Intellectual Property and

Intellectual Property Rights (IPR)

Cedrik Ben A Gayares
 Outline
• IP and IPR, defined
• Protected IP and IPR
• IP Protection and Software
 Intellectual Property Laws
• RA No. 8439, aka the Magna Carta for Scientists,
Engineers, Researchers and S&T Personnel
• Republic Act (RA) No. 8293, aka Intellectual
Property Code of the Philippines
• RA No. 10055, aka the Technology Transfer Act
of 2009
 Republic Act No. 8293
Intellectual Property Code of the Philippines
• The IP Code took effect on January 1,1998.
• It codified all prior laws on intellectual property rights.
• It created the Intellectual Property Office of the Philippines
(IPOPHL), with mandate to administer and implement State
policies on IP.
• IPOPHL is the sole and exclusive government agency tasked
to examine applications for grant of letters patent and the
registration of marks, utility models, industrial designs,
integrated circuits, geographical indications, and copyright
licenses.
• IPOPHL adjudicates contested IPR cases
 Definitions of IP and IPR
• Intellectual Property (IP)
– Anything created by or any product of the human
mind and intellect that is fixed in tangible form
and thus, capable of expression, communication,
application, reproduction and distribution
• Intellectual Property Rights (IPR)
– Rights attached to IP; metes and bounds of
ownership and other legal rights on IP
Main Features of Intellectual Property
Rights
• They provide owners “Negative Rights” which exclude others
from selling, making, copying, using etc. the IP without
permission
• Is set only specific countries/territories where it is registered
• Protection is time-bound. After a certain duration the IPR
becomes public domain or freely usable by the public
• Is a property just like real estate etc. which means that they
can be licensed out, sold, assigned to other people, passed to
heirs, etc.
 Copyright
• Right that is granted to an author or creator of
original and derivative works of literary,
scholarly, scientific, or artistic nature.
• This right attaches at the moment of the
work’s creation so long as such work is in a
tangible or material form.
• Author or creator is the copyright owner
 Copyrightable Creative Works
(Sec. 172 and 202, IP Code)
Books, pamphlets, articles, other Musical compositions, with or Photographic works
writings without words
Periodicals , newspapers Drawings, painting, architecture, Drawings or plastic works of S&T
sculpture, engraving, lithography character
or other works of art

Lectures, sermons, addresses, Works of applied art- ornamental AV & cinematographic works,
thesis, dissertation, course designs, models for articles of films, sound recordings
materials manufacture

Dramatic or dramatico-musical Illustrations, maps, plans, sketches, Performing arts, sound recordings
compositions, choreographic charts and 3D works and broadcasting
works
Letters Pictorial illustrations and Computer programs
advertisements
 Bundle of Rights
1. Economic Rights
2. Moral Rights
3. Other related rights
 ECONOMIC RIGHTS
(Sec. 177, IPC)

• Reproduction

• Dramatization, translation, adaptation, abridgment

• First Public Distribution

• Public display/ performance, other communication

• Rental

• Licensing, Assignment, Sale, Transfer

 MORAL RIGHTS
(Sec. 193-199, IPC)
• Attribution of authorship
• Integrity of the works
(non-alterations, distortions,
mutilations, non-modifications,
other derogatory action to works)

Note: Unlike economic rights, moral rights are not subject

to assignment or licensing
Periods of Copyright Protection
TYPE YEARS
Broadcasts 20
Applied Art 25
Photographic works 50
Audio Visual works & Recordings 50
Published Works Author’s lifetime + 50
Trademark or Service mark, defined
• A DISTINCTIVE and VISIBLE sign, symbol, emblem,
or device used by the enterprise to differentiate its
goods or products (trademark) or services (service
mark) and shall include a stamped or marked
container of goods.
 Rights of a Trademark Owner
(Sec. 147, IPC)

• To prevent all third parties not having the owner’s consent

from using in the course of business identical or similar
signs or containers for goods or services where such use
would result in a likelihood of confusion.
• Additional right for owners of well-known marks:
Prevention extends to all kinds of goods and services that
will indicate a connection with the registered mark
 Characteristics of Trademarks
• A badge of origin and authenticity and a resource in corporate
branding
• Certificate of TM registration is valid for 10 years, and can be
renewed for periods of 10 years
• Well-known or internationally known marks cannot be
registered by non-owner; neither will an identical, confusingly
similar mark, including translations/ derivatives
• Madrid Protocol allows filing of international TM application
 Patents and other Industrial Property
Rights
1. Invention patents
2. Utility Models or petty patents
3. Topographies or designs of integrated circuits
4. Industrial Designs
5. Trade Secrets/ Proprietary Info/ know-how
6. Plant Variety Protection
 Characteristics of a Patent
• Patents protects an Invention, which is any technical solution
of a problem in any field of human activity
• Issued by the government to provide 20 years monopoly on
the negative rights associated with the Invention
• There are no International Patents but there’s a Patent
Cooperation Treaty (PCT) application which gives more time
for inventors to file in multiple countries.
 Characteristics of a Patent
• To be applicable for patent protection, an
Invention must be:
– New: It must have “novelty” which means it must
not be part of common knowledge or prior art
and must not have no prior use
– Non-obvious: There must be an inventive step
which will be gauged by the Patent Office’s Patent
Examiner
– Industrially Applicable: Must be useful and have
Invention patents
 Utility model
• Utility Model is a “petty” patent for new and
industrially applicable technical solution of a
problem.

