A. N. L.

IPL SYLLABUS 3B
Part III. COPYRIGHT 4. ORIGINAL WORKS VS DERIVATIVE
WORKS
1. CONCEPT OF COPYRIGHT
Original works:
Copyright: A right over literary and artistic works
which are original intellectual creations in the literary Original intellectual creations
and artistic domain protected from the moment of a. Books, pamphlets, articles and other writings
creation. b. Lectures, sermons, addresses, dissertations prepared
for Oral delivery, whether or not reduced in writing or
Elements: other material form
c. Letters
1. Originality – must have been created by the author’s d. Dramatic, choreographic works
own skill, labor and judgment without directly e. Musical compositions
copying or evasively imitating the work of another f. Works of art
2. Expression – must be embodied in a medium g. Periodicals and newspapers
sufficiently permanent or stable to permit it to be h. Works relative to geography, topography,
architecture, or science
perceived, reproduced or communicated for a period
more than a transitory duration. i. Works of applied art
j. Works of a scientific or technical character
The copyright is distinct from the property in the k. Photographic works
material object subject to it. l. Audiovisual works and cinematographic works
m. Pictorial illustrations and advertisements
n. Computer programs
2. OBJECTIVE, PURPOSE AND BENEFIT OF o. Other literary, scholarly, scientific and artistic works
COPYRIGHT REGISTRATION
Objective: not to reward the labor of authors but to Derivative Works:
promote the progress of science and useful arts o Idea/ Elements:
expression or fact/expression dichotomy: authors are 1. Must borrow original and expressive content from
assured the right to their original expression but another work.
encourages other to build freely upon the ideas and 2. The work must recast, transform, or adapt – and not
simply copy – the work upon which it is based.
information conveyed by a work
a. Dramatizations, translations, adaptations,
Purpose: to promote the progress of science and the abridgments, and other alterations of literary or artistic
works
arts
b. Collections of literary, scholarly or artistic works
Benefit: To encourage the people to devote and compilations of date and other materials which are
original by reason of the selection or coordination or
themselves to intellectual and artistic creation, arrangement of their contents
Congress may guarantee to authors and inventors a
reward in the form of control over the sale or personal 5. UNPROTECTED WORKS
commercial use of copies of their work (precluding a. Facts/data: not copyrightable because facts do not
others from copying his creations for commercial owe their origin to an act of authorship
purposes without permission) b. News: The news element – the information
respecting current events contained in the literary
production – is not creation of the writer, but is a
3. SUBJECTS OF COPYRIGHT report of matters that ordinarily are publici juris; it is
Subject of copyright: Literary and artistic works history of the day.
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c. Official text of governmental issuances: work may authorize their publication or dissemination if the
created by an officer or employee of the Philippine public good or the interest of justice so requires.
Government or any of its subdivisions and
instrumentalities, including government-owned or Note: When a corporation be an owner of a copyright:
controlled corporations as a part of his regularly Employment, commissioned work, licensing,
prescribed official duties assignment.

