INTELLECTUAL PROPERTY CODE

CONCEPTS
c. Trademark, copyright and patent 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
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 v. CA, GR 115758, March 11,
2002).
 CONCEPTS
Differentiate trademark, copyright and patent
from each other.
TRADEMARK COPYRIGHT PATENT
DEFINITION Trademark is Copyright is Patent is any
: any visible an technical
sign capable incorporeal solution of
of right granted any problem
distinguishing by in any field
goods statute to of human
the author activity
or creator which is
 CONCEPTS
Differentiate trademark, copyright and patent
from each other.
TRADEMARK COPYRIGHT PATENT
DEFINITION: of original new,
literary and requires an
artistic inventive
works step and
whereby he industrially
is invested applicable.
for a limited
period of
 CONCEPTS
Differentiate trademark, copyright and patent
from each other.
TRADEMARK COPYRIGHT PATENT
DEFINITION: time with
the
right carry
out,
authorize
and prevent
the
reproduction
 CONCEPTS
Differentiate trademark, copyright and patent
from each other.
TRADEMARK COPYRIGHT PATENT
DEFINITION: distribution,
transformation
, rental, public
performance
and other
forms of
communicatio
n of his work
to the public.
 CONCEPTS
Differentiate trademark, copyright and patent
from each other.
TRADEMARK COPYRIGHT PATENT

OBJECT goods original invention

literary and
artistic works

TERM ten years generally 50 20 years

years from
application
 CONCEPTS
Differentiate trademark, copyright and patent
from each other.
TRADEMARK COPYRIGHT PATENT

HOW through acquired acquired

ACQUI registration from the through
RED and moment of application
use creation with the
IPO
 COPYRIGHT (Sec. 171, IPC)
a. “Copyright” – 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)
b. "Author" is the natural person who has
created the work
 COPYRIGHT (Sec. 171, IPC)
c. A "collective work" is a work which has been
created by two (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;
 COPYRIGHT (Sec. 171, IPC)
d. “Joint work” – is a work prepared by two or
more authors with the intention that their
contributions be merged into inseparable or
interdependent parts of a unitary whole, i.e.,
medical textbook that is jointly authorized by
two or three experts.
 COPYRIGHT (Sec. 171, IPC)
e. A "work of applied art" is an artistic creation
with utilitarian functions or incorporated in a
useful article, whether made by hand or
produced on an industrial scale
 COPYRIGHT (Sec. 171, IPC)
f. “Performers” – are actors, singers, musicians,
dancers, and other persons who act, sing,
declaim, play in, interpret, or otherwise perform
literary and artistic work.
 CIVIL CODE PROVISIONS
Intellectual creation is one of the modes of
acquiring ownership under the Civil Code.
a.  The following persons acquire ownership by
intellectual creation:
(1) The author with regard to his literary,
dramatic, historical, legal, philosophical,
scientific or other work;
(2) The composer; as to his musical
composition;
 (3) The painter, sculptor, or other artist,
with respect to the product of his art;

(4) The scientist or technologist or any other

person with regard to his discovery or
invention. (Art. 721, NCC)
b.  Letters and other private communications in
writing are owned by the person to whom they
are addressed and delivered, but they cannot
be published or disseminated without the
consent of the writer or his heirs.

However, the court may authorize their

publication or dissemination if the public good
or the interest of justice so requires. (Art. 723,
NCC)
 WHEN RIGHTS OVER COPYRIGHTS ARE
CONFERRED
Rights over copyrights are conferred form the
moment of creation (Section 172.1, IPC).

