering for sale or selling any patented invention or products
of the patented invention without consent from the patent holder.
xiii. Tests of Patent Infringement
1. Literal infringement – In using literal infringement as a test,
resort must be had, in the first instance, to the words of the
claim. If accused matter clearly falls within the claim,
infringement is made out and that is the end of it.” To determine
whether the particular item falls within the literal meaning of the
patent claims, the court must juxtapose the claims of the patent
and the accused product within the overall context of the claims
and specifications, to determine whether there is exact identity
of all material elements.
 2. Doctrine of equivalents infringement – it provides that
infringement also takes place when a device appropriates a prior
invention by incorporating its innovative concept and, although
with some modification and change, performs substantially the
same function in substantially the same way to achieve
substantially the same result. It requires satisfaction of the
function-means-and-result test.

b. The Law on Trademarks, Service Marks and Trade Names

i. Definition of Terms
1. Trademark – It means any visible sign capable of
distinguishing the services of an enterprise and shall include
a stamped or marked container of goods.
2. Service mark – It means any visible sign of distinguishing
services of an enterprise and shall include a stamped or
marked container of services.
3. 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.
4. Trade name – means the name or designation identifying or
distinguishing an enterprise.
ii. Mode of creation of right – Trademark, service mark and
collective mark must be registered with IPO to be protected by
law while trade name need not be registered to be protected.
iii. Non-registrable marks – A mark cannot be registered if it:
1. 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.
2. 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.
3. 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 written
consent of the widow.
4. 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;
5. 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.
6. 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
7. Is likely to mislead the public, particularly as to the nature,
quality, characteristics or geographical origin of the goods or
service.
8. Consists exclusively of signs that are generic for the goods or
services that they seek to identify
9. Consists exclusively of signs of indications that have become
customary or usual to designate the goods or services in every
language or in bona fide and established trade practice.
10. 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;
11. 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.
12. Consists of color alone, unless undefined by a given form
13. Is contrary to public order or morality.
iv. Term of Trademark and Service Mark – it has a term of 10
years but subject to unlimited times of renewal. Therefore, it has
indefinite life.
v. Trademark Infringement is the unauthorized use of a
trademark or service mark on or in connection with
goods/services in a manner that is likely to cause confusion,
deception, or mistake about the source of goods and/or services.
vi. Tests of Trademark Infringement
1. Dominancy Test – It focuses on the similarity of the main,
prevalent or essential features of the competing trademark
that might cause confusion. Infringement takes place when
the competing trademark contains the essential feature of
another. Imitation or an effort to imitate is unnecessary. The
question is whether the use of the marks is likely to cause
confusion or deceive purchasers.
2. Holistic Test – The focus is not only on the predominant
words but also on the other features appearing on the labels.
i. Difference between Trademark Infringement and Unfair
Competition
1. Trademark Infringement means any person who shall use,
without the consent of the registrant, any reproduction,
counterfeit, copy or colorable imitation of any registered
mark or trade-name in connection with the sale, offering
for sale, or advertising of any goods, business or services
on or in connection with which such is likely to cause
confusion or mistake or to deceive purchasers or other as
to the source or origin of such goods or services, or identity
of such business; or [2] reproduce, counterfeit, copy, or
colorably imitate any such mark or trade name and apply
such reproduction, counterfeit, copy, or colorable imitation
to labels, sign, prints, packages, wrappers, receptacles, or
advertisements intended to be used upon in connection
with such goods, business or services, shall be liable to a
civil action by the registrant for any or all of the remedies
herein provided. To establish trademark infringement, the
following elements must be proven: (1) validity of the
plaintiffs mark; (2) the plaintiffs ownership of the mark;
and (3) the use of the mark or its colorable imitation by the
alleged infringer results in likelihood of confusion.
2. Unfair Competition has been defined as the passing off (or
palming off) or attempting to pass of upon the public of the
goods or business of one person as the goods or business
of another with the end and probable effect of deceiving the
 public. The essential elements of unfair competition are (1)
confusing similarity in the general appearance of the
goods; and (2) intent to deceive the public and defraud a
competitor. Jurisprudence also formulated the following
true test of unfair competition: whether the acts of the
defendant have the intent of deceiving or are calculated to
deceive the ordinary buyer making his purchases under
ordinary condition of the particular trade to which
controversy relates. One of the essential requisites in an
action to restrain unfair competition is proof of fraud; the
intent to deceive, actual or probable must be shown before
the right to recover can exist.
Note: there can be trademark infringement without unfair
competition such as when the infringer discloses on the
labels containing the mark that he manufactures the
goods, thus preventing the public from being deceived that
the goods originate from the trademark owner. In this case,
no issue of confusion arises because the same
manufactured products are sold; only the ownership of the
trademark is at issue.