6. OWNERSHIP OF COPYRIGHT c. Rules for commissioned Work

a. Commencement of ownership: from the moment The person who commissioned the work shall have
of creation the ownership of the work but the copyright thereto
b. Owner of the copyright shall remain with the creator, unless there is a written
*Author: natural person who has created the work. stipulation to the contrary.
*Joint ownership, the co-authors shall be the original
owners of the copyright and in the absence of d. Joint authorship
agreement, their right shall be governed by the rules De Minimis Test: “about minimal things”, a legal
on co-ownership. doctrine by which the court refuses to consider trifling
- if parts can be used separately, the author of each matters.
part shall be the original owner of the copyright Copyrightable Matter Test: to qualify as an author,
in the part he has created. one must supply more than mere direction or ideas. An
*Employment, owner shall be the: author is the party who actually creates the work, that
a. Employee, if the creation of the object of is, the person who translates an idea into a fixed,
copyright is not a part of his regular duties tangible expression entitled to copyright protection.
b. Employer, if the work is the result of the It also enables parties to predict whether their
performance of his regularly-assigned duties, contributions to a work will entitle them to
unless there is an agreement, express or copyright protection as joint author.
implied, to the contrary. *Copyrightable matter test is favored by the courts.
*Commissioned work, the person who commissioned
the work shall have the ownership of the work but the e. Legal Effects of Co-Authorship
copyright thereto shall remain with the creator, unless Rules on co-ownership: In case of joint authorship,
there is a written stipulation to the contrary. the co-authors shall be original owners of the
*Audiovisual work, the copyright shall belong to the copyright. Unless the agree on a different rules to
producer, the author of the scenario, the composer of govern their rights, the rules on co-ownership shall be
the music, the film director, the photographic director, applied.
and the author of the work adapted. However, the
producer shall exercise the copyright to an extent If the parts can be used separately, the author of each
required for the exhibition of the work in any part shall be the original owner of the copyright in the
manner except for the right to collect performing part he has created. Since a co-owner may use the
license fees. thing owned in common, a joint author cannot be held
*Letters, the copyright shall belong to the writer liable by the other co-authors for infringement of
subject to the provisions of Article 723 of the Civil copyright although he must account to the co-authors
Code which provides that letters and other private for the profits he derived from the use of the work.
communications in writing are owned by the person to Because a co-owner is an owner, he has a right to use
whom they are addressed and delivered, but they or license the use of the copyright, and cannot be an
cannot be published or disseminated without the infringer.
consent of the writer or his heirs. However, the court
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IPL SYLLABUS 3B
On the other hand, it would appear that a joint author Anonymous work – is a work on the copies of
cannot without the consent of the co-authors create a which no natural person is identified as author.
derivative work out of the joint work since this is not
strictly using the work in the manner intended by the Pseudonymous work - is a work on the copies of
parties. which the author is identified under a fictitious
name.
f. Rules on Work for Hire
*Section 178.3: exception where the author of the 7. TERM OF PROTECTION
work is not the owner of the copyright. Anonymous and pseudonymous works shall be
Works-for-hire: copyright automatically pertains to protected for 50 years from the date on which the
the hirer of the author, not to the author himself, if the work was first lawfully published.
work is the result of the performance of his regularly-
assigned duties, unless there is an agreement, express If the author’s identity is revealed or is no longer in
or implied, to the contrary. doubt, the works shall be protected during the lifetime
of the author and for 50 years after his death.
A work made for hire is either:
1. A work prepared by an employee within the For joint authors, during the lifetime of the last
scope of his or her employment surviving author and for 50 years after his death.
2. A work specially ordered or commissioned and
created by an independent contractor. If not published before, it shall be protected for 50
years counted from the making of the work.
Under the work for hire doctrine, an employer
owns the copyright on a product by an employee Note: from the life of the author and not from the
within the scope of his or her employment, absent owner of the copyright.
a written agreement to the contrary. For purposes
of this statute, employee does not refer only to 8. ECONOMIC RIGHTS
formal salaried employees. A court, in order to The law provides the copyright holder with a
determine whether a work is a work for hire, bundle of rights such as:
should first ascertain, using principles of the - Reproduction of the work or substantial portion of
general common law of agency, whether the work the work
was prepared by an employee or by an - Dramatization, translation, adaptation abridgement,
independent contractor. arrangement or other transformation of the work
- First public distribution
g. Anonymous and Pseudonymous Works - Rental of the work
Sec. 179. Anonymous and Pseudonymous Works. - - Public display of the work
For purposes of this Act, the publishers shall be - Public performance of the work
deemed to represent the authors of articles and - Other communication to the public of the work.
other writings published without the names of the
authors or under pseudonyms, unless the contrary “Bundle of Rights”
appears, or the pseudonyms or adopted name The individual rights can be licensed or assigned
leaves no doubts as to the author’s identity, or if separately, and even subdivided.
the author of the anonymous works discloses his
identity. Right of Reproduction: bedrock of the copyright
and is fundamental to the concept of ownership of
a copyright. “Copies” are material objects, other than
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IPL SYLLABUS 3B
phonorecords, in which a work is fixed by any method
now known or later developed, and from which the NOTE: Doctrine of Fair Use
work can be perceived, reproduced, or otherwise
communicated, either directly or with the aid of a Author’s Right of Derivation: right to prepare
machine or device. derivative works based upon the copyrighted work. It
is also known as the right of adaptation.
Right of Public Distribution: right to distribute
copies or phonorecords of the copyrighted work to the 9. ASSIGNMENT OF ECONOMIC RIGHTS AND
public by sale or other transfer of ownership, or by FORM OF ASSIGNMENT
rental, lease, or lending. There is a need for written assignment to prove
such intention. If an author verbally assigns his
Right of Public Performance: 1. To perform it at a copyright to his last novel to a publishing house
place open to the public or at any place where a in consideration for an immediate lump-sum
substantial number of persons outside of a normal payment for all the rights to the work, and
circle of family and its social acquaintances is subsequently assigns the same copyright to the
gathered; 2. To transmit or otherwise communicate novel to another person, the latter shall have the
a performance of the work to a place specified by rights. The remedy of the former is to file
(1) by means of any device or process, whether damages to the author.
the members of the public capable of receiving
the performance receive it in the same place or in 10. MORAL RIGHTS
separate places and at the same time or at different Sec. 193. Scope of Moral Rights. - The author of
times. a work shall, independently of the economic rights
in Section 177 or the grant of an assignment or
Right of Public Display: To display – show a license with respect to such right, have the right:
copy of it, either directly or by means of a film, 193.1. To require that the authorship of the works
slide, television image, or any other device or be attributed to him, in particular, the right that
process or, in the case of a motion picture or his name, as far as practicable, be indicated in a
other audiovisual work, to show individual images prominent way on the copies, and in connection
consequentially. Section 181 distinguishes the with the public use of his work;
copyright or the author’s above exclusive rights from 193.2. To make any alterations of his work prior
the physical embodiment of the exercise of that right. to, or to withhold it from publication; 193.3. To
object to any distortion, mutilation or other
This must be read in light of Section 177.3 - First modification of, or other derogatory action in
Sale Doctrine. The first public distribution of the relation to, his work which would be prejudicial to
original and each copy of the work is vested in his honor or reputation; and
the author. After the first sale, anyone who is the 193.4. To restrain the use of his name with
owner of that copy can sell or dispose of that respect to any work not of his own creation or in
copy in any way without liability for copyright a distorted version of his work.
infringement. The distribution right is extinguished
after the first legitimate transfer of an object Moral rights (le droit moral) mean to capture
embodying the copyrighted material. those rights of a spiritual, non-economic and
personal nature. The rights spring from a belief
However, by virtue of Section 181, the transfer of the that an artist in the process of creation injects his
physical object does not of itself transfer any of the spirit from a belief that the artist’s personality, as
exclusive rights of copyright. well as the integrity of the work should therefore
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IPL SYLLABUS 3B
be protected and preserved. They are personal to 2. Rights of producers of phonograms in their
the artist; it exists independently of an artist’s phonograms
copyright in his or her work. 3. Rights of broadcasting organizations in their
*Cannot be assigned radio and television programs
*May be waived
Protection with respect to the increasing recording of
Right of attribution – consists of the right of an their performances which was making serious inroads
artist to be recognized by name as the author of his into their income, and endangering their “live”
work or to publish anonymously or employment opportunities.
pseudonymously, the right to prevent the author’s
work from being attributed to someone else, and *Unless otherwise provided by contract, in every
to prevent the use of the author’s name on works communication to the public or broadcast thereof by
created by others, including distorted editions of the broadcasting organization, the performer shall be
the author’s original work. entitled to an additional resume ration equivalent to at
least 5% of the original compensation he or she
Right of integrity – allows the author to prevent received for the first communication or broadcast
any deforming or mutilating changes to his work, (Section 206, IPC).
even after the title in the work has been
transferred. CONTRACT TERMS
Nothing in the Chapter on Neighboring Rights
*Breach of Contract – an author has the moral right shall be construed to deprive performers of the
to decline to perform what was stated in the right to agree by contract on terms and conditions
contract. Although he cannot be compelled to more favorable for them in respect of any use of
publish his work, the remedy of the other party is their performance.
to file for damages for breach of contract.
Sec. 211 provides that broadcasting organizations shall
enjoy the exclusive right to carry out, authorize or
WAIVER OF MORAL RIGHTS prevent any of the following acts:
Sec. 195. Waiver of Moral Rights. - An author - The rebroadcasting of their broadcasts
may waive his rights mentioned in Section 193 by - The recording in any manner, including the
a written instrument, but no such waiver shall be making of films or the use of video tape, of their
valid where its effects is to permit another: 195.1. broadcasts for the purpose of communication to
To use the name of the author, or the title of his the public of television broadcasts of the same
work, or otherwise to make use of his reputation - The use of such records for fresh transmissions
with respect to any version or adaptation of his or for fresh recording.
work which, because of alterations therein, would
substantially tend to injure the literary or artistic The rebroadcasting or reception of television
reputation of another author; or 195.2. To use the broadcasts in public places can be very profitable.
name of the author with respect to a work he did Frequently, the organizers of such events only allow
not create. broadcasting for certain territories or on the condition
that no public reception close to the place of the event
11. NEIGHBORING RIGHTS drains away potential spectators. The broadcasting
Three Kinds of Neighboring Rights organization must therefore be able to prohibit
1. Rights of performing artists in their rebroadcasting - and public reception.
performances
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IPL SYLLABUS 3B
12. INFRINGEMENT OF COPYRIGHT availment of provisional remedies may be granted
a. Tests of similarity: whether the similarity in the in accordance with the Rules of Court.
works would lead the average observer to recognize
the alleged copy as having been appropriated from 13. ENFORCEMENT OF RIGHTS
plaintiff’s work. a. Injunction
Plaintiff must establish that:
b. Direct Infringement: committed by any person 1. It has substantial likelihood of prevailing on the
who himself carries out any of acts in violation of the merits;
author’s economic rights, moral rights, as well as 2. It will suffer irreparable injury if it is denied
neighboring rights. the injunction (presumed when the exclusive
rights of the holder are infringed);
Contributory Infringement: one who, with 3. Its threatened injury outweighs the injury that
knowledge of the infringing activity, induces, causes the opposing party will suffer under the
or materially contributes to the infringing conduct of injunction; and
another, without the copyright owner’s consent to 4. An injunction would not be adverse to the
commit any violation of said exclusive rights. public interest.