The work is deemed created if something

original is expressed in a fixed manner.
 WHO OWNS THE COPYRIGHT?
a. One creator – creator, his heirs or assigns
own the copyright

b. 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.
 WHO OWNS THE COPYRIGHT?
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.
 WHO OWNS THE COPYRIGHT?
c. Commissioned Work –
• the person commissioning owns the work;
• ownership of the copyright remains with the
creator, unless there is written stipulation to
the contrary.
 WHO OWNS THE COPYRIGHT?
d. 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 the owners.
 WHO OWNS THE COPYRIGHT?
e. Pseudonyms and anonymous works – unless
the author is undisputably known, the publisher
shall be presumed to be the representative of
the author (Secs. 178 and 179, IPC).
 WHO OWNS THE COPYRIGHT?
f. Employee’s work during course of employment
–
• employer, if the result of regular functions or
duties but the employee owns it if it is not
part of his duties.
 WHO OWNS THE COPYRIGHT?
Q: Juliet is a fine arts student in a university. She
stays in a boarding house with Alex as her
roommate. During her free time, Juliet would
paint and leave her finished works lying around
the boarding house. One day, Juliet saw one of
her paintings posted in the college cafe.
The café owner explained that it was brought
from Alex, who represented herself as the
painter and owner.
Juliet confronted Alex. Alex admitted that she
did not own the painting, but alleged that the
copyright is hers because she had already
registered it under her name in the National
Library as required in the Intellectual Property
Code.

Who owns the copyright to the painting?

ANSWER: Juliet owns the copyright to the
painting because she was the one who actually
created it. Her rights existed from the moment
of its creation.

The registration of the painting by Alex with the

National Library did not confer copyright upon
her. The registration is merely for the purpose
of completing the records of the National
Library.
 COPYRIGHTABLE OBJECTS
a. LITERARY AND ARTISTIC WORKS
Literary and artistic works, hereinafter referred
to as "works", are original intellectual creations
in the literary and artistic domain protected
from the moment of their creation and shall
include in particular:
(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 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 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. (Sec. 172, IPC)
Note: The author of speeches, lectures,
sermons, addresses, and dissertations
mentioned in the preceding paragraphs shall
have the exclusive right of making a collection
of his works. (Sec. 176.2, IPC)
b. DERIVATIVE WORKS

(1) Dramatizations, translations, adaptations,

abridgments, arrangements, and other
alterations of literary or artistic works; and

(2) Collections 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. (Sec. 173, IPC).
 UNPROTECTED WORKS
a. 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, GR No.
108946, Jan. 28, 1999)
b. News of the day and other miscellaneous facts
having the character of mere items of press
information (Sec. 175, IPC).
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.
c. Any official text of a legislative,
administrative or legal nature, as well as any
official translation thereof (Sec. 175, IPC).

d. Any work of the Government of the

Philippines –
However, prior approval of the government
agency or office wherein the work is created
shall be necessary for exploitation of such work
for profit.
Such agency or office may, among other things,
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.
(Sec. 176, IPC).
e. The trade name and container of a
medicated cream is the proper subject of
trademark.

Hence, copyright and patent registration of the

name and container would not guarantee the
registrant the right to the exclusive use of the
same, not being the proper subjects thereof.
(Kho v. CA, supra)
f. In the same manner, copyright registration of 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 & Dean [Phil.] v. Shoemart, Inc. et. al., GR No.

148222, Aug. 15, 2003).
 RIGHTS OF AUTHORS
a. Economic Rights
Copyright or economic rights shall consist of the
exclusive right to: (a) carry out, (b) authorize or
(c) prevent the following acts:
1. Reproduction of the work or substantial
portion of the work;
2. Dramatization, translation, adaptation,
abridgment, arrangement or other
transformation of the work;
3. The first public distribution of the original
and each copy of the work by sale or other
forms of transfer of ownership;

4. Rental of the original or a copy of an

audiovisual or cinematographic work, a work
embodied in a sound recording, a computer
program, a compilation of data and other
materials or a musical work in graphic form,
irrespective of the ownership of the original or the
copy which is the subject of the rental; (n)

5. Public display of the original or a copy of the work;

6. Public performance of the work; and
7. Other communication to the public of the work.
(Sec. 177, IPC)
 RIGHTS OF AUTHORS

b. Moral Rights
1. Require that the authorship of the works be
attributed to him, in particular, the right that his
name, as far as practicable, be indicated in a
prominent way on the copies, and in connection
with the public use of his work;
2. Make any alterations of his work prior to, or
to withhold it from publication;
b. Moral Rights

3. 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

4. Restrain the use of his name with respect to

any work not of his own creation or in a distorted
version of his work. (Sec. 193, IPC)
TERM of MORAL RIGHTS:

 ATTRIBUTION - shall last during the lifetime of

the author and in perpetuity after his death
(does not prescribe)

Other MORAL RIGHTS - shall be coterminous

with the economic rights
 FAIR USE

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 (Sec. 185, IPC)
a. Factors to consider to determine whether use
is fair or not:
1. Purpose and the character of the use;
2. Nature of the copyrighted work;
3. Amount and substantiality of the portions
used; and
4. Effect of the use upon the potential market
of the copyrighted work
Is GOOD FAITH a defense in COPYRIGHT
INFRINGEMENT?

