VI.

LAW ON OTHER BUSINESS TRANSACTIONS

E. INTELLECTUAL PROPERTY LAW

(RA No. 8293, as amended by RA No. 10372)

Copyright Patent Trademark

Subject matter of Literary, scientific or New, useful and Goods manufactured
the right artistic work industrially applicable or produced
inventions
Where right is to National library Intellectual Property Intellectual Property
be registered Office Office
Protection starts Creation Application Issuance of CoR
Duration of Lifetime of the author + 20 years 10 years
right generally 50 years after
death of the author

E.1. PATENTS

• Patent – is a grant issued by the government to an inventor, designer or maker, the right to
exclude others from making, using or selling his invention, design or utility model within the
country for a specific term, in exchange of his patentable disclosure.

Utility model – 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 is entitled to 7 years of protection from the date of filing, with no possibility of renewal.

Industrial design – is any composition of lines or colors or any 3-dimensional form, whether
or not associated with lines or colors; provided that such composition or form gives a special
appearance to and can serve as pattern for an industrial product or handicraft. Valid: 5 years
from the filing date of the application. Renewable for not more than 2 consecutive periods of
5 years each, by paying the renewal fee.

• Kinds of patents:
1) Invention patent: Novelty, Inventive Step, Industrial Applicability
2) Design patent: Novelty and Ornamentality
3) Utility model: Novelty and Industrial Applicability

• Patentable inventions - any technical solution of a problem in any field of human activity
which is new, involves an inventive step and is industrially applicable.

Requisites of a patentable invention:

1) Novelty – invention shall not be considered new if it forms part of a prior art which is (a)
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 (b) the whole
contents of an earlier published PH application with earlier priority date of a different
inventor. (s23)

Non-prejudicial to the filing of an application:

a) Disclosure by the inventor (patent) or maker (utility model) or one with the right
of the patent – filed within 1 year from the time of disclosure
b) Disclosure by the designer (industrial design) – filed within 6mos from the time of
disclosure.
c) Disclosure by a patent office, and the information was contained (i) in another
application filed by the inventor and should not have been disclosed by the office,
or (ii) in an application filed without the knowledge or consent of the inventor by a
3rd party which obtained the information directly or indirectly from the inventor; or
d) Disclosure by a 3rd party which obtained the information directly or indirectly from
the inventor.
 2) Inventive step – 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. (s26)

3) Industrial Applicability – if the invention can be produced and used in any industry shall
be industrially applicable. (s27)

• Non-patentable inventions
1) Discoveries, scientific theories and mathematical method;
2) Schemes, rules and method of performing mental acts, playing games, or doing business
and programs for computer;
3) Methods for treatment of the human body or animal body by surgery or therapy and
diagnostic methods practiced on the human or animal body;
4) Plant varieties or animal breeds of essentially biological process for the production of
plants or animals;
5) Aesthetic creations;
6) Anything which is contrary to public order or morality;
7) In the case of drugs and medicines, there is no patentable invention in the following
instances:
a) Mere discovery of a new form or new property of a known substance which does
not result in the enhancement of the known efficacy of that substance
b) Mere discovery of any new property or new use for a known substance
c) Mere use or a known process unless such known process results in a new product
that employs at least 1 new reactant. (s22)

• Right to a patent – belongs to the (1) inventor, (2) his heirs, or (3) assigns.

When 2 or more persons have jointly made an invention, the right to a patent shall belong to
them jointly. (s28)

• First-to-file rule – If 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 first filed an application
for such invention.

If 2 or more applications are filed for the same invention, the right to the patent shall belong to
the applicant who has the earliest filing date, or the earliest priority date.

• Commissioned inventions – If the invention is created:

1) Pursuant to a commission – the person who commissions the work shall own the patent,
unless otherwise provided in the contract. (s30.1)

2) By Ee in the course of his employment contract, the patent shall belong to:
a) Employee – if the inventive activity is not a part of his regular duties even if the Ee
uses the time, facilities and materials of the Er
b) Employer – if the inventive activity is the result of the performance of his regularly-
assigned duties, unless there is an agreement express or implied, to the contrary
(s30.2)

• Right of priority/Priority claim – 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.

Conditions in availing the priority date:

1) A claim of priority is based on earlier filing date abroad;
2) Local application w/in 12mos from the date the earliest foreign application was filed; and
 3) Certified copy of the foreign application together with an English translation is filed within
6mos from the date of filing in the PH (s31)

• Grounds for cancellation of patent – Any interested person may, upon payment of the
required fee, petition to cancel the patent or any claim thereof, or parts of the claim, on any of
the following grounds:
1) Invention is not new or patentable;
2) Patent does not disclose the invention in a manner sufficiently clear and complete for it to
be carried out by any person skilled in the art;
3) Patent is contrary to public order or morality; (s61.1)
4) Patent is found invalid in an action for infringement;
5) Patent includes matters outside the scope of the disclosure contained in the application.