c. Innocent Infringement: infringement caused -requires no notice and hearing to parties sought to
without knowledge or awareness of such act. be enjoined
-if it is shown in the facts that great or irreparable
d. Proof of Infringement: May be shown either by injury would result to the applicant before the
direct evidence, absent such, may be inferred from a matter can be heard on notice, Court may issue
showing that the defendant had “access” to the ex parte a TRO effective for 20days.
plaintiff’s work prior to the creation of defendant’s -Within the 20days the person sought to be
work, and that there is “substantial similarity” enjoined must show cause why the injunction
between the works. (Direct evidence; Circumstantial should not be granted. The court within such
evidence-“access”) period must issue an order whether or not the
injunction is granted.
e. Jurisdiction -TRO may be issued effective for 72hrs if the
Courts with appropriate jurisdiction under existing matter is of extreme urgency and the applicant
laws. will suffer grave injustice and irreparable injury. It
may be extended until the application for
The Director General shall exercise original injunction can be heard.
jurisdiction to resolve disputes relating to the -injunction shall not exceed 20 days, including the
terms of a license involving author’s right to 72hrs.
public performance of other communication of his -TRO issued by CA: effective 60days; SC:
work. The decision of the Director General is effective until further orders
appealable to the Sec. of Trade and Industry.
• Injunction restraining such infringement, prevent
The Bureau of Legal Affairs exercise original the entry into the channels of commerce of
administrative jurisdiction complaints shall in for imported goods that involve an infringement,
violations of laws involving intellectual property immediately after customs clearance of such
rights: Provided that its jurisdiction is limited to goods.
complaints where the total damages claimed are • Preliminary injunctive relief is appropriate when
not less than P200,000: Provided further, that party can show:
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IPL SYLLABUS 3B
- A strong likelihood of success of the merits
- Irreparable harm, and **imprisonment and fine shall be based on the
- The balancing of hardships weigh in favour value of the infringing materials that the defendant
of the injunction has produced or manufactured and the damage that
the copyright owner has suffered by reason of the
b. Moral and Exemplary Damages infringement.
-when an owner establishes that the defendant’s
infringement was willful, the courts may increase 14. DEFENSES AGAINST INFRINGEMENT
its award of damages • Proof of independent creation of the defendant’s
-Copyright infringement will be found willful when work
the defendant had knowledge that its conduct • STATUTORY DEFENSES: The allegedly
constituted infringement or showed reckless infringing act could be a protected activity
disregard for the copyright holder’s rights. under SEC184 or a permissible reprographic
reproduction by libraries under SEC188, or a
c. Impounding of commercial documents reproduction off a computer program under
• Impounding during the pendency of the action SEC189.
of sales invoices and other documents • FAIR USE: permits other people to use
evidencing sales, all articles and their packaging copyrighted material without owner’s consent in
alleged to infringe a copyright and implements reasonable manner for certain purposes. (ex.
for making them. When an ad becomes a ‘transformative’ work
• Seizure and impounding of any article which which commented on original work and did not
may serve as evidence in the court proceedings interfere with any potential market for original
photograph)
d. Delivery under oath for destruction without • ABANDONMENT: the defendant must show the
any compensation all infringing copies or devices, plaintiff’s manifest intent to abandon the
as well as all plates, molds, or other means for copyright. This is proven through words or
making such infringing copies as the court may conduct.
order. Destruction of infringing copies of the work • ESTOPPEL REQUISITES:
even in the event of acquittal in a criminal case. 1. The plaintiff knew of the defendant’s
conduct;
e. Criminal Action 2. The plaintiff’s actions reasonably led the
Any person infringing any right or aiding or defendant to believe that the defendant’s
abetting such infringement shall be guilty of a conduct was authorized, and
crime punishable by: 3. The defendant reasonable relied on the
1. Imprisonment of 1yr to3yrs plus a fine plaintiff’s actions (ex. Plaintiff’s action
ranging from P50,000 to P150,000 for first might lead the defendant to believe that he
offense; or she had an implied license to exploit to
2. Imprisonment of 3yrs and 1day to 6yrs plus a plaintiff’s work. In this case, equity might
fine ranging from P150,000 to P500,000 for the prevent enforcement of the owner’s
second offense; exclusive rights, particularly if the
3. Imprisonment of 6yrs and 1day to 9yrs plus a defendant has expended large sums in
fine ranging from P500,000 to P1.5M for the third connection with exploitation of the work.
and subsequent offenses. • UNCLEAN HANDS: if the defendant can show
4. In all cases, subsidiary imprisonment in cases that the plaintiff’s engaged in serious
of insolvency.
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IPL SYLLABUS 3B
misconduct concerning the copyright and/or the 1. The work has already been lawfully made
defendant’s infringing activities. accessible to the public
2. No fee is charged for the recitation or
1 5 . S A M P L E O F A P P L I C AT I O N F O R performance
COPYRIGHT REGISTRATION
This limitation specifies the condition that the
1 6 . L I M I TAT I O N S O N C O P Y R I G H T work should have been lawfully made accessible
PROTECTION (Sec. 184) to the public because the first public distribution
(Justice Robeniol merely focused on Doctrine of Fair of the work is the author's exclusive right under
Use. Still, I included some limitations contained in the section 177.3. The charging of fees negates the
book) private character of the recitation and performance.

Fair use of a copyrighted work - fair use of Quotations from a published work if they are
copyrighted work in comments, criticism, teaching compatible with fair use: permissible to make
including research etc is not an infringement of quotations from a work which has already been
copyright. lawfully made available to the public, provided that
their making is compatible with fair practice, and
Factors to be considered: justified by its purpose, including quotations from
1. Purpose and character of the use, including newspaper articles and periodicals in the form of press
whether such use is of a commercial nature summaries.
or is for non-profit educational purposes
2. Nature of the copyrighted work THREE LIMITS ON THE LICENSE TO
3. Amount and substantiality of the portion used QUOTE:
in relation to the copyrighted work as a whole 1. Work from which the extract is taken must have
4. Effect of the use upon the potential market for been lawfully made available to the public
or value of the copyrighted work 2. Quotations must be compatible with fair
practice- matter for the court to decide
Temporal: copyright does not continue indefinitely. 3. Quotation must only be to the extent justified
The law provides for a period of time or duration for by the purpose-matter for courts
it to exist. The period or duration begins with the
creation of work. Reproduction of News Items
1. Such news items may be reproduced UNLESS
Geographic: owner is protected by the law of the they contain a notice that their publication is
country against acts restricted. For protection reserved, or
against such acts done in another country, he must 2. That they may also be reproduced UNLESS
refer to the law of that other country. they contain a notice of copyright

Permitted use -"fair use": certain acts normally NOTE: the source of the work must always be
restricted by copyright may, if specified in the law, cited
be done without authorization of copyright owner. NOTE: "we reserved all rights" is equal to "that
their publication is reserved"

Private recitation or performance of a work: Reproduction or Communication to the Public by

under section 184(a): not considered an Mass Media - also implements a paragraph in the
infringement of copyright if: Berne convention which provides that it shall also
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IPL SYLLABUS 3B
be a matter for legislation in the countries to broadcasting organization by means of recordings
determine the conditions under this limitation -a by a broad acting organization by means of its
matter of allowing the reporting of news within own facilities and for its own broadcasts. If
reasonable limits -in reporting current events the member countries do not so, it is the contract
appearance of protected works is fortuitous and between the author and broadcasting organization
subsidiary to the report itself, it is therefore which determines whether recordings for this
impossible to seek the consent of the owner in purpose may be made and if so whether they are
advance -convention also imposes another to be merelyEPHEMERAL. If the contact does
limitation which is the informatory purpose -a not expressly or impliedly allow recording, the
television broadcast of a current event may show first sentence of par three prevails: permission to
the town hall in front of which the event takes broadcast does not imply permission to record
place but it would be different if a whole concert
was recorded or all the artistic works in an Use of a Work by or Under the Direction or
exhibition were shown in a film. Control of the Government - this reserved right of
the government to use copyrighted works without
Inclusion of a Work by Way of Illustration for any liability compensates for the limited protection
Te a c h i n g P u r p o s e s , R e c o r d i n g M a d e i n given to works of the government
Educational Institutions of a Work Included in a
Broadcast -to permit the utilization, to the extent Use Made of a Work for the Purpose of any
justified by the purpose, of protected works by Judicial Proceedings or the Giving of Professional
way of illustration, sound, visual recording for Advice by a Legal Practitioner - practice of law is
educational purposes provided such utilization is based on precedents and is an important function
compatible with fair practice in the dispensation of justice, it essential that
lawyers and judicial officers are given the
NOTE: the article must always be acknowledged privilege to use copyrighted works without any
the source and the authors name if this can be liability. -consent must however be taken
gathered from that source