No. The general rule is that acts punished under

a special law are malum prohibitum.

An act which is declared malum prohibitum,

malice or criminal intent is completely
immaterial.
Q1: In an action for damages on account of an
infringement of a copyright, the defendant (the
alleged pirate) raised the defense that he was
unaware that what he had copied was a
copyright material.

Would this defense be valid?

A1: No. In copyright infringement, intent is
irrelevant. A person may consciously or
unconsciously copy or infringe a copyrighted
material and still be held liable for such act.
Q: Y Corp. was hired as a designer for Manansala
in Rockwell. It submitted sketches and drawings,
which included a specific design for certain “hatch
doors.”

Y Corp. was issued a Certificate of Copyright for

these drawings, which pertain to class work “I”
under Sec. 172 of the IP Code. Later on, Y Corp.
was hired to manufacture and install said hatch
doors for the 1st to 20th floors of Manansala.
Y Corp. discovered, however, that X was also
hired to install the same hatch doors for
the 21st to 40th floors.
Y Corp. contends that X committed copyright
infringement when he fabricated hatch doors
identical to those installed by Y Corp.

Is Y Corp. correct?
A: No. Copyright is purely a statutory right. Being
a mere statutory grant, the rights are limited to
what the statute confers. Accordingly, it can
cover only the works falling within the statutory
enumeration or description. Class work “I” refers
only to “illustrations, maps, plans, sketches,
charts and three-dimensional works relative to
geography, topography, architecture or science.”
Thus, the hatch doors themselves cannot fall
under such enumeration.
In short, what was copyrighted were their
sketches/drawings only, and not the actual hatch
doors themselves. (Sison v. Olaño, 2016)

In any case, a hatch door, by its nature is an

object of utility. It is intrinsically a useful article,
which, as a whole, is not eligible for copyright.
(Sison v. Olaño, 2016)
• Solid commissioned Blanco and his son, both
noted artists, to paint a mural for the Main
Lobby of the new building of Solid for a
contract of 52M.

• Who owns the mural?

• Who owns the copyright of the mural?
• Ans:
• A. Solid owns the mural. In case of
commissioned work, the person who so
commissioned the work shall have the
ownership of the work.

• B. Mon and his son own the copyright. The

copyright of the commissioned work shall
remain in the creator, unless there is
stipulation.
 TRADEMARKS
Thus, the basis requirements are:
1. There must be a visible sign. Example: A
sound of a musical instrument cannot be a scent
of a perfume. It can be words, acronyms, logos,
slogans, designs , figures, pictographs, or
portraits.
• 2. It must be capable of distinguishing the
goods of an enterprise. (Distinctiveness)
b. COLLECTIVE MARK – any visible sign
designated as such in the application for
registration and capable if 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.
 TRADEMARKS

NOTE: There is no need to register trade names

in order to secure protection for them. (Sec.
165.2[a], IPC)
 FUNCTIONS of TRADEMARKS
(1) they indicate origin or ownership of the
articles to which they are attached;

(2) they guarantee that those articles come up

to a certain standard of quality; and

(3) they advertise the articles they symbolize. 