If the ground for cancellation relates to some of the claims or parts of the claim only,
cancellation may be effected to such extent only. (s61.2)

• Remedy of the true and actual inventor

1) If a person other than the applicant is declared by final court order or decision as having
the right to a patent, he may within 3mos after such decision has become final
a) Prosecute the application as his own application in place of the applicant;
b) File a new patent application in respect of the same invention;
c) Request the application to be refuse; or
d) Seek cancellation of the patent, if one has already been issued. (s67)
2) If a person, who was deprived of the patent without his consent or through fraud is declared
by final court order or decision to be the true and actual inventor:
a) The court shall order for his substitution as patentee; or
b) At the option of true inventor, cancel the patent, and award actual damages in his
favour if warranted by the circumstances. (s68)

Actions indicated in S67 and S68 shall be filed within 1 year from the date of publication of
the patent application. (s70)

• Rights conferred by a patent:

1) If the subject matter of a patent is a product, to restrain, prohibit and prevent any
unauthorized person or entity from making, using, offering for sale or importing the
product;
2) If the subject matter of patent is a process, to restrain, prevent or prohibit any unauthorized
person or entity from using the process, and from manufacturing, dealing in, using, selling
or offering for sale, or importing any product obtained directly or indirectly from such
process;
3) Right to assign, or transfer by succession the patent; and
4) Right to conclude licensing contracts for the same.

• Limitations of patent rights:

1) Unauthorized used by a 3rd party that cannot be prevented by the owner of the patent. (s72)
2) Used by Prior user (s73)
3) Used by the Government (s74)

The owner of a patent has no right to prevent 3rd parties from making, using, offering for sale,
selling or importing a patented product in the following circumstances:
1) Using of a patented product after it has been put on the market in the PH by the owner of
the product or with his express consent.

XPN: Under the Cheaper Medicines Act, the patent owner of drugs and meds can no longer
prevent an unauthorized person from using that product once it has been introduced in the
PH or anywhere else in the world by the patent owner, or by any party authorized to use
the invention. Any govt agency or any private 3rd party may also import such products.
 2) Where the act is done privately and on a non-commercial scale or for a non-commercial
purpose. (Note: It does not significantly prejudice the economic interests of the owner of
the patent.)

3) Where the act consists of making or using exclusively for experimental use of the invention
for scientific or educational purposes and such other activities directly related to such
scientific or educational experimental use.

4) In the case of drugs and meds, where the act includes testing, using, making or selling the
inventions including any data related thereto, solely for purposes reasonably related to the
development and submission of information and issuance of approvals by govt regulatory
agencies required under any law of the PH or of another country that regulates the
manufacture, construction, use or sale of any product.

5) Where the act consists of the preparation for individual cases, in a pharmacy or by a
medical professional, of a medicine in accordance with a medical prescription or acts
concerning the medicine so prepared.

6) Where the invention is used [exclusively for the needs] in any ship, vessel, aircraft or land
vehicle of any other country entering the territory of the PH temporarily or accidentally.
(Note: Such invention is used exclusively for the needs of the ship, vessel, aircraft or land
vehicle and not used for the manufacturing of anything to be sold within the PH.)

Prior use – Person other than the applicant, who, in GF, started using the invention in the PH,
or undertaken serious preparations to use the same, before the filing date of the application
shall have the right to continue the use thereof, but this right shall only be transferred or
assigned further with his enterprise or business. (s73.1)

Use by the government – A govt agency or 3rd person authorized by the govt may exploit the
invention even without agreement of the patent owner where:
1) public interest so requires;
2) a judicial or administrative body has determined that the manner of exploitation, by the
owner of the patent or his licensee, is anti-competitive;
3) for drugs and meds:
a) there is a national emergency or other circumstance of extreme urgency requiring
the use of the invention;
b) there is a public non-commercial use of the patent by the patentee, w/o satisfactory
reason; or
c) the demand for the patented article in the PH is not being met to an adequate extent
and on reasonable terms, as determined by the Secretary of DOH

• Patent infringement – the making, using, offering for sale or importing a patented product or
a product obtained directly or indirectly from a patented process, or the use of a patented
process without the authorization of the patentee. (s76.1)

Kinds of infringement:
1) Literal infringement – the extent of protection conferred by the patent shall be determined
by the claims, which are to be interpreted in the light of the description and drawings. Here,
one makes, uses or sells an item that contains all the elements of the patent claim.
a) Exactness rule – the item that is being sold, made or used conforms exactly to
the patent claim of another.
b) Addition rule - one makes, uses or sells an item that has all the elements of the
patent claim of another plus other elements.

2) Doctrine of equivalents – provides that an 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.

Identity of result does not amount to infringement of patent unless the invention being
questioned operates in substantially the same way or by substantially the same means as
the patented one, even though it performs the same function and achieves the same result.