Ephemera Recordings by Broadcasting 1 7 . N AT I O N A L A N D I N T E R N AT I O N A L

Organization ORGANIZATIONS
Ephemeral Recording: an aural or audiovisual FILSCAP: The Filipino Society of Composers,
fixation of a performance or a broadcast made for Authors and Publishers, Inc. (FILSCAP) is a non-
a temporary period by a broadcasting organization stock, non-profit association of composers, lyric-
by means of its own facilities and for use for its writers and music publishers established in 1965 to
own broadcasts administer the public performance, mechanical
reproduction, and synchronization rights granted by
-broadcasting and recording are different, when law to creators and owners of original musical works.
broadcast is made the public is receiving it, it is
the same whether the broadcast is live or deferred ASCAP: The American Society of Composers,
while use of recordings depends on programming Authors, and Publishers (ASCAP /ˈæskæp/) is an
and time actors, and fortuitous reasons of this American non-profit performance-rights organization
kind do not call for any additional remuneration (PRO) that protects its members' musical copyrights
-member countries may take advantage of the by monitoring public performances of their music,
power given by paragraphs to allow the making whether via a broadcast or live performance, and
and keeping for a short time of recordings by a compensating them accordingly. ASCAP collects
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IPL SYLLABUS 3B
licensing fees from users of music created by ASCAP of an invention called utility model, the
members, then distributes them back to its members as technological progress required in case of an
royalties. In effect, the arrangement is the product of a invention for which a patent for invention is
compromise: when a song is played, the user does not available and second in the maximum term of
have to pay the copyright holder directly, nor does the protection provided in the law for utility model is
music creator have to bill a radio station for use of a generally much shorter than the maximum term of
song. protection provided in the law for an invention
for which a patent for invention is available. (
18. OPTICAL MEDIA ACT
Aims to curb widespread piracy in optical media in the c. Industrial Design
Philippines through a revamp of the implementing Ornamental or aesthetic aspect of a useful article.
government agency, introduction of licensing It may consist of shape, color or pattern. In order
requirements, use of identity codes in optical media, to constitute as industrial design it must be
and criminal prosecution for engaging in prohibited reproducible and original (also the requirement for
activities. protection).

OPTICAL MEDIA: storage media or devices in 2. PURPOSES OF PATENT LAW

which information, including sounds and/or images The patent law promote progress in the science
or software code has been stored, either by and the arts by offering a right of exclusion for
mastering and/or replication, which may be a limited period as an incentive to inventors to
accessed and read using a lens scanning risk often enormous costs in time research and
mechanism employing high intensity light source development. The patent system gives on who
such as a laser or any such other means as may makes a useful discovery or invention a monopoly
be developed in the future. in the making, use and vending of it for a limited
number of years.
PART IV. PATENTS
1. CONCEPT OF PATENT In return for the right of exclusion - this “reward for
a. Patentable Inventions inventions,” the patent laws impose upon the inventor
Any technical solution of a problem in any field a requirement of disclosure. To insure adequate and
of human activity which is new, involves an full disclosure so that upon the expiration of the patent
inventive step, and is industrially applicable shall period “the knowledge of the invention inures to the
be patentable. It may be, or may relate to, a people, who are thus enabled without restriction to
product, or process, or an improvement of any of practice it and profit its use,” the patent laws require
the foregoing. Under this definition products may that the patent application shall include a full and clear
be either machines, manufactures, or compositions of description of the invention and “of the manner and
matter. (phones, wristwatches, invented for the first process of making and using it” so that any person
time, ballpen) skilled in the art may make and use the invention.

b. Utility Model To promote progress of the science and the arts, the
A name given to certain inventions, namely- patent system gives one who makes a useful discovery
according to the laws of most countries which or invention a monopoly in the making, use and
contain provisions on utility models – inventions vending of it for a limited number of years. At the end
in the mechanical field. Utility models differ from of that time, the public might derive from the full
inventions for which for patents for invention are specifications required in the application
available mainly in two aspects: first, in the case
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IPL SYLLABUS 3B
accompanying the patent, knowledge sufficient to
enable it freely to make and use the invention. b. Existence and Term of Protection
Members (TRIPS Agreement) must make protection
3. INVENTION available at least for a period of twenty years
a. Criteria for Patentability: counted from the filing date.
1. Novelty: an invention shall not be considered new
if it forms part of the prior art. c. First to File System
PRIOR ART: 1. Everything which has been It is the rule in which patent priority is determined by
made available to the public anywhere in which inventor was the first to file a patent
the world, before the filing date of the application, rather than who was the first to actually
priority date of the application claiming – invent.
the invention 2. The whole contents of an
application for a patent, utility model or The right to the patent shall belong to the person who
industrial design registration, published in filed an application for such invention or to the
accordance with this Act. applicant who has the earliest filing date or, the
*New/no prior art (not available/not yet in existence/ earliest priority date.
not published)
2. Non-obviousness/Inventive Step: if, having (Under the previous law, the Patent Law, first to invent
regard to prior art, it is not obvious to a person system is used)
skilled in the art at the time of the filing date or
priority date of the application claiming the I. Exceptions to the First-to-File System:
invention. Fraud: If a person, who was deprived of the
The difference between the claimed invention patent without his consent or through fraud
and the state of the art must be the result of a is declared by final court order or decision
creative idea. to be the true and actual inventor, the
court shall order for substitution as
The difference must have two characteristics: patentee, or at the option of the true
it must be inventive, that is, the result of a inventor, cancel the patent, and award actual
creative idea and it must be a step, that is, it and other damages in his favour if
must be noticeable. There must be a clearly warranted by the circumstances.
noticeable distance between the state of the art
and the claimed invention. Prior User: Any prior user, who in good
faith was using the invention or has
The new solution constituting the claimed undertaken serious preparations to use the
invention must be a creation. Creating is the invention in his enterprise or business,
making of something from nothing; in that before the filing date or priority date of
case, the creation is different from everything the application on which a patent is
that existed before. However, creating is also granted, shall have the right to continue
the making of something with the use of the use thereof as envisaged in such
existing elements, but the result must be preparations within the territory where the
unexpected. patent produces its effect.
3. Industrially applicable/Utility: An invention that
can be produced and used in any industry; some Rights acquired prior to the IP Code:
specific, substantial, and credible use be set forth for Questions concerning the validity of these
the invention. patents granted under the Patent Law will
 A. N. L.
IPL SYLLABUS 3B
continue to be resolved under its In the case of product patents for inventions, the
provisions, while applications for patents right to make, use, sell and import the product
filed on or after January 1, 1998 (IP Code that includes the invention.
effectivity) will be governed by the
Intellectual Property Code. For these In the case of process patents for inventions, the
reasons, concepts like priority of invention right to use the process that includes the invention
and reduction to practice will continue to as well as the right to make, use, sell and import
be relevant even after January 1, 1998. products which were made by the process that
includes the invention.
d. Kinds of Patentable Articles
1. Invention – any technical solution of a GR: If anyone exploits the patented invention
problem in any field of human activity without the authorization of the owner of the
which is new, involves an inventive step patent for invention, he commits an illegal act.
and is industrially applicable. It may be, or
may relate to, a product, or process, or an XPN: As provided for by the patent laws,
improvement of any of the foregoing (Sec. example: exploitation in the public interest by or
21, IPC). on behalf of the government, or exploitation on
2. Utility Model – An invention qualifies for the basis of a compulsory license.
registration as a utility model if it is new
and industrially applicable (Sec. 109, IPC). Compulsory license – authorization to
3. Industrial Design – any composition of lines exploit the invention, given by a
or colors or any three-dimensional form, governmental authority, generally only in
whether or not associated with lines or very special cases, defined in the law, and
colors, provided that such composition or only where the entity wishing to exploit
form gives a special appearance to and can the patented invention is unable to obtain
serve as pattern for an industrial product or the authorization of the owner of the
handicraft. It must be new or ornamental patent for invention. It usually has the
(Sec. 112, 113 IPC). Generally speaking, an fixing of the remuneration for the patentee
industrial design is the ornamental or and may be subject to appeal.
aesthetic aspect of a useful article (Amador,
2007). An industrial design is not f. Improvement Patent: Section 21 recognizes the
considered new if it differs from prior patentability of improvement patents. It is well
designs only in minor respects that can be established that an improver cannot appropriate the
mistaken as such prior designs by an basic patent of another and that the improver
ordinary observe (World Intellectual without a license is an infringer and may be sued
Property Organization, 2004). as such. But where the change of construction
suggested, was only to increase its capacity for
e. Rights of a Patentee (Exclusive Rights of usefulness, the construction was merely carrying
Exploitation) forward of more extended application of the
The rights of a patentee is not described in the original thought - a change only in form, by
document called a patent. Those rights are substantially the same means, with better results.
described in the patent law of the country in In this situation, the patent is void for want of
which the patent for invention was granted. patentable novelty.
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IPL SYLLABUS 3B
*An improver who appropriates, without license, the
basic patent of another, is an infringer and liable as h. Requirements for Registration
such. SECTION 32. The Application. —
32.1. The patent application shall be in Filipino or
g. Non-Patentable Inventions English and shall contain the following:
EXCLUSIONS FROM PATENTABILITY a. A request for the grant of a patent;
Section 22. Non-Patentable Inventions. - b. A description of the invention;
The following shall be excluded from c. Drawings necessary for the understanding of the
patent protection: invention;
22.1. Discoveries, scientific theories and d. One or more claims; and
mathematical methods; e. An abstract.
22.2. Schemes, rules and methods of
performing mental acts, playing games or 32.2. No patent may be granted unless the application
doing business, and programs for identifies the inventor. If the applicant is not the
computers; inventor, the Office may require him to submit said
22.3. Methods for treatment of the human authority. (Sec. 13, R.A. No. 165a)
or animal body by surgery or therapy and
diagnostic methods practiced on the human i. Request/Application: form can be
or animal body. This provision shall not downloaded in IPO site
apply to products and composition for use
in any of these methods; GR: Must be in the name of the inventor.
22.4. Plant varieties or animal breeds or XPN: in the name of resident agent
essentially biological process for the empowered with SPA (for the inventor)
production of plants or animals. This
provision shall not apply to micro- Sec. 31. Right of Priority. - An application for
organisms and nonbiological and patent filed by any person who has previously
microbiological processes. Provisions under applied for the same invention in another
this subsection shall not preclude Congress country which by treaty, convention, or law
to consider the enactment of a law affords similar privileges to Filipino citizens,
providing sui generis protection of plant shall be considered as filed as of the date of
varieties and animal breeds and a system filing the foreign application: Provided, That:
of community intellectual rights protection: (a) the local application expressly claims
22.5. Aesthetic creations; and priority; (b) it is filed within twelve (12)
22.6. Anything which is contrary to public months from the date the earliest foreign
order or morality. (Sec. 8, R.A. No. 165a) application was filed; and (c) a certified copy
of the foreign application together with an
The laws of nature, physical phenomena, English translation is filed within six (6)
and abstract ideas have been held not months from the date of filing in the
patentable. Philippines.