3. Distinctions between trademark infringement and unfair
competition
a. Infringement of trademark is the unauthorized use of a
trademark, whereas unfair competition is the passing of
one’s goods as those of another.
b. In infringement of trademark fraudulent intent is
unnecessary whereas in unfair competition fraudulent
intent is essential.
c. In infringement of trademark the prior registration of
the trademark is a prerequisite to the action, whereas
in unfair competition registration is not necessary.
c. The Law on Copyright
i. Definition of Copyright – it is the legal protection extended to
the owner of the rights in an original work
ii. Definition of “Original Work” – It refers to every production in
the literary, scientific and artistic domain. Among the literary and
artistic works enumerated in the IP Code includes books and
other writings, musical works, films, paintings and other works,
and computer programs.
iii. Mode of creation of right – Works are protected by the sole fact
of their creation, irrespective of their mode or form of expression,
as well as their content, quality and purpose. Thus, it does not
 matter if, in the eyes of some critics, a certain work has little
artistic value. So as long as it has been independently created
and has a minimum of creativity, the same enjoys copyright
protection. (From the moment of Creation without a need for
registration)
iv. Term of copyright – In general, the term of protection of
copyright for original and derivative works is the life of the author
plus fifty (50) years after his death. The Code specifies the terms
of protection for the different types of works. In calculating the
term of protection, the term of protection subsequent to the death
of the author shall run from the date of his death or of
publication, but such terms shall always be deemed to begin on
the first day of January of the year following the event which gave
rise to them (i.e. death, publication, making)
v. Two right under Copyright
1. Economic rights which enable the creator to obtain
remuneration from the exploitation of his works by third
parties.
a. Reproduction
b. Transformation
c. First public distribution
d. Rental
e. Public Display
f. Public performance
g. Other communication to the public of the work
2. Moral rights which make it possible for the creator to
undertake measures to maintain and protect the personal
connection between himself and the work.
a. Right of attribution
b. Right of alteration
c. Right of integrity (to object to any prejudicial distortion)
d. Right to restrain use of his name
vi. Ownership of copyright
1. Generally, the natural person who created the literary and
artistic work owns the copyright to the same.
2. For work created during or in the course of employment
(works for hire):
a. Employee – if the work is not part of his regular duties,
even if he used the time, and materials of the employer;
b. Employer – if the work is the result of the performance of
his regularly assigned duties, unless there is an express or
implied agreement to the contrary.
 3. For commissioned works; the person who commissioned the
work owns the work but the copyright thereto remains with
the creator, unless there is a written agreement to the
contrary.
4. For audiovisual works: the producer, the author of the
scenario, the composer of the music, the film director, and the
author of the work so adapted.
vii. Infringement of Copyright – It consists in infringing any right
secured or protected under the Code. It may also consist in aiding
such infringement. The law 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 purpose of:
1. Selling or letting for hire, or by way of trade offering or
exposing for sale or hide, the article;
2. 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 works; or
3. Trade exhibit of the article in public.
viii. Works that can be protected by Copyrights (Copyrightable
works)
1. Books, pamphlets, articles and other writings;
2. Periodical and newspaper;
3. Lectures, sermons, addresses, dissertations prepared for oral
delivery, whether or not reduced in writings or other material
form;
4. Letters;
5. Dramatic or dramatico-musical compositions; choreographic
works or entertainment in dub shows;
6. Musical compositions, with or without words;
7. Works of drawing, painting, architecture, sculpture,
engraving, lithography, or other works of art; models or
designs for works of art;
8. Original ornamental designs or models for articles of
manufacture, whether or not registrable as an industrial
design, and other works of applied art:
9. Illustrations, maps, plans, sketches, charts and three-
dimensional works relative to geography, topography,
architecture or science.
10. Drawings or plastic works of a scientific or technical
character;
11. Photographic works including works produced by a
process analogous to photography; lantern slides;
 12. Audiovisual works and cinematographic works and
words produced by a process analogous to cinematography or
any process for making audio-visual recordings;
13. Pictorial illustrations and advertisements;
14. Computer programs;
15. Other literary, scholarly, scientific and artistic works.
ix. Works that are not protected by Copyrights (Non-
copyrightable Works)
1. Any idea, procedure, system, method or operation, concept,
principle, discovery or mere data as such, even if they are
expressed, explained, illustrated or embodied in a work;
2. News of the day and other miscellaneous facts having the
character of mere items of press information; or
3. Any official text of a legislative administrative or legal nature,
as well as any official translation thereof.
ii. Doctrine of Fair Use – It is “a privilege to use the copyrighted
material in a reasonable manner without the consent of the
copyright owner or as copying the theme or ideas rather than
their expression.” It is an exception to the copyright owner’s
monopoly of the use of the work to avoid stifling “the very
creativity which that law is designed to foster. In determining
whether the use made of a work in any particular case is fair use,
the factors to be considered shall include the following
4. The purpose and character of the use, including whether such
use is of a commercial nature or is for non-profit educational
purposes
5. The nature of the copyrighted work
6. The amount and substantially of the portion used in relation
to the copyrighted work as a whole
7. The effect of the use upon the potential market for or value of
the copyrighted work.