• Remedies of patentee:
1) Civil action to recover damages + attorney’s fees and other expenses of litigation or
reasonable loyalty
2) Injunction for the protection of rights
3) Court may, in its discretion, order the infringing goods, materials and implements
predominantly used in the infringement be disposed of outside the channels of commerce
or destroyed, without compensation
4) Criminal action for repetition of infringement – If infringement is repeated by the infringer
or by anyone in connivance with him after finality of the judgment of the court against the
infringer, the offenders shall, without prejudice to the institution of a civil action for
damages, be criminally liable, and, upon conviction, shall suffer imprisonment for 6 mos-
3yrs and/or a fine of P100k-P300k, at the discretion of the court. (s84)

Damages cannot be recovered for acts of infringement committed before the infringer had
known, or had reasonable grounds to know of the patent. It is presumed that the infringer had
known of the patent if on the patented product, or on the container or package in which the
article is supplied to the public, or on the advertising material relating to he patented product
or process, are place the words “Philippine Patent” with the number of the patent.

Prescriptive period

Civil action Criminal action

No damages can be recovered for acts of It shall prescribe in 3yrs from date of the
infringement committed more than 4yrs commission of the crime. (s84)
before the institution of the action of
infringement. (s79)

• Voluntary licensing – the grant by the patent owner to a 3rd person of the right to exploit a
patented invention.

Mandatory clauses:
1) Jurisdiction of disputes – PH; Venue – principal place of business of patentee
2) Continuous access to improvements in techniques and processes
3) Arbitration rules – venue: PH or other neutral countries, and the following laws are
applicable:
a) Procedure of Arbitration Law of the Philippines;
b) Arbitration Rules of the United Nations Commission on International Trade Law
(UNICITRAL); or
c) Rules of Conciliation and Arbitration of the International Chamber of Commerce
(ICC)
4) Taxes – borne by the licensor (s88)

• Compulsory licensing – the grant issued by the Director General of the IPO to exploit a
patented invention without the permission for the patent holder, either by manufacturer or
through parallel importation. (S93)

Its application cannot be applied before the expiration of a period of 4yrs from the date of
filing of the application or 3yrs from the date of the patent whichever period expires last.

Grounds:
1) National emergency or other circumstances of extreme urgency;
 2) Public interest so requires;
3) Use of the patent is anti-competitive;
4) Public non-commercial use without satisfactory reasons;
5) Invention is not being worked in the PH on a commercial scale without satisfactory reason;
6) Demand for patented drugs and meds is not being met to an adequate extent and on
reasonable terms, as determined by the Secretary of DOH (S93)

E.2. TRADEMARK, SERVICE MARKS AND TRADE NAMES

• Marks means any visible sign capable of distinguishing the goods (TM) or services (service
mark) of an enterprise and shall include a stamped or marked container of goods. (s121.1)

Collective mark means any visible sign designated as such in the application for registration
and capable of distinguishing the origin or any other common characteristic, 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. (s121.2)

Trade name means the name or designation identifying or distinguishing an enterprise.

(s121.3)

• Acquisition of rights

Mark Trade name

Through registration with the IPO (s122)
Certificate of registration of a mark shall be
prima facie evidence of the
1) validity of registration;
2) registrant’s ownership of the mark, and;
3) registrant’s exclusive right to use the
same in connection with the goods or
services and those that are related
thereto specified in the certificate.
(s138)
By adoption and use in trade or commerce.
A trade name need not be registered with the
IPO in order to secure protection for them or
before an infringement suit may be filed by
its owner against the owner of an infringing
TM.

It is not the application or registration of a

TM that vests ownership thereof, but it is the
ownership of a TM that confers the right to
register the same.

• Non-registrable marks
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 PH 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, during the
life of his widow, if any, except by written consent of the widow;
4) Identical with a registered mark belonging to a different proprietor or a mark with an earlier
filing or a priority date, in respect of (a) the same goods or services, or (b) closely related
goods (c) if it nearly resembles such a mark as to be likely to deceive or cause confusion.
Colorable imitation – denotes such a “close or ingenious imitation as to be calculated to
deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary
purchaser, giving such attention as a purchaser usually gives, and to cause him to purchase
the one supposing it to be the other.
5) Identical with, or confusingly similar to, or constitutes a translation of a mark considered
well-known in accordance with the preceding par., which is registered in the PH with
respect to goods or services which are not similar to those with respect to which registration
is applied for.
 6) Identical with, or confusingly similar to, or constitutes a translation of a mark which is
considered by the competent authority of the PH to be well-known internationally and in
the PH, w/n 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.
7) Likely to mislead the public, as to the nature, quality, characteristics or geographical origin
of the goods or services;
8) Consists exclusively of signs that are generic for the goods or services that they seek to
identify;
9) Consists exclusively of signs or of indications that have become customary or usual to
designate the goods or services in everyday 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 defined by a given form; or
13) Contrary to public order or morality.