Unpatentable matters are in the public ii. Description/Disclosure

domain. An unpatentable article, like an THE WRITTEN DESCRIPTION
article on which the patent has expired is R E Q U I R E M E N T: A p a t e n t
in the public and may be made and sold specification must set forth a
by whoever chooses to do so. sufficient written description of the
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IPL SYLLABUS 3B
invention (a) to allow a person of Objective: focuses on whether
ordinary skill in the art to understand such contemplated best mode
what is described and (b) to recognize was adequately disclosed
that the inventor in fact invented or
“possessed” what is claimed. iii. Drawings
Drawing requirement – it can be very simple
Section 35 requires that the or complex. Do not hesitate to ask for expert
application disclose the invention in a help.
manner sufficiently clear and
complete for it to be carried out by a iv. Claims
person skilled in the art. The Under Section 36, the application shall
description of the invention contains contain 1 or more claims which shall define
the disclosure of the invention. The the matter for which protection is sought.
purpose of that disclosure is to enable Each claim shall be clear and concise, and
a person having ordinary skill in the shall be supported by the description.
art to carry out the invention. Thus the
description fulfills an important Claim: Matter sought to be perfected
function in the patent system: it has to for the invention.
give the information which is
necessary in order to understand and Claims interpretation
exploit the invention. To ascertain the meaning of claims,
we consider three sources: The
Best mode analysis: specifically claims, the specification, and the
contemplates the adequacy of the prosecution history. Expert
disclosure in light of what one of testimony, including evidence of how
ordinary skill in the art would those skilled in the art would interpret
conclude from reading such claims, may also be used. The claim
disclosure. language itself defines the scope of
Two components: 1. Whether, the claim.
at the time the inventor filed
his patent application, he Specification: drawings or
knew of a mode of practicing abstracts
his claimed invention that he
considered to be better than Prosecution History: all the
any other; proceedings in which the
matter of application has gone
2. Compares what he knew through; what the appicant
with what he disclosed. does during proceedings.

Subjective: involves whether Prosecution History

the inventor knew of a best Estoppel: It precludes a
mode of practicing his patentee from obtaining in an
invention at the time he filed infringement suit protection
his application for subject matter which it
relinquished during
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IPL SYLLABUS 3B
prosecution in order to obtain important role in the international exchange of
allowance of the claims. information contained in patent documents.