 HOW MARKS ARE ACQUIRED
The right in a mark shall be acquired through
registration with the Intellectual Property Office
or IPO (Sec. 122, IPC)
1. Registration is necessary before one can file
an action for infringement.
2. Actual use
i. Prior use in the Philippines is not required
before registration
ii. However, there must be actual use after
registration. The registrant shall file a
declaration of actual use of the mark with
evidence to that effect within three (3) years
from the filing date of application otherwise it
may be cancelled
(Secs. 142.2 and 151[c], IPC ).
The registrant is required to file a declaration of
actual use and evidence to that effect, or shall
show valid for non-use within one (1) year from
the fifth anniversary date of registration
reasons for non-use within one (1) year from
the fifth anniversary date of registration (Sec.
145, IPC).
iii. It is also provided that a certificate of
registration of a mark shall be prima facie
evidence of the validity of the registration, the
registrant’s ownership of the mark, and of the
registrant’s exclusive right to use the same
(Sec. 138, IPC).
This means that registrant’s right may be
questioned by a person who has a better
right, including a prior actual user.

This also includes persons with

internationally known marks.
iv. Registration is also not important to
protect the goodwill that identifies in the
mind of the public the goods he
manufactures or deals in
 iv. Registration is also not important to
protect the goodwill that identifies in
the mind of the public the goods he
manufactures or deals in (Sec. 168.1,
IPC)

Registration of a mark is not necessary

for purposes of filing a case for unfair
competition or false designation of origin
(Sec. 168.2 and 169, IPC).
 Unfair competition is present when : (1)
there is passing off of a product format of
another; (2) giving goods (or service) the
appearance of goods of another.

b. When the law states the right is acquired

from the time of registration, it is actually
referring to the filing date of application.
 HOW MARKS ARE ACQUIRED
1. The filing date of an application shall be the
date on which the IPO received the following
indications and elements:

(i) express or implicit indication that the

registration of the mark is sought;
• (ii) identity of the applicant;
• (iii) indications sufficient to contact the
application or his representatives;
• (iv) reproduction of the mark;
• (v) list of good s or services for which
registration is sought

(Sec.127, IPC)
2. However, the right may also be protected from
the priority date. Subject to the rules on reciprocity,
where the application is filed in the Philippines and
the same applicant previously filed an application in
the countries covered by the reciprocity rule under
Section 3 of the IPC, the application is deemed filed
as of the date the application was first filed in the
foreign country (Sec. 131, IPC).

However, there will be no registration in the

Philippines until registered in such foreign country
(Sec. 131.2, IPC)
 MARKS THAT CANNOT BE REGISTERED
(a) 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;

(b) 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;
 MARKS THAT CANNOT BE REGISTERED
(c) 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;
 MARKS THAT CANNOT BE REGISTERED
(d) 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;
 MARKS THAT CANNOT BE REGISTERED
(e) 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;
 MARKS THAT CANNOT BE REGISTERED

(f) 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;
 MARKS THAT CANNOT BE REGISTERED
(g) Is likely to mislead the public, particularly as
to the nature, quality, characteristics or
geographical origin of the goods or services;
(h) Consists exclusively of signs that are generic
for the goods or services that they seek to
identify;
• (i) 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;
(j) 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;
 MARKS THAT CANNOT BE REGISTERED
Q. Is a name denoting geographical location registrable
as a trademark?

A. General rule: Can’t be used when

1. It induces public to believe that it is manufactured in

a place where it is not really manufactured there, e.g.
Champagne is a sparkling wine from a particular city in
France; no other wine can be called Champagne.
• 2. If that place is known for the goods, you
can’t register, e.g. Batangas is known for its
coffee
•
Exception: If that place is not particularly
known for products of that kind, e.g. Baguio
Oil, Seattle’s Best
(k) 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;
(l) Consists of color alone, unless defined by a
given form; or
(m) Is contrary to public order or morality.
(Section 123, IPC)
 LIMITATIONS
a. Doctrine of Secondary Meaning –

