JURISTS BAR REVIEW CENTER™

BENGZON
NEGRE
UNTALAN
Intellectual Property Attorneys

INTELLECTUAL PROPERTY LAW

Presentation on Intellectual Property Law by Dean Ferdinand Negre. For exclusive use of Jurists Bar reviewees. © 2022 by Jurists Review
Center, Inc. Unauthorized copying, dissemination, sharing, uploading, downloading, and storage strictly prohibited and will be prosecuted
to the full extent of the law, including the filing of administrative complaints with the Office of the Bar Confidant, IBP, and SC as well as the
filing of criminal charges.

FERDINAND M. NEGRE 21 August 2022

Outline

 Introduction
 IP and the Constitution
 IP in the International Regime
 IP Rights under the IP Code
 Patents, Utility Models and Industrial Designs
Trademarks, Tradenames and Unfair Competition

 Copyrights and Moral Rights

 Special Rules and Jurisdiction on IPR Cases

 Relevant and Recent Jurisprudence

Intellectual Property Defined

 the legal rights which result from intellectual

activities in the industrial, scientific, literary and
artistic fields
 creations of the mind, such as

 inventions;
 literary and artistic works; and
 symbols, names and images used in commerce.
Intellectual Property and the Constitution

Article 14, Section 13, 1987 Constitution

“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.”
 Exclusive Rights

 Limited in time, scope and space

 exceptions and limitations

 Territory
“Intellectual Property Rights”

 It is property
 Articles 520-522 (Trademarks) and 721-724
(Copyrights/Patents), Civil Code
 Creations of the human mind or intellect

 Intangible asset

 Vs. Object/Embodiment

 Intellectual property rights

 Exclusive rights to do or to prohibit

 May be assigned or licensed to others
 May be infringed
Kinds of IP rights

Trademarks Patents
Utility Model
Copyright
Industrial Design
Layout design
Trade Secret
IP Rights Protected Under the IP Code

 Copyright – Programs: OS and Apps

 Patent – Camera; Facial recognition

 Trademark – word mark or logo

 Industrial Design – Design and

Shape of the phone

 Layout Design of Integrated Circuits

– The circuits or the map that

compose the microchip in the phone
 Trade Secret – ?
IP Rights Under the IP Code

 Intellectual Property Code, R.A. 8293, January 1, 1998

 Amendments:

 R.A. 9502, ”Universally Accessible Cheaper and

Quality Medicines Act of 2008”

 R.A. 10372 on Copyrights (2013)

IP Rights Under the IP Code

 Intellectual Property Code, R.A. 8293, January 1, 1998

 Amendments:

 R.A. 9502, "Universally Accessible Cheaper and

Quality Medicines Act of 2008".
◼ Compulsory Licensing on the manufacture of
patented medicines
◼ Compulsory licensing on the importation of
medicines protected by patent or trademark
◼ Non-patentability of second use of known substance
unless there is enhanced efficacy
IP Rights Under the IP Code

 Intellectual Property Code, R.A. 8293, January 1, 1998

 Amendments:

 R.A. 10372 on Copyrights (2013)

◼ Retransmission of broadcast made a right
(reversing ABS-CBN vs. Phil. Media [2009])
◼ Vicarious liability including landlord liability
◼ Providing as aggravating circumstances the ff.:
◼ circumvention of effective technological
protection measures and
◼ electronic rights management information
RA 8293, IP Code

Section 2. Declaration of State Policy. - The State

recognizes that an effective intellectual and industrial
property system is vital to the development of domestic
and creative activity, facilitates transfer of technology,
attracts foreign investments, and ensures market access
for our products. It 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
periods as provided in this Act.
The use of intellectual property bears a social
function. To this end, the State shall promote the
diffusion of knowledge and information for the promotion
of national development and progress and the common
good.
Article XII, Constitution

SECTION 6. The use of property bears a social

function, and all economic agents shall contribute to
the common good. Individuals and private groups,
including corporations, cooperatives, and similar
collective organizations, shall have the right to own,
establish, and operate economic enterprises, subject to
the duty of the State to promote distributive justice
and to intervene when the common good so demands.
Nature of IP Protection

SC:

“…intellectual property protection is merely a means

towards the end of making society benefit from the
creation of its men and women of talent and genius .
This is the essence of intellectual property laws, and it
explains why certain products of ingenuity that are
concealed from the public are outside the pale of
protection afforded by the law. It also explains why
the author or the creator enjoys no more rights than
are consistent with public welfare.” [ABS-CBN v. Phil.
Multi-Media, G.R. Nos. 175769-70, Jan 19, 2009]
 Important Distinctions

“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
relation thereto, a trade name means the name or designation
identifying or distinguishing an enterprise. Meanwhile, 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, on the other hand, 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.”
(Kho vs. CA, G.R. No. 115758, [2002])
Pearl & Dean v. Shoemart, 409 SCRA 231 (2003)

1. Pearl & Dean is engaged in the manufacture of advertising

display units or light boxes. These units utilize specially
printed posters sandwiched between plastic sheets and
illuminated with back lights.
2. P&D secured a Copyright Registration over the drawings of
these light boxes. The light boxes were marketed under the
trademark “Poster Ads.” P&D secured trademark registration
for “stationeries such as letterheads, envelopes, calling cards
and newsletters."
3. Without going through P&D, SM ordered exact same boxes
from NEMI, P&D’s former contractor-manufacturer. P&D
sued SM and NEMI for Copyright Infringement, Trademark
Infringement and Unfair Competition.
Light Boxes under the brand “POSTER ADS”
Pearl & Dean v. Shoemart, 409 SCRA 231 (2003)

1. Copyright Infringement
1. Drawings v. Products
2. Patents
2. Trademark Infringement
1. Stationeries v. Products
2. POSTER ADS
3. Unfair Competition
1. POSTER ADS
 Distinctions

PATENT COPYRIGHT TRADEMARK

Subject Invention: Literary or artistic Any visible sign

matter of Technical Solution work which is an capable of
of a problem which original distinguishing the
Protection is new, involves an intellectual goods or services of
inventive step and creation; an enterprise;
is industrially Expression Brand
applicable

Office where Bureau of Patents, Not required; Bureau of

right is Intellectual Optional at The Trademarks,
Property Office National Library Intellectual
registered or IPO Property Office
Duration of 20 years from Generally, 50 10 years, renewable
Right filing or priority years after the indefinitely
date death of author
Recap: Basic General IP principles

 Territoriality
 Registration System

 Except Copyright
 First-to-File Rule
 Except Copyright
 Nothing Absolute: Exceptions, Limitations and
Time-Bound
BENGZON

END OF SESSION 1
NEGRE
UNTALAN
Intellectual Property Attorneys

THANK YOU !☺

FERDINAND M. NEGRE