The construing court may consult i. Unity of Invention

other sources, including the patent Section 38 on unity of invention requires that the
specification, the administrative application shall relate to one invention only or to a
record of patent acquisition, expert group of inventions forming a single general inventive
commentary from those of skill in the concept.
art, and other relevant extrinsic
evidence. If several independent inventions which do not form a
single general inventive concept are claimed in one
Importance: to secure to the patentee application, the Director may require that the
all to which he is entitled, and also to application be restricted to a single invention. A later
apprise the public of what is still open application filed for an invention divided out shall be
to them. Its purpose is to demarcate considered as having been filed on the same day as the
the boundaries of the purported first application: Provided, That the later application is
invention, in order to provide notice filed within four (4) months after the requirement to
to others of the limits beyond which divide becomes final, or within such additional time,
experimentation and invention are not exceeding four (4) months, as may be granted:
undertaken at the risk of infringement. Provided further, That each divisional application shall
Furthermore, claims would cover the not go beyond the disclosure in the initial application.
entire extent of the protection being
sought. The fact that a patent has been granted on an
application that did not comply with the requirement
v. Abstract of unity of invention shall not be a ground to cancel
The abstract shall consist of a concise the patent.
summary of the disclosure of the invention as
contained in the description, claims and j. Requirement for restriction or division
drawings in preferably not more than 150 If two or more independent and distinct inventions are
words. It must be drafted in a way which claimed in a single application and they are of such a
allows the clear understanding of the technical nature that a single patent may not be issued to cover
problem, the gist of the solution of that them, the applicant will be required to elect the
problem through the invention, and the invention to which his claim shall be restricted.
principal use or uses of the invention. The
abstract shall merely serve for technical *Rule against Double Patenting: purpose is to
information. prevent an inventor from effectively extending the
term of exclusivity by the subsequent patenting of
The abstract presents a short summary of the variations that are not patentably distinct from the
description and the claims. It serves the first-patented invention.
purpose of enabling anybody interested in
obtaining quick information about the Procedure for Registration
essential contents of the invention. In view of I. Filing of the application
its conciseness, the abstract can be easily Date of Filing v Filing Date
translated. Abstracts, therefore, play an The date of application is the date when the
applicant went to the IPO office.
 A. N. L.
IPL SYLLABUS 3B
be made available for inspection without the
The filing date is once the IPO was satisfied consent of the applicant.
that all formal requirements are there then
they will accord, designate or fix and declare RIGHTS ACQUIRED AFTER PUBLICATION
the filing date of the application. Sec. 46. The applicant shall have all the
rights of a patentee under Section 76
*Rights of Patentee are acquired from the time against any person who, without his
of approval of application but it retroacts from authorization, exercised any of the rights
the time of the filing of application. conferred under Section 71 of this Act in
*Formal Examination: determines whether the relation to the invention claimed in the
formal requirements have been complied with. published patent application, as if a patent
had been granted for that invention:
RIGHTS ACQUIRED ON FILING ON Provided, That the said person had:
APPLICATION (Priority Right)
Sec. 31. Right of Priority - An 46.1. Actual knowledge that
application for patent filed by any person the invention that he was using
who has previously applied for the same was the subject matter of a
invention in another country which by published application; or
treaty, convention, or law affords similar
privileges to Filipino citizens, shall be 46.2. Received written notice
considered as filed as of the date of filing that the invention that he was using
the foreign application: Provided, That: (a) was the subject matter of a
the local application expressly claims published application being
priority; (b) it is filed within twelve (12) identified in the said notice by its
months from the date the earliest foreign serial number: Provided, That the
application was filed; and (c) a certified action may not be filed until after
copy of the foreign application together the grant of a patent on the
with an English translation is filed within published application and within
six (6) months from the date of filing in four (4) years from the commission
the Philippines. of the acts complained of.

II. Classification and Search The right of the applicant under Sec. 46
Sec. 43. An application that has complied with is subject to Sections 68 and 73:
the formal requirement shall be classified and a
search conducted to determine the prior art. Sec. 68. Remedies of the True and Actual
Inventor. If a person, who was deprived
III. Publication of the patent without his consent or through
*Publication must be made in IPO Gazette. fraud is declared by final court order or
Confidentiality: All matters before publication decision to be the true and actual inventor,
is confidential It is the publication that makes the court shall order for his substitution as
the application known to the whole world. patentee, or at the option of the true
inventor, cancel the patent, and award
Sec. 45. Confidentiality Before Publication. - actual and other damages in his favor if
A patent application, which has not yet been warranted by the circumstances.
published, and all related documents, shall not
 A. N. L.
IPL SYLLABUS 3B
Sec. 73. Prior User.
73.1. Notwithstanding Section 72 hereof, Sec. 47 is apparently intended to allow
any prior user, who, in good faith was interested third parties to submit their
using the invention or has undertaken observations in writing concerning the
serious preparations to use the invention in patentability of the invention. These
his enterprise or business, before the filing observations may include, among others, the
date or priority date of the application on existence of enabling prior art that may
which a patent is granted, shall have the defeat the novelty of the invention.
right to continue the use thereof as
envisaged in such preparations within the The IPO has an obligation to inform the
territory where the patent produces its applicant of these observations so that the
effect. latter may comment thereon. However,
since the patent application has actually been
73.2. The right of the prior user may only published, the IP Office is not required to take
be transferred or assigned together with his any action ex parte on the published
enterprise or business, or with that part of application beyond acknowledging such
his enterprise or business in which the use observations and comment in the file of the
or preparations for use have been made. application it relates.

*Sec. 72 appears to exempt a prior user The third party who submitted his
in good faith from any infringement observations can challenge the validity of
liability in favor of the patentee, but such the patent in an appropriate action. He is
protection is unnecessary since if there was not precluded from doing so.
a prior user of the invention that was
subsequently obtained, this negates the The third party observations concerning
novelty of the subsequent application, the patentability may relate to:
which should in fact be the subject of the 1) Availability to the public of a prior art
cancellation proceedings. anywhere in the world before the filing
date or priority date of application.
IV. Observation by Third Parties 2) A single sale of the invention can bar
Sec. 47. Following the publication of the patentability.
patent application, any person may present 3) An invention described in a printed
observations in writing concerning the publication more than a year prior to the
patentability of the invention. Such date of the application is a prior art (even
observations shall be communicated to the if the author of the publication is the
applicant who may comment on them. The applicant).
Office shall acknowledge and put such 4) Research and test reports, government
observations and comment in the file of documents, classified or not, are printed
the application to which it relates. publications.
5) College theses with potentially
It bears emphasis that under Sec. 45 a patent anticipatory material may or may not be a
application, which has not yet been published, printed publication, depending on the
and all related documents, shall not be made manner of their storage and the degree of
available for inspection without the consent of availability to the public.
the applicant.
 A. N. L.
IPL SYLLABUS 3B
6) Microfilm copies (master copy or original application and is outside the
ultimate paper copy) are printed publication original drawings and specifications.
depending on public accessibility.
Ratio: to set forth more clearly or
The standard applied in determining accurately the invention originally applied
whether the document can be located, for and described.
recognized, and comprehended is that of a
reasonable diligence exercised by a person VII. Grant of patent
interested and ordinarily skilled in the Sec. 71.1. A patent shall confer on its
subject matter or art. Documents may not owner the following exclusive rights:
be deemed printed publications where their (a) Where the subject matter of a patent is
storage is so poor that the public and persons a product, to restrain, prohibit and
skilled in the particular art cannot access prevent any unauthorized person or
them, such as where documents are stored in a entity from making, using, offering for
warehouse-like library and merely dumped sale, selling or importing that product;
into boxes. (b) Where the subject matter of a patent is
a process, to restrain, prevent or
V. Substantive Examination prohibit any unauthorized person or
Sec 48.1. The application shall be deemed entity from using the process, and from
withdrawn unless within six (6) months manufacturing, dealing in, using, selling
from the date of publication under Section or offering for sale, or importing any
41, a written request to determine whether product obtained directly or indirectly
a patent application meets the requirements from such process.
of Sections 21 to 27 and Sections 32 to 39
and the fees have been paid on time. 71.2. Patent owners shall also have the
right to assign, or transfer by succession
48.2. Withdrawal of the request for the patent, and to conclude licensing
examination shall be irrevocable and shall contracts for the same. Each and every
not authorize the refund of any fee. one of these acts may, lawfully, be carried
out only with the authorization of the
VI. Amendment owner
Sec. 49. An applicant may amend the
patent application during examination: k. Doctrine of Constructive Reduction to Practice
Provided, That such amendment shall not So when does an invention exist in legal
include new matter outside the scope of the contemplation? It is submitted that an invention
disclosure contained in the application as exists within the meaning of the patent law when it is
filed. taken out of the realm of speculation into that of
reality. Briefly stated, the history, substance and
GR: Amendment is allowed. For example: application of doctrine of constructive reduction to
adding a name of an omitted co-inventor practice are as follows:
or deletion of a name erroneously added. 1. Taking the invention out of the realm of
speculation into that of fact. He must have actually
XPN: No amendment may introduce new built the invention for it to exists and be available
matter which is not disclosed in the to the public.
 A. N. L.
IPL SYLLABUS 3B
2. Actual reduction to practice is not required if a 30.1. The person who commissions the work shall
complete allowable application for a patent is own the patent, unless otherwise provided in the
filed. It is called constructive reduction to practice. contract.
3. The patentee must claim his invention. 30.2. In case the employee made the invention in the
4. The doctrine has no application to an unclaimed course of his employment contract, the patent shall
invention. belong to:
(a) The employee, if the inventive activity is not a part
Reduction to practice consists of making and using the of his regular duties even if the employee uses the
invention so that it has a physical existence. This does time, facilities and materials of the employer.
not mean the mere making of sketches or description. (b) The employer, if the invention is the result of the
The invention must be taken out of the realm of performance of his regularly-assigned duties, unless
speculation into that of reality. there is an agreement, express or implied, to the
contrary.
l. Inventor
I. Joint invention Shop right of the employee
One need not conceive the entire invention alone Employers may have an interest in the creative
for this shall obviate the concept of joint products of their employees. For example, an
inventorship. However, the contribution must be a employer may obtain a shop right in employee
significant manner to the conception of the inventions where it has contributed to the development
invention. Hence, each inventor must contribute to of the invention. A shop right permits the employer to
the joint arrival at a definite and permanent idea use the employee’s invention without any liability for
of the invention as it will be used in practice. infringement.

