PART II

INTELLECTUAL PROPERTY CODE (R.A. No. 8293)

I. STATE POLICIES

a. The State recognizes that an effective intellectual and industrial property

system is: (1) vital to the development of domestic and creative activity; (2)
facilitates transfers of technology; (3) attracts foreign investments: and (4)
insures market access for our products (Sec. 2, Intellectual Property
Code, IPC for short).

b. The State likewise recognizes that the use of intellectual property bears
social function.

c. It is also a State policy to streamline administrations of administrative

procedures concerning intellectual property, liberalize registration of
transfer of technology. and enhance the enforcement of intellectual
property rights.

d. Protection of intellectual property is likewise mandated by the

Constitution. Section 13 of Article XIV of the Constitution provides that
the: "State shall protect and secure the exclusive rights of scientists,
investors, artists, and other gifted citizens to their intellectual property
and creations, particularly when beneficial to the people, for such period
as may be provided for by law."

e. Treaties are part of our laws; hence various provisions of treaties are
incorporated in the IPC. For instance, the enactment of the IPC is partly
the result of the mandate of the Agreement Establishing the World Trade
Organization and the WTO’s Agreement on Trade Related Aspects of
Intellectual Property Rights or TRIPS (MIRPURI vs. CA)

II. THE TERM “INTELLECTUAL PROPERTY” CONSISTS OF (Sec.4.1, IPC):

a. Copyright and related rights;

b. Trademarks and Service Marks;
c. Patents;
d. Geographic Indications;
e. Layout Designs of Integrated Circuits;
f. Protection of Undisclosed Information; and
g. Industrial Designs.

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III. COPYRIGHT

It is the right over literary and artistic works which are original
intellectual creations in the literary and artistic domain protected from the
moment of creation (Kho v. CA, supra).

a. When rights over copyrights are conferred

Rights over copyrights are conferred from the moment of creation

(Sec. 172.1, IPC). The work is deemed created if something original is
expressed in a fixed manner. Hence, need not be registered before an
infringement suit may be filed by the owner.

b. Who owns the Copyright?

1. One creator — creator, his heirs or assigns owns the copyright.

2. Joint Creation — co-authors shall be the original owners of the

copyright and in the absence of agreement, their rights shall be
governed by the rules on co-ownership.

Exception: Work of joint authorship consists of parts that can be used

separately and the author of each part can be identified, the author of
each part shall be the original owner of the copyright in the part that
he has created.

3. Commissioned work — the person commissioning owns the work;

ownership of copyright remains with the creator, unless there is a
written stipulation to the contrary.

4. Audio-visual work — producer for purposes of exhibition; for all other

purposes, the producer, the author of the scenario, the composer, the
film director, the photographic director and the author of the work are
owners.

5. Pseudonymous and anonymous works — unless the author is

undisputably known, the publisher shall be presumed to be the
representative of the author (Secs. 178 179, IPC).

6. Employee’s work during the course of employment – the employer,

if the result of regular functions or duties but the employee owns it if it
is not part of his duties.

c. COPYRIGHTABLE OBJECTS

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 Literary and Artistic Works:
1. Books, pamphlets, articles and other writings;
2. Periodicals and newspapers;
3. Lectures, sermons, addresses, dissertations prepared for oral delivery,
whether or not reduced in writing or other material form;
4. Letters;
5. Dramatic or dramatico-musical compositions; choreographic works or
entertainment in dumb 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 oi manufacture,
whether or not registrable as an industrial design, and other works of
applied art;
9. Illustrations, maps, plans, sketches, charts and three (3) 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 works produced by
a process analogous to cinematography or any process for making
audiovisual recordings;
13. Pictorial illustrations and advertisements;
14. Computer programs; and
15. Other literary, scholarly, scientific and artistic works (Sec. 172, IPC).

Example: Darna and Ibarra are famous personalities in show-business who kept
their love affair secret. They use a special instant messaging service which allows
them to see one another’s typing on their own screen as each letter key is
pressed. When Marites, the controller of the service facility, found out of their
identities, he kept a copy of all the messages Darna and Ibarra sent each other
and published them. Here, Marites is liable for copyright infringement. Letters
are protected works under Section 172 of the IPC. Hence, the publication of the
letters is an infringement on the right of Darna and Ibarra. The law does not
distinguish if the letters are handwritten or in electronic form. Thus, the
messages are protected works under the Intellectual Property Code.

d. UNPROTECTED 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 (Sec. 175, IPC; Art. 10(1), TRIPS).
Thus, the format of a television game Show is not subject to a copyright
(Joaquin v. Drilon, G.R. No. 108946, January 28, 1999).

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 2. News Of the day and other miscellaneous facts having the character of
mere items of press information (Sec. 175, IPC).
2.1 No protection is given to "news of the day and other
miscellaneous facts having the character of mere items of press
information" (Sec. 175, IPC). Example: The writings of a columnist
in a newspaper is subject to copyright but if he mentions a news
item like bomb explosion in a certain place, he cannot claim
protection regarding this news item.
3. Any official text of a legislative, administrative, or legal nature, as well
as any official translation thereof (Sec. 175, IPC).
4. Any work of the Government of the Philippines.
5. Copyright gives no exclusive right to the art disclosed (unlike patents),
but only to the expression. Copyright registration over a drawing or
pictorial illustration which depicts light boxes or box-type electrical
devices protects the drawing but not the light box depicted therein
(Pearl and Dean vs Shoemart). Copyright over an illustration of a
hatch door does not protect the hatch door itself in copyright (Olano
vs. Co.)