A generic or descriptive mark may later acquire the

characteristic of distinctiveness and can later be
registered if it acquires a meaning which is different
from its ordinary connotation. For this to happen,
there must be exclusive and continuous use for a
period of at least five (5) years (Sec. 123.2, IPC)
• Examples:
• (1) “Selecta” for bakery products;
• (2) “Ang Tibay” for shoes (Are & Sons v.
Selecta Biscuit Co., Inc., 110 Phil. 858 [1961];
Ang v. Teodoro , 74 Phil 50 [1942]),
• (3)“Cerveza Negra”,
• (4) PURE for mineral water,
• (5) YELLOW PAGES for directory.
INTERNATIONALLY WELL-KNOWN MARKS
a. The persons who may question the mark (that
is, oppose registration, petition for cancellation
thereof, sue for unfair competition) include
persons whose internationally well-known mark,
whether or not registered, is identical with or
confusingly similar to or constitutes a translation
of a mark that is sought to be registered or is
actually registered (Secs. 123[3] and 131.3, IPC)
INTERNATIONALLY WELL-KNOWN MARKS
b. There is also protection for internationally
known marks registered in the Philippines for
goods that are not similar with respect to which
registration is applied for (Rule 101[f], Rules and
Regulations on Trademarks, etc.).
 RIGHTS CONFERRED
a. The right to the exclusive use of the mark for
one’s own goods or services.
b. The right to prevent others from the use of
the same mark for identical goods or services in
the course of trade.
c. The right to the exclusive use of one’s already
registered mark even for goods or services into
which one’s venture expands, if use by others
for dissimilar products is likely to damage the
business interests of the first venture (Sec. 147,
IPC)
 RIGHTS CONFERRED
d. Prevent entry of imported merchandise into
the country containing a mark identical or
similar to the registered mark (Sec. 166, IPC, as
amended) and

e. To transfer or license out the mark (Sec. 149,

IPC, as amended)
 PROTECTION OF TRADE NAME
A trade name(including a corporate 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).
 Fair Use of a Trademark
Registration of the mark shall not confer on the
registered owner the right to preclude third 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. (Sec. 148, IPC)
• Company X sold its wine under the brand “
Rose” Brandy; it became very popular. So, X
registered trademark “ Rose” for its brandy.
Subsequently, Company Y manufactured
bicycles and sold it under the name ” Rose.”.
Company X sues Company Y for violation of
IPC.

• Rule on the dispute

• The ruling should be in favor of Company Y.
There is no violation of the IPC . The goods of
Company Y, bicycles, are so dissimilar from
the goods of Company X that there would be
no confusion as to the origin of the goods.
 PATENTS

Kinds of Patents
a. Invention Patent (Patentable Invention) —
novelty, inventiveness, industrial applicability
b. Design Patent — novelty, ornamentality
c. Utility Model — novelty, industrial
applicability
 PATENTS

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, supra)
 PATENTS

a. Requisites:
1. A technical solution of a problem in any
field of human activity;
2. It must be a novel invention;
3. Industrially applicable.
 PATENTS

b. Definitions:
1. Novel – does not form part of a prior art (Sec.
23, IPC). 
2. Prior Art – (i) that which has been made
available to the public anywhere in the world
before the filing date or the priority date of
application;
 PATENTS

(ii) that which forms part of an application

whether for patent, utility model or industrial
designed, effective in the Philippines: Provided,
that the inventor or applicants are not the same
and the contents of the application are
published in accordance with the requirements
of patent application rules and the filing date of
prior art is earlier (Sec. 24, IPC)
 PATENTS

3. 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. (Sec. 26, IPC)
 PATENTS

NOTE: In the case of drugs and medicines, there

is no inventive step if the invention results from:
(i) 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,
(ii) mere discovery of any new property or new
use for a known substance, or
 PATENTS

(iii) mere use of a known process unless such

known process results in a new product that
employs at least one new reactant (Sec. 26, IPC
as amended by RA 9502)
 PATENTS

4. Person skilled in the Art – presumed to be an

ordinary practitioner aware of what was
common general knowledge in the art of
relevant date. He is presumed to have
knowledge of all references that are sufficiently
related to one another and to the pertinent art
and to have knowledge of all arts reasonably
pertinent to the particular problems with which
the inventor was
 PATENTS

involved. He is presumed also to have had at his

disposal the normal means and capacity to
routine work and experimentation.
5. Industrial applicability - An invention that can
be produced and used in any industry shall be
industrially applicable. (Sec. 27, IPC)
 Classes of Patentable Inventions