REQUIREMENTS FOR JOINT INVENTORSHIP m. Infringement of a patent

Inventors may apply for a patent jointly even I. Doctrine of Equivalents
though: Recognizes that minor modifications in a patented
1. They did not physically work together or at the invention are sufficient to put the item beyond the
same time; scope of literal infringement. Under this, an
2. Each did not make the same type or amount of infringement also occurs when a device appropriates a
contribution prior invention by incorporating its innovative concept
3. Each did not make a contribution to the subject and, albeit with some modification and change,
matter of every claim of the patent. performs substantially the same function in
substantially the same way to achieve substantially the
What is required is quantum of collaboration or same result.
connection. Each joint inventor must generally
contribute to the conception of the invention. A II. Literal Infringement
co-inventor need not make a contribution to every Resort must be had, in the first instance, to the words
claim of a patent. A contribution to one claim is of the claim. If accused matter falls clearly within the
enough. claim, infringement is made out and that is the end of
it. The Court must juxtapose the claims of the patent
II. Commissioned inventions/employee inventions and the accused product within the over all context of
Section 30. Inventions Created Pursuant to a the claims and specifications, to determine whether
Commission. - there is exact identity of all material elements.

III. Exceptions
 A. N. L.
IPL SYLLABUS 3B
1. Compulsory licensing: authorization to exploit or offer was primarily for profit rather than for
the invention, given by a governmental authority, experimental purposes. All circumstances
generally only in very special cases, defined in the surrounding the sale or offer to sell, including the
law, and only where the entity wishing to exploit stage of development of the invention and the
the patented invention is unable to obtain the nature of the invention must be considered and
authorization of the owner of the patent for weighed.
invention. It usually has the fixing of the
remuneration for the patentee and may be subject Factors considered in determining experimental use:
to appeal. There must be consideration of the totality of the
circumstances and the policies underlying the
USE OF INVENTIONS BY public use bar. The length of the test period of
GOVERNMENT the invention or similar devices, whether the
Sec. 74.1. A Government agency or third inventor received payment for testing, any
person authorized by the Government may agreement maintaining confidential use, records of
exploit the invention even without testing, persons involved, and the number of tests
agreement of the patent owner where: are considered.
(a) the public interest, in particular,
national security, nutrition, health or the 3. Prior Use
development of other sectors, as determined Sec. 73.1. Notwithstanding Section 72 hereof, any
by the appropriate agency of the prior user, who, in good faith was using the
government, so requires; or invention or has undertaken serious preparations to
(b) A judicial or administrative body has use the invention in his enterprise or business,
determined that the manner of exploitation, before the filing date or priority date of the
by the owner of the patent or his licensee, application on which a patent is granted, shall
is anti-competitive. have the right to continue the use thereof as
envisaged in such preparations within the territory
74.2. The use by the Government, or third where the patent produces its effect.
person authorized by the Government shall
be subject, mutatis mutandis, to the Preservation of Existing Rights
conditions set forth in Sections 95 to 97 Sec. 236. Nothing herein shall adversely
and 100 to 102. affect the rights on the enforcement of
rights in patents, utility models, industrial
The government is treated like a licensee designs, marks and works, acquired in
of the patentee. Therefore, the government good faith prior to the effective date of this
is also liable to the patentee for royalties. Act.

2. Scientific research and experimentation Sec. 73.2. The right of the prior user may
A sale by the inventor for experimental purposes only be transferred or assigned together
precludes the application of the on-sale bar. with his enterprise or business, or with
Similarly, an experimental use by a third party that part of his enterprise or business in
without the inventor’s authority precludes liability which the use or preparations for use have
for infringement. How is sale determined? That the been made.
invention asserted to be on sale was operable, the
complete invention was embodied in or obvious in *Sec. 73 creates an exception from the
view of the device offered for sale, and the sale rule that the inventor has the exclusive
 A. N. L.
IPL SYLLABUS 3B
right to make, use and sell the patented under the patent without having to go
product. It also exempts from any liability through the statutory provisions relating to
for infringement any prior user under Sec. compulsory license.
73.1. It tempers the rigid application of (If breached -> contempt of court)
the first-to-file rule.
Destruction of Infringing Items
However, the exemption only covers the
use limited to the prior user’s business or Damages or Account of Profits: These
enterprise. alternatives are mutually exclusive. The
choice depend upon the facts.
It is also worth noting that the prior user
is clearly a prior inventor himself whose A common approach has been to assess
exploitation and use of the invention damages on the basis of a notional arm’s
constitutes enabling prior art under the length license: this will arise for example
absolute novelty rule in Sec. 21. Hence, when the parties are competitors and is
he can also seek cancellation of the usually appropriate to patent and registered
subsequent patent for lack of novelty. design cases. Damages for past infringement
are then based upon payment of a royalty in
IV. Prescriptive Period respect of, for example, each infringing
Sec. 54. Term of Patent. - The term of a patent shall be article.
twenty (20) years from the filing date of the
application. Another approach which is more difficult
to prove is through consideration of sales
V. Remedies lost to the Plaintiff; in this case the
Civil Action for Infringement plaintiff is entitled to the entire lost profit.
TRO/ Preliminary Injunction:
The main purpose of which is usually Criminal Action for Infringement
described as being to preserve the status quo Section 84. Criminal Action for Repetition of
until the hearing of the main action. The Infringement. - If infringement is repeated by the
primary matter with which the court is infringer or by anyone in connivance with him
concerned is the maintenance of a position after finality of the judgment of the court against
that will most easily enable justice to be done the infringer, the offenders shall, without prejudice
when the final determination is made. to the institution of a civil action for damages, be
criminally liable therefor and, upon conviction,
Thus, a court will sometimes order that an shall suffer imprisonment for the period of not
earlier position be restored, or that the parties less than six (6) months but not more than three
arrange their affairs in some other way that is (3) years and/or a fine of not less than One
more in accordance with the requirements of hundred thousand pesos (P100,000) but not more
justice. than Three hundred thousand pesos (P300,000), at
the discretion of the court. The criminal action
Permanent/Final Injunction: herein provided shall prescribe in three (3) years
Granted based on the discretion of the court from date of the commission of the crime.
and only in unusual situations. The grant of
injunction would result to enabling the Infringement entails only civil liability upon the
defendant to take a compulsory license infringer in the first instance. But it becomes a
 A. N. L.
IPL SYLLABUS 3B
criminal offense when it is repeated by the infringer or with a medical prescription or acts concerning the
by anyone in connivance with him after finality of the medicine so prepared;
judgement of the court against the infringer.
72.5. Where the invention is used in any ship,
VI. Contributory Infringement: where a person does vessel, aircraft, or land vehicle of any other
not do the infringing act per se but rather encourages, country entering the territory of the Philippines
or incites or abets, another person or persons to temporarily or accidentally: Provided, That such
commit the infringing act. invention is used exclusively for the needs of the
ship, vessel, aircraft, or land vehicle and not used
VII. Defenses against Infringement for the manufacturing of anything to be sold
Section 81. Defenses in Action for Infringement. - within the Philippines.
In an action for infringement, the defendant, in
addition to other defenses available to him, may *Additional
show the invalidity of the patent, or any claim Prior User
thereof, on any of the grounds on which a Under section 72.1, notwithstanding section 72 on
petition of cancellation can be brought under limitations of patent rights, any prior user, who, in
Section 61 hereof. (Sec. 45, R.A. No. 165) good faith was using the invention or has
undertaken serious preparations to use the
n. Limitations on Patent Rights/Non-Infringing invention in his enterprise or business, before the
Acts filing date or priority date of the application on
Sec. 72. The owner of a patent has no right to which a patent is granted, shall have the right to
prevent third parties from performing, without his continue the use thereof as envisaged in such
authorization, the acts referred to in Section 71 preparations within the territory where the patent
hereof in the following circumstances: produces its effect.