• Kind of terms:
1) Generic terms – those which constitute “the common descriptive name of an article or
substance,” or comprise the “genus of which the particular product is a species,” or are
“commonly used as the name or description of a kind of goods,” or “imply reference to
every member of a genus and the exclusion of individuating characters,” or “refer to the
basic nature of the wares or services provided rather than to the more idiosyncratic
characteristics of a particular product,” and are not legally protectable.
2) Descriptive terms – “forthwith conveys the characteristics, functions, qualities or
ingredients of a product to one who has never seen it and does not know what it is,” or “if
it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the
goods,” or if it clearly denotes what goods or services are provided in such a way that the
consumer does not have to exercise powers of perception or imagination, and therefore
invalid as a TM.
3) Suggestive terms – those which require “imagination, thought and perception to reach a
conclusion as to the nature of the goods.” Such terms, “which subtly connote something
about the product,” are eligible for protection in the absence of secondary meaning.

• Doctrine of secondary meaning – a word or phrase originally incapable of exclusive

appropriation with reference to an article on the market, because geographically or otherwise
descriptive, might nevertheless have been used so long and so exclusively by one producer
with reference to his article that, in that trade and to that branch of the purchasing public, the
word or phrase has come to mean that the article was his product.

A mark may be concluded to have acquired secondary meaning when:

1) The secondary meaning must have arisen as a result of substantial commercial use of a
mark in the PH;
2) Such use must result in the distinctives of the mark insofar as the goods or the products are
concerned; and
3) Proof of substantially exclusive and continuous commercial use in the PH for 5 years
before the date on which the claim of distinctiveness is made.

• Prior user in GF – a registered mark shall have no effect against any person who, in GF,
before the filing date or the priority date, was using the mark for the purposes of his business
or enterprise: Provided, That his right may only be transferred or assigned together with his
enterprise or business or with that part of his enterprise or business in which the mark is used.

• Priority claim – a local application of a TM when an earlier application (priority application)

is filed abroad.
 1) Filed within 6 months from filing of priority application
2) Certified copy of priority application within 3 months from filing date
3) Failure to file is treated as a waiver of priority claim

• Duration of protection and rights – the rights to a TM shall be 10 years from registration.

Renewal – the rights to a TM in a certificate of registration may be renewed for periods of 10

years at its expiration upon payment of the prescribed fee and upon filing a request at any time
within 6 months before expiration or within 6 months after such exploration upon payment of
an additional fee.

Declaration of actual use shall be filed:

1) Within 3 years from filing date of application; extendible for another 6 months; Otherwise,
it shall be deemed an abandonment of the application
2) And another DAU within 1 year from the 5th anniversary of the registration of the mark;
Otherwise, the mark shall be removed from the Register by the Office
3) And within 1 year from date of renewal of the TM registration

Effect of non-compliance – the application will be deemed abandoned or the registration

cancelled.

• Rights conferred – The owner of a registered mark shall have the exclusive right to prevent
all 3rd parties not having the owner’s consent from using in the course of trade identical or
similar signs or containers for:
1) Goods or services which are identical or similar to those in respect of which the TM is
registered where such use would result in a likelihood of confusion. (s147.1)
2) Goods and services which are dissimilar to those in respect of which the mark is registered
where: (Theory of dilution)
a) The mark is well-known;
b) The use of the infringing mark would indicate a connection between the goods or
services of the 3rd party and the true owner of the registered mark;
c) The interests of the owner of the registered mark are likely to be damaged by such
use. (s147.2)

Not included in the rights – Registration of the mark shall not confer on the registered owner
the right to preclude 3rd parties from using bona fide their names, addresses, pseudonyms, a
geographical name, or exact indications concerning the kind, quality, quantity, destination,
value, place of origin, or time of production or of supply, of their goods or services: Provided,
That such use is confined to the purposes of mere identification or information and cannot
mislead the public as to the source of the goods or services.

• Assignment and transfer of registration of marks shall be recorded at the Office on payment
of the prescribed fee; assignment and transfers of applications for registration shall, on
payment of the same fee, be provisionally recorded, and the mark, when registered, shall be in
the name of the assignee or transferee. It shall have no effect against 3 rd parties until they are
recorded at the Office.

• Cancellation of registration – a petition to cancel a registration of a mark under this act may
be filed with the Bureau of Legal affairs by any person who believes that he is or will be
damaged by the registration of a mark.

GR: Within 5 years from the date of the registration of the mark

XPNs:
1) At any time, if the registered owner of the mark without legitimate reason fails to use the
mark with the PH, or to cause it to be used in the PH by virtue of a license during an
uninterrupted period of 3 years or longer.
 2) At any time, if the registered mark becomes the generic name for the goods or services, or
a portion thereof, for which it is registered, or has been abandoned, or its registration was
obtained fraudulently or contrary to the provisions of this Act, or if the registered mark is
being used by, or with the permission of, the registrant so as to misrepresent the source of
the goods or services on or in connection with which the mark is used.
3) In any action to enforce the rights to a registered mark – The court or the administrative
agency vested with jurisdiction to hear and adjudicate any action to enforce the right to a
registered mark shall likewise exercise jurisdiction to determine whether the registration
of said mark may be cancelled (s151.2)

• Tests to determine infringement

1) Dominancy test - focuses on the similarity of the prevalent or dominant features of the
competing TM which might cause confusion or deception, and thus infringement.
2) Holistic test – requires that the entirety of the marks in question be considered in resolving
confusing similarity.