• Utility models needs to be novel and industrially

applicable but doesn’t need to have an inventive
step.
 Industrial Design
• Combination of lines,
colors, 3D form, surface
ornamentation

• Protects the new

ornamental appearance
of an article of
manufacture.
 Industrial Design
• Industrial Design (ID) are registered at IPOPHL

• Certificate of registration is valid for five years,

renewable for 2 consecutive periods of 5 years each
or total of 15 years

• Application for registration must be filed within 2

years from its first commercial exploitation
 Layout Design of Integrated Circuit
• Layout design of integrated
circuits is an original
topography (picture of a
surface) of elements, at least
one of which is an active
element, and of some or all
interconnections of an
integrated circuit, or such
three-dimensional disposition
prepared for an integrated
circuit intended for
 Geographical Indication
■ Geographical indications are
indications which identify
goods as originating in the
territory of a country, or a
region or locality in the
territory, where a given quality,
reputation or other
characteristics of the goods are
essentially attributed to its
geographical origin.
Trade Secret / Know-how/ Protection of
Undisclosed Information
Any plan, process, method, tool, formula, mechanism,
compound or confidential business information known only to its
owner and employees which provides an enterprise a
competitive edge and thus, there is need to prevent the
information from being disclosed to, acquired by, or used by
others without their consent in a manner contrary to honest
commercial practices so long as such information:
– is secret
– has commercial value
– has been subject to reasonable steps to keep it secret
Some Trade Secrets
 New Plant Varieties Protection
(Republic Act No. 9168)

• Protect new plant variety

which is new, distinct,
uniform and stable
• Protection
– 25 years from date of grant
of Certificate (trees and
vines)
– 20 years from date of grant
(other plants)
IP Protection for Software
IP Protection that is Best Suited for
Software
● Copyright
● Patents
● Trade Secret
 Copyright
• Pros
– cheap registration
(~600 PhP)
– Protects the expression
of creativity the creator
• the program itself
• graphics related to the
program etc
• source code
• Cons
– Does not protect the
functions of the
program/software
• The functions of the
program
• programming language
used
• Format of data files
used to make program
function
 Patents & Utility Models
• Pros
– Protects functionality and
methodology of your
program/software
– If filed for Patent Cooperation
Treaty (PCT), can protect
software in various countries
– deters reverse engineering
• Cons
– Expensive (2000 to 4320 PhP for
filing) in addition to annuity fees
– Philippines and some countries
don’t recognize software patents
• Sec. 22.2 of Republic Act No. 8293
– May need to incorporate software
to a machine and pass
patentability requirements to
enable patent protection
– You need to disclose how it works
to government and the public
– Limited protection (20 years)
 Amazon’s One Click Patent
• US5960411 (A) - Method and system for placing a purchase
order via a communications network
• Amazon's U.S. patent expired on September 11, 2017
• Licensed by Apple for their Online store in 2000
• Used to sue and successfully get an injunction from Barnes and
Noble on October 1999
 Trade Secrets
• Pros • Cons
– no need for – only effective against improper
acquisition and use or disclosure of
registration (no money the confidential information
and time costs) – It is legal for others to reverse
– has no expiration engineer your
product/service/code
unlike patents & – doesn’t stop others who
copyrights independently discovered the
trade secret to patent/register for
copyright their findings
– Requires employee trust and non-
disclosure agreements
 Reference
• PULUMBARIT, ELIZABETH R., "KNOWING AND PROTECTING YOUR INTELLECTUAL PROPERTIES (IP) and INTELLECTUAL
PROPERTY RIGHTS (IPR)". Technology Transfer and Business Development Office, University of the Philippines. last modified
September 6, 2012 accessed September 23, 2016.
• http://www.iprhelpdesk.eu/news/copyright-or-patent-how-protect-my-software
• https://www.ipophil.gov.ph/services/schedule-of-fees/copyright-related-fees/
• https://en.wikipedia.org/wiki/1-Click
• https://web.archive.org/web/20110616040418/http://news.cnet.com/2100-1017-245879.html
• https://www.wipo.int/sme/en/documents/trade_secrets_employee_loyalty.html
• https://www.hklaw.com/files/Uploads/Documents/Events/20161016_TradeSecretSlides.pdf