a) Useful machine;
b) Product;
c) Process
d) Improvement of any of the foregoing (a), (b)
or (c);
e) microorganism; and
f) non-biological and microbiological processes.
(Rule 201, Rules and Regulations on Inventions)
 Non- Patentable Inventions
a. Discoveries, scientific theories and
mathematical methods;
b. Schemes, rules and methods of performing
mental acts, playing games or doing business,
and programs for computers;
c. 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
 Non- Patentable Inventions
to products and composition for use in any of
these methods;
d. Plant varieties or animal breeds or essentially
biological process for the production of plants or
animals. This provision shall not apply to micro-
organisms and non-biological and
microbiological processes.
e. Aesthetic creations; and
 Non- Patentable Inventions

f. Anything which is contrary to public order or

morality. (Sec. 22, IPC )
g. In the case of drugs and medicines, there is no
patentable invention in the following instances:
1. 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;
 Non- Patentable Inventions

2. Mere discovery of any new property or

new use for a known substance;
3. Mere use of a known process unless
such known process results in a new product
that employs at least one new reactant.
• One of these statements relative to the
ownership of patent is FALSE?
• A. When two or more persons jointly make an
invention, the patent belongs to them jointly
• B. Even if the contract provides otherwise, the
person who commissioned a work will own the
patent
• C. The patent belongs to the inventor, his heirs,
or assigns
• D. The person who commissioned a work will
own the patent
 RIGHTS CONFERRED

When subject matter is a product:

Right to restrain , prohibit and prevent any

unauthorized person or entity from making,
using, offering for sale, selling or importing the
product (Sec. 71, IPC)
 RIGHTS CONFERRED

When subject matter is a process:

Right to restrain , prohibit and prevent any

unauthorized person or entity from
manufacturing, dealing in, using, offering for
sale, selling or importing any product obtained
directly or indirectly from such process.(Sec. 71,
IPC)
 PERSON ENTITLED TO RIGHT

a. The right to a patent belongs to the inventor,

his heirs, or assigns.

b. When two (2) or more persons have jointly

made an invention, the right to a patent shall
belong to them jointly. (Sec. 28, IPC)
 PERSON ENTITLED TO RIGHT

c. 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
filing date or, the earliest priority date. (Sec. 29,
IPC)
 PERSON ENTITLED TO RIGHT

d. Commissioned Work
GR: Person who commissioned the work
EXC: otherwise provided in the contract
 PERSON ENTITLED TO RIGHT

e. During the course of an employment contract

EMPLOYEE : if the inventive activity is not a part
of his regular duties

EMPLOYER: if the invention is the result of the

performance of his regularly-assigned duties

EXC: an agreement to the contrary

 Questions
• X invented a method of improving the
tenderness of meat by injecting an enzyme
solution into the liver of the animal shortly
before slaughter. Is the invention patentable?

• Ans: Yes. The process of improving the

tenderness of meat appears to be a new
technical solution
• X invented a bogus coin detector which can be
used exclusively on self-operating gambling
devices otherwise as one-armed bandits. Can X
apply for a patent?

• Ans: No. the tool is used to cheat in gambling

hence, contrary to public order and morality
• Supposing Albert Einstein were alive today and
he filed with IPO an application for patent for
his theory of relativity expressed in formula E=
mc2. May IPO grant him the patent?

• Ans: No. Discoveries, scientific theories and

mathematical methods , are non-patentable
inventions. Here, it is a scientific theory, hence
merely discovered, not invented.
• Che-che invented a device that can convert
rainwater to automobile fuel. She asked
Macon, a lawyer, to assist in getting her
invention patented. Macon suggested that
they form a corporation with other friends and
have the corporation apply for the patent, 80%
of the shares of stock thereof to be subscribed
by Che-che and 5% by Macon.

• The corporation was formed and the patent

application was filed.
• However, che-che died three months later of
heart attack.
• Franco, the estranged husband of Che-che,
contested the application of the corporation
and filed his own patent application as the sole
surviving heir of Che-che.

• Decide.
• The case should be decided in favor of Franco.
Sec 28 of IPC provides that the right to a
patent belongs to the inventor, his heirs, and
assigns. Franco is the sole surviving heir of the
inventor.