Two types of confusion:

1) Confusion of goods (Product Confusion) – the ordinarily prudent purchaser would be
induced to purchase one product in the belief that he was purchasing the other.
2) Confusion of origin/business (Source of Origin Confusion) – the goods of the parties are
different, the defendant’s product is such as might reasonably be assumed to originate with
the plaintiff, and the public would then be deceived either into that belief or into the belief
that there is some connection between the plaintiff and defendant which, in fact, does not.

• Remedies for trademark owner

1) Recover damages from any person who infringes his rights and the measure of the damages
shall be either (a) the reasonable profit which the complaining party would have made, had
the defendant not infringed his rights, or (b) the profit which the defendant actually made
out of the infringement. If such measure of damages cannot ascertained, then the court may
award as damages a reasonable percentage based upon the amount of gross sales of the
defendant or the value of the services in connection with which the TM/TN was used in
the infringement of the rights of the complaining party. (s156.1)
In cases where actual intent to mislead the public or to defraud the complainant is shown,
in the discretion of the court, the damages may be doubled. (s156.3)
2) Seek injunction
3) Seek the destruction of infringing materials without compensation of any sort or disposed
outside of commerce in such a manner as to avoid any harm, cause to the right holder.

• Unfair competition – when any person employs deception or any other means contrary to GF
by which he shall pass off the goods manufactured by him or in which he deals, or his business
or services for those of the one having establish such goodwill, or who shall commit any acts
calculated to produce said result. (s168.2)

Essential elements of unfair competition with respect to goods:

1) confusing similarity in the general appearance of the goods, and
2) fraud or intent to deceive the public and defraud a competitor

A person is deemed guilty of:

1) Unfair competition in goods when:
a) The offender sells his goods and gives them the general appearance of goods of
another manufacturer/dealer, whether as to the goods themselves, their packaging
and devices or words thereon, or in any other feature of their appearance; and
b) The acts described would be likely to influence purchasers to believe that the goods
offered are those of a manufacturer/dealer, or his legitimate trade, or any
subsequent vendor of such goods.
2) Unfair competition in services when by any artifice, or device, or employs any other means
calculated to induce the false belief deceive the public and defraud of another of that such
 person is offering the services of another who has identified such services in the mind of
the public; or
3) Unfair competition by disparaging another’s product or service when he makes any
false statement in the course of trade or who shall commit any other act contrary to GF of
a nature calculated to discredit the goods, business or services of another. (s168.3)

Trademark infringement Unfair competition

As to definition Unauthorized use of a TM Passing off of one’s goods for the
goods of another
As to scope TM is a form of unfair Unfair competition is broader than
competition. TM infringement TM infringement and includes
when there is not merely passing off goods with or without
likelihood of confusion, but also TM infringement.
actual or probable deception on
the public because of the general
appearance of the goods.
As to the Fraudulent intent is not necessary Fraudulent intent is necessary
requirement of
fraudulent intent
As to the Prior registration of the TM is a Registration of the TM is not
requirement for prerequisite for the action necessary to bring an action for
registration unfair competition

E.3. COPYRIGHT

• Copyright – the right over literary and artistic works which are original intellectual creations
in the literary and artistic domain protected from the moment of creation.

Author – the natural person who has created the work.

Collective work – a work which has been created by 2 or more natural persons at the initiative
and under the direction of another with the understanding that it will be disclosed by the latter
under his own name and that contributing natural persons will not be identified.

Communication to the public – any communication to the public, including broadcasting,

rebroadcasting, retransmitting by cable, broadcasting and retransmitting by satellite, and
includes the making of a work available to the public by wire or wireless means in such a way
that members of the public may access these works from a place and time individually chosen
by them.

Public lending – the transfer of possession of the original or a copy of a work or sound
recording for a limited period, for non-profit purposes, by an institution the services of which
are available to the public, such as public literary or archive.

Published works – works, which, with the consent of the authors, are made available to the
public by wire or wireless means in such a way that members of the public may access these
works from a place and time individually chosen by them: Provided, That availability of such
copies has been such, as to satisfy the reasonable requirements of the public, having regard to
the nature of the work.