e. ACTS THAT DO NOT INFRINGE COPYRIGHT

1. Recitation or performance of a work: (i) made accessible to the public,

(ii) privately done, (iii) free of charge, (iv) strictly for a charitable or
religious institution;
2. Making Of quotations from a published work: (i) compatible with fair
use, (ii) extent is justified by the purpose, (iii) 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, delivered in public:(i) for
information purposes, (ii) not expressly reserved, and (iii) source is
already indicated;
4. Reproduction and communication to the public of literary, scientific or
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 a 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; such recording 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;
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 7. Making of ephemeral recordings: (i) by a broadcasting organization, (ii)
by means of its own facilities, (iii) for use in its own broadcast;
8. Use made of a work by or under the direction or control of the
Government (Government, National Library, 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 purpose only and the aim is not profit-
making;
10. Public display of the original o r 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 a work for the purpose or 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);
13. Reproduction by non-profit libraries of: (i) fragile works, (ii) isolated
articles in composite works, (iii) brief portions of published work, (iv) to
preserve or replace copy that is lost, destroyed or rendered non-usable;
14. One back-up copy of computer program.

f. FAIR USE

Is the privilege to use the copyrighted material in a reasonable manner

without the consent of the copyright owner or as copying the scheme or
ideas rather than their expression (ABS CBN Corp. vs. Gozon). 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 Copyright (Sect. 185, IPC)

IV. TRADEMARKS

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 (Kho v. CA, supra). Thus,
the basic requirements are:

1. There must be a visible sign. Example: it cannot be a sound of a musical

instrument or a scent of a perfume. It can be words, acronyms, logos,
slogans, designs, figures, pictographs, or portraits.

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 2. It must be capable of distinguishing the goods of an enterprise.
(Distinctiveness)

a. FUNCTIONS

1. To indicate the origin of the goods to which they are attached;

2. To guarantee the standard of quality of the goods; and
3. To advertise the goods (Mirpuri vs. CA).

b. HOW MARKS ARE ACQUIRED

The rights in a mark shall be acquired through registration with the

Intellectual Property Office. Hence, registration is necessary before one can
file an action for infringement.

c. MARKS THAT CANNOT BE REGISTERED

1. 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 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 by written consent of the widow;
4. Identical with a (registered 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. Generic terms for goods or services;
6. Descriptive marks including characteristics of goods like quality or
quantity;
7. Customary sign in everyday language;
8. Color by itself; and
9. Shapes.

d. PROTECTION OF TRADE NAME

A trade name need not be registered with the IPO before an infringement
suit may be filed by its owner against the owner of an infringing trademark
(Sec. 165.2, IPL). Example, the trademark "San Francisco Coffee" is an
infringement of the trade name "San Francisco Coffee & Roastery, Inc."
even if the said trade name is not registered with the IPO (Coffee Partners,

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 Inc. v. San Francisco Coffee and Roastery, Inc., G.R. No. 169504,
March 3, 2010).

e. INFRINGEMENT

It is the unauthorized use of a registered trademark (tradename need

not be registered. It is infringed when it is reproduced, counterfeited,
copied, or colorably imitated by the infringer which tends to cause
confusion or mistake or to deceive purchasers or others as to the goods or
services themselves or as to the source or origin of such goods or services
or the identity of such business.

f. DOMINANCY TEST

It focuses on the similarity of the prevalent features of the competing

trademarks which might cause confusion or deception, and thus
infringement.

Example: “McJoy” and “Big Mack” infringe the trademark of Mcdonald’s

and the latter’s dominant feature is “Mc” or “Mac” (McDonald’s Corp. vs.
L.C. Big Mak Burger (2004)); the dominant feature of the mark “Papa
Ketsarap” is “Papa,’’ hence, “Papa Boy” for other sauces cannot be
registered (UFC Phils. Vs. Barrio Fiesta, Mfg. (2016))

g. USE OF IDENTICAL MARKS NOT NECESSARILY PROHIBITED

The use of identical marks does not, by itself, lead to a legal conclusion
that there is trademark infringement if they are not used for identical, or
similar or related goods.

Example: Registration of the trademark “SHELL” for cigarettes was

allowed although there is prior registrant for gasoline and petroleum
products (Shell Company of the Philippines vs. CA)

V. PATENT

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 (Kho v. CA)

a. PURPOSES OF PATENT LAW

The patent law has a three-fold purpose: first, patent law seeks to foster
and reward invention; second, it promotes disclosures of inventions to stimulate
further innovation and to permit the public to practice the invention once the
patent expires; third, the stringent requirements for patent protection seek to
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ensure that ideas in the public domain remain there for the free use of the public
(Pearl and Dean Phi;. V. Shoemart, Inc., et al.)

Note: An exclusive enjoyment (monopoly) is guaranteed to the inventor for 20

years, but upon the expiration of that period, the knowledge of the invention
inures to the people who are thus enabled to practice it and profit by its use.

b. CLASSES OF PATENTABLE INVENTION

1. Useful Machine;
2. A product;
3. Process;
4. Improvement of (1), (2), or (3);
5. Microorganism; and
6. Non-biological and microbiological process (Rule 201, Rules and
Regulations on Inventions).

c. NON-PATENTABLE INVENTIONS

1. Discoveries, scientific theories, and mathematical method;

2. Schemes, rules, and methods 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; and
6. Anything which s contrary to public order or morality;

d. PERSON ENTITLED TO THE INVENTION

The right to a patent belongs to the inventor, his heirs or assigns. When
two or more persons have jointly made an invention, the right to a patent
shall belong to them jointly. Note: the inventor should apply for and be
issued a patent to be protected.

e. INFRINGEMENT

Infringement is the making, using, offering for sale, selling or importing

a patented product or a product obtained directly or indirectly from a
patented process, or the use of a patented process without authorization
of the patentee (Sec. 76.1, IPC)

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