• Copyrightable works: (1) Original works and (2) Derivative works

Original works – original intellectual creations in the literary and artistic domain protected
from the moment of their creation.
1) Books, pamphlets, articles and other writings;
2) Periodicals and newspapers;
3) Lectures, sermons, addresses, dissertations prepared for oral delivery, w/n in writing or
other material form;
 4) Letters, including e-messages and SMS text messages;
5) Dramatic, or dramatico-musical compositions; choreographic works or entertainment in
dumb shows;
6) Musical composition, with or without words;
7) Works of drawing, painting, architecture, sculpture, engraving, lithography or other works
of art;
8) Original ornamental designs or models for articles of manufacture, w/n registrable as an
industrial design, and other works of applied art;
9) Illustrations, maps, plan, sketches, charts and 3-D works relative to geography,
topography, architecture or science;
10) Drawings of plastic works of a scientific or technical character;
11) Photographic works including works produced by a process analogous to photography;
lantern slides;
12) Audio visual works and cinematographic works and works produced by a process
analogous to cinematography or any process for making audio-visual recordings;
13) Pictorial illustrations and advertisements;
14) Computer programs; and
15) Other literary, scholarly, scientific and artistic works. (s172.1)

Derivative works
1) Dramatizations, translations, adaptations, abridgements, arrangements, and other
alterations of literary or artistic works; and
2) Collection of literary, scholarly or artistic works, and compilations of data and other
materials which are original by reason of the selection or coordination or arrangement of
their contents. (s173.1)

The works referred to in S173.1 shall be protected as new works: Provided, however, That
such new work shall not affect the force of any subsisting CR upon the original works
employed or any part thereof, or be construed to imply any right to such use of the original
works, or to secure or extend CR in such original works.

The author of speeches, lectures, sermons, addresses, and dissertations shall have the exclusive
right of making a collection of his work. (s176.2)

• Non-copyrightable works
1) Any idea, procedure, system, method or operation, concept, principle, discovery of 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.
3) Any official text of a legislative, administrative or legal nature, as well as any official
translation thereof.
4) Any work of the government of the PH – a work created by an officer or Ee of the PH
Government or any of its subdivisions and instrumentalities, including GOCCs as part of
his regularly prescribed official duties.
5) TN and container of a medicated cream is the proper subject of TM.
6) CR gives no exclusive right to the art disclosed (unlike patents), but only to the expression.
(s176)

Prior approval of the govt agency or wherein the work is created shall be necessary for
exploitation of such work for profit. Such agency or office may impose as a condition the
payment of royalties.

No prior approval or conditions shall be required for the use of any purpose of statutes, rules
and regulations, and speeches, lectures, sermons, addresses, and dissertations, pronounced,
read or rendered in courts of justice, before administrative agencies, in deliberative assemblies
and in meetings of public character.
 The publication or republication by the government in a public doc of any work in which CR
is subsisting should not be taken to cause any abridgement or annulment of the CR or to
authorize any use or appropriation of such work without the consent of the CR owner.

• Rights of a copyright owner:

1) Copyright or economic rights (s177)
2) Moral rights (s193)
3) Right to participate in the gross proceeds of the sale or lease of the original work (s200)

• Author’s rights
1) Economic rights – consist of the exclusive right to carry out, authorize, or prevent the
following acts:
a) Reproduction of the work or substantial portion of the work;
b) Dramatization, translation, adaptation, abridgement, or other transformation of the
work;
c) First public distribution of the original and each copy of the work;
d) Rental of the original or a copy of an audio-visual or cinematographic work;
e) Public display of the original or a copy of the work;
f) Public performance of the work; and
g) Other communication to the public of the work. (s177)
2) Moral rights
a) Require that the authorship of the works be attributed to him, in a prominent way
on the copies, and with the public use of the work;
b) Make any alterations of his work prior to, or to withhold it from publication;
c) Object to any distortion, mutilation or other modification of or other derogatory
action in relation to, his work which would be prejudicial to his honor or reputation;
and
d) Restrain the use of his name with respect to any work not of his own creation or in
a distorted version of his work. (s193)

Waiver of moral rights – Author may waive his rights by a written instrument, but no such
waiver shall be valid where its effects is to permit another:
1) To use the name of the author, or the title of his work, or otherwise to make use of his
reputation with respect to any version or adaptation of his work which, because of
alterations therein, would substantially to injure the literary or artistic reputation of
another author; or
2) To use the name of the author with respect to a work he did not create.

Term – shall last during the lifetime of the author and for 50 years after his death and shall
not be assignable or subject to license. (s198.1)

Rights to proceeds in subsequent transfers – In every sale of an original work or manuscript,

subsequent to the first disposition thereof by the author, the author or his heirs shall have an
alienable right to participate in the gross proceeds of the sale or lease to the extent of 5%. This
right shall exist during the term of moral rights.

This shall not apply to prints, etchings, engravings, works of applied art or works of similar
kind wherein the author primarily derives gain from the proceeds of reproductions.

• Publisher’s rights
1) Right to publish granted by the author, his heirs or assigns;
2) Publisher shall have a CR consisting merely of the right of reproduction of the
typographical arrangement of the published edition of the work;
3) If submitted to newspaper, magazine and the like, the right to publish once materials sent
by a writer, a photographer, an artist to a periodical or newspaper publisher, but such writer
or artist retains his CR on the piece.
 Reproduction – the making of 1 or more copies of a work or a sound recording in any manner
or form.

• Performer’s rights
1) Right of authorizing the broadcasting and other communication to the public of their
performance and the fixation of their unfixed performance;
2) … the direct or indirect reproduction of their performances fixed in sound recordings or
audio-visual works or fixations in any manner or form;
3) … the first public distribution of the original and copies of their performance fixed in sound
recordings or audio visual works or fixations through sale or rental of other forms of
transfer of ownership;
4) … the commercial rental to the public of the original and copies of their performances fixed
in sound recordings or audio-visual works of fixations, even after distribution of them by,
or pursuant to authorization by the performer;
5) … the making available to the public of their performances fixed in sound recordings or
audio-visual works or fixations, by wire or wireless means, in such a way that members of
the public may access them from a place and time individually chosen by them; (s203.2-
203.5)
6) The right to claim to be identified as the performer of his performances. (moral right) XPN:
Where the omission is dictated by the manner of the use of the performance, and to object
to any distortion, mutilation or other modification of his performances that would be
prejudicial to his reputation.

Unless otherwise provided in the contract, in every communication to the public or

broadcast of a performance subsequent to the first broadcast, the performer shall be entitled
to an additional remuneration equivalent to at least 5% of the original compensation he
received for the first communication of broadcast.

Term - shall be maintained and exercised 50 years after his death, by his heirs, and in
default of heirs, the government, where protection is claimed. (s204.2)

• Rights of producers of sound recordings.

1) Right to authorize the direct/indirect reproduction of their sound recordings, in any manner
of form, the placing of these reproductions in the market and the right of rental or lending;
2) … the first public distribution of the original and copies of their sound recordings through
sale or rental or other forms of transferring ownership;
3) … the commercial rental to the public of the original and copies of their sound recordings
even after distribution by them by or pursuant to authorization by the producer;
4) … the making available to the public of their sound recordings in such a way that members
of the public may access the sound recording from a place and at a time individually chosen
or selected by them, as well as other transmissions of a sound recording with like effect.
(s208)

• Rights of broadcasting organizations

1) Rebroadcasting of their broadcasts;
2) Recording in any manner, including the making of films or use of video tape, of their
broadcasts for the purpose of communication to the public of television broadcasts of the
same; and
3) Use of such records or fresh transmissions or for fresh recording. (s211)

• Ownership of copyright:

Work Owner
Original – one creator/sole Creator/author, his heirs or assigns
author
Joint creation/authorship co-authors. In the absence of agreement, their rights shall be
governed by the rules on co-ownership. XPN: Work of joint
authorship consists of parts that can be used separately and
 the author or each part can be identified, the author of each
part shall be the original owner of the CR in the part that he
has created. (s178.2)
During employment 1) Ee – if the creation of object of CR is not a part of his
regular duties even if the Ee uses the time, facilities, and
materials of the Er
2) Er – if the work is the result of the performance of his
regularly-assigned duties, unless there is an agreement,
express or implied, to the contrary.
Commissioned work 1) Ownership of the work itself – the person commissioning
2) Ownership of CR – the creator, unless there is a written
stipulation to the contrary. (s178.4)

Audio-visual work producer, author of the scenario, composer, film director,

photographic director, and author of the work. (Note: Subject
to contrary, the producers shall exercise the CR to an extent
required for the exhibition of the work in any manner, except
for the right to collect performing license fees for the
performance of musical composition, with or without words,
which are incorporated into the work.)
Letters and other private Writer
communication in writing 1) the person to whom they are addressed and delivered, but
they cannot publish or disseminated without the consent
of the writer or his heirs.
2) The Court may authorize their publication or
dissemination if the public good or the interest of justice
so requires. (A723, NCC)
Anonymous and the publisher are deemed representatives of the author, unless:
pseudonyms works 1) the contrary appears; or
2) pseudonyms or adopted name leaves no doubt as to the
author’s identity; or author discloses his identity. (s179)
Collective works to the person under whose name it is disclosed. (s171.2)
Contributor is deemed to have waived his right, unless he
expressly reserves it. (s196)

• Calculation of term – 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
1st day of January of the year following the event which gave rise to them.

• Transfer and assignment of copyright – CR may be assigned in whole or in part inter vivos
only if there is a written indication of such intention.

The submission of a literary, photographic or artistic work to a newspaper, magazine or

periodical for publication shall constitute only a license to make a single publication unless a
greater right is expressly granted.

Rights of assignee – within the scope of the assignment or license, the assignee or licensee is
entitled to all the rights and remedies which the assignor or licensor had with respect to the
CR.

Rights of owner to accounting – CR owner has the right to regular statement of accounts
from the assignee or the licensee with regard to assigned or licensed work.

Co-owned work – if 2 or more persons jointly own a CR or any part thereof, neither of the
owners shall be entitled to grant licenses without the prior consent of the other owner/s.

Copyright and the material object – CR is distinct from the property in the material object
subject to it. Transfer of assignment or licensing of the CR shall not itself constitute a transfer
of the material object. Nor shall a transfer or assignment of the sole copy or of one or several
copies of the work imply transfer assignment of licensing of the CR.
 Designation of society – owners of CR and related rights or their heirs may designate a society
of artists, writer, composers and other right-holders to collectively manage their economic or
moral rights on their behalf. For the said societies to enforce the rights on their members, they
shall be first secure the necessary accreditation from the IPO.

• Limitations on copyright – Acts that do not infringe copyright:

1) Recitation or performance of a work made accessible to the public, privately done, free of
charge, strictly for a charitable or religious institution;
2) Making of quotations from a published work: (a) compatible with fair use, (b) extent is
justified by the purpose, (c) source and name of the author, appearing on work must be
mentioned;
3) Reproduction or communication to the public by mass media of articles on current
political, social, economic, scientific, or religious topic, lectures, addresses and other
works of the same nature, delivered in public for information purposes, not expressly
reserved, and source is already indicated;
4) Reproduction and communication to the public of literary, scientific of artistic works as
part of reports of current events by means of photography, cinematography or broadcasting
to the extent necessary for the purpose;
5) Inclusion of work in a publication, broadcast, or other communication to the public, sound
recording or film if made by way of illustration for teaching purposes compatible with fair
use and the source and name of the author, appearing on work, must be mentioned;
6) Recording made in schools, universities, or educational institutions of a work included in
a broadcast for the use of such schools, universities or educational institutions. Such
recording must be deleted within a reasonable period, and may not be made from audio-
visual works which are part of the general cinema repertoire of feature films except for
brief excerpts of the work;
7) Making of ephermal recordings by a broadcasting org, by means of its own facilities for
use in its own broadcast;
8) Use made of a work by or under the direction or control of the Govt, by the National
Library or by educational, scientific or professional institutions, for public interest
compatible with fair use;
9) Public performance or the communication to the public of a work in a place where no
admission fee is charged by a club on institution for charitable or educational and
the aim is not profit-making;
10) Public display of the original or a copy of the work not made by means of a film, slide,
television image or otherwise on screen or by means of any other device or process either
the work has been published, sold, given away, or transferred to another person by the
author or his successors in title;
11) Any use made of work for the purpose of any judicial proceedings; or for the giving of
professional advice by a legal practitioner;
12) Single copy reproduction of a published work by natural person exclusively for research
and private study (even without authorization of owner). (s187.1) XPNs:
a) A work of architecture in the form of building or other construction;
b) An entire book, or a substantial part thereof, or of a musical work in graphic form
by reprographic means;
c) A compilation of data and other materials;
d) A computer program except as provided in S189; and
e) Any work in cases where reproduction would unreasonably conflict with a
normal exploitation of the work or would otherwise unreasonably prejudice the
legitimate interests of the author. (s187.2)
13) Reproduction by non-profit libraries of fragile works, isolated articles in composite works,
brief portions of public work, to preserve or replace copy that is lost, destroyed or rendered
non-usable;
14) One back-up copy or adaptation by lawful owner of computer program. Such is necessary
for:
a) Use of computer program in conjunction with a computer for the purpose, and to
the extent, for which the computer program has been obtained; and
 b) Archival purposes, and, for the replacement of the lawfully owned copy of the
computer program in the event that the lawfully obtained copy of the computer
program is lost, destroyed or rendered unusable.
15) Reproduction or distribution of published articles or materials in a specialized format
exclusively use of the blind, visually and reading impaired persons. Such copies and
distribution shall be made on a non-profit basis and shall indicate the CR owner and the
date of the original production. (s184.1)

Work of architecture – CR in a work architecture shall include the right to control the
erection of any building which reproduces the whole or a substantial part of the work either in
its original form or in any form recognizably derived from the original; Provided, That the CR
in any such work shall not include the right to control the reconstruction or rehabilitation in
the same style as the original of a building to which the CR relates.

• Fair use doctrine – a privilege to use the copyrighted material in a reasonable manner without
the consent of the CR owner or as copying the theme or ideas rather than their expression.

Fair use of a copyrighted work for criticism, comment, news reporting, teaching, including
multiple copies for classroom use, scholarship, research and similar purposes is not an
infringement of CR. (s185)

Factors to determine whether the use is fair or not:

1) Purpose and the character of the use;
2) Nature of the copyrighted work;
3) Amount and substantially of the portions used; and
4) Effect of the use upon the potential market of the copyrighted work. (s185.1)

• Copyright infringement – a trespass on a private domain owned and occupied by the owner
of the CR, and, therefore, protected by law, and infringement of CR, or piracy, which is a
synonymous term in this connection, consists in the doing by any person, without the consent
of the owner of the CR, of anything the sole right to do which is conferred by statute on the
owner of the CR.

A person infringes a right protected when one:

1) Directly commits an infringement;
2) Benefits from the infringing activity of another person who commits an infringement if the
person benefiting has been given notice of the infringing activity and has the right and
ability to control the activities of the other person;
3) With knowledge of infringing activity, induces, cause or materially contributes to the
infringing conduct of another. (s216)