72.1. Using a patented product which has been 73.2. The right of the prior user may only be
put on the market in the Philippines by the transferred or assigned together with his enterprise
owner of the product, or with his express consent, or business, or with that part of his enterprise or
insofar as such use is performed after that product business in which the use or preparations for use
has been so put on the said market; have been made.

72.2. Where the act is done privately and on a Government or Public Use
noncommercial scale or for a non-commercial Sec. 74. Use of Invention by Government.
purpose: Provided, That it does not significantly -
prejudice the economic interests of the owner of the
patent; 74.1. A Government agency or third
person authorized by the Government may
72.3. Where the act consists of making or using exploit the invention even without
exclusively for the purpose of experiments that agreement of the patent owner where:
relate to the subject matter of the patented (a) The public interest, in particular,
invention; national security, nutrition, health or the
development of other sectors, as determined
72.4. Where the act consists of the preparation by the appropriate agency of the
for individual cases, in a pharmacy or by a government, so requires; or
medical professional, of a medicine in accordance
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IPL SYLLABUS 3B
(b) A judicial or administrative body has exploit a patented invention, even without the
determined that the manner of exploitation, agreement of the patent owner, in favor of any
by the owner of the patent or his licensee, person who has shown his capability to exploit the
is anticompetitive. invention, under any of the following
circumstances:
74.2. The use by the Government, or third
person authorized by the Government shall 93.1. National emergency or other circumstances of
be subject, mutatis mutandis, to the extreme urgency;
conditions set forth in Sections 95 to 97
and 100 to 102. 93.2. Where the public interest, in particular,
national security, nutrition, health or the
Pursuant to section 74.2 the use by the development of other vital sectors of the national
governement or third person authorized by the economy as determined by the appropriate agency
government shall be subject, MUTATIS of the Government, so requires; or
MUTANDIS to the conditions set forth in sections
95 to 97 and 100 to 102 (these relate to the 93.3. Where a judicial or administrative body has
compulsory licensing of patented inventions) determined that the manner of exploitation by the
owner of the patent or his licensee is anti-
o. Compulsory Licensing competitive; or
Compulsory license - granted by law
Voluntary License - contractual 93.4. In case of public non-commercial use of the
patent by the patentee, without satisfactory reason;
i. Concept: authorization to exploit the invention,
given by a governmental authority, generally 93.5. If the patented invention is not being worked
only in very special cases, defined in the law, in the Philippines on a commercial scale, although
and only where the entity wishing to exploit capable of being worked, without satisfactory
the patented invention is unable to obtain the reason: Provided, That the importation of the
authorization of the owner of the patent for patented article shall constitute working or using
invention. It usually has the fixing of the the patent. (Secs. 34, 34-A, and 34-B, R. A. No.
remuneration for the patentee and may be 165a)
subject to appeal.
v. Requisites
ii. Purpose/objective Sec. 97. If the invention protected by a patent,
hereafter referred to as the "second patent," within
iii. Who can secure a compulsory license the country cannot be worked without infringing
Sec. 95.1. The license will only be granted after another patent, hereafter referred to as the "first
the petitioner has made efforts to obtain patent," granted on a prior application or
authorization from the patent owner on reasonable benefiting from an earlier priority, a compulsory
commercial terms and conditions but such efforts license may be granted to the owner of the
have not been successful within a reasonable second patent to the extent necessary for the
period of time. working of his invention, subject to the following
conditions:
iv. Grounds
Sec. 93. Grounds for Compulsory Licensing. - The 97.1. The invention claimed in the second patent
Director of Legal Affairs may grant a license to involves an important technical advance of
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IPL SYLLABUS 3B
considerable economic significance in relation to afforded to the legitimate interest of the licensee;
the first patent; and

97.2. The owner of the first patent shall be 100.6. The patentee shall be paid adequate
entitled to a cross-license on reasonable terms to remuneration taking into account the economic
use the invention claimed in the second patent; value of the grant or authorization, except that in
cases where the license was granted to remedy a
97.3. The use authorized in respect of the first practice which was determined after judicial or
patent shall be non-assignable except with the administrative process, to be anti-competitive, the
assignment of the second patent; and need to correct the anti-competitive practice may
be taken into account in fixing the amount of
97.4. The terms and conditions of Sections 95, remuneration.
96 and 98 to 100 of this Act.
vii. Procedure
Sec. 94. Period for Filing a Petition for a
vi. Conditions Compulsory License. -
Terms and Conditions of Compulsory License 94.1. A compulsory license may not be applied for
Sec. 100. The basic terms and conditions on the ground stated in Subsection 93.5 before the
including the rate of royalties of a compulsory expiration of a period of four (4) years from the
license shall be fixed by the Director of Legal date of filing of the application or three (3) years
Affairs subject to the following conditions: from the date of the patent whichever period
expires last.
100.1. The scope and duration of such license
shall be limited to the purpose for which it was 94.2. A compulsory license which is applied for
authorized;’ on any of the grounds stated in Subsections 93.2,
93.3, and 93.4 and Section 97 may be applied for
100.2. The license shall be non-exclusive; at any time after the grant of the patent. (Sec.
34[1], R. A. No. 165)
100.3. The license shall be non-assignable, except
with that part of the enterprise or business with Sec. 98. Form and Contents of Petition. - The
which the invention is being exploited; petition for compulsory licensing must be in
writing, verified by the petitioner and accompanied
100.4. Use of the subject matter of the license by payment of the required filing fee. It shall
shall be devoted predominantly for the supply of contain the name and address of the petitioner as
the Philippine market: Provided, That this well as those of the respondents, the number and
limitation shall not apply where the grant of the date of issue of the patent in connection with
license is based on the ground that the patentee’s which compulsory license is sought, the name of
manner of exploiting the patent is determined by the patentee, the title of the invention, the
judicial or administrative process, to be anti- statutory grounds upon which compulsory license
competitive. is sought, the ultimate facts constituting the
petitioner's cause of action, and the relief prayed
100.5. The license may be terminated upon for. (Sec. 34-D, R. A. No. 165)
proper showing that circumstances which led to
its grant have ceased to exist and are unlikely to Sec. 99. Notice of Hearing. -
recur: Provided, That adequate protection shall be
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IPL SYLLABUS 3B
99.1. Upon filing of a petition, the Director of and cause notice thereof to be published in the
Legal Affairs shall forthwith serve notice of the IPO Gazette.
filing thereof upon the patent owner and all
persons having grants or licenses, or any other ix. Surrender of Compulsory License
right, title or interest in and to the patent and Amendment, Cancellation, Surrender of
invention covered thereby as appears of record in Compulsory License
the Office, and of notice of the date of hearing Sec. 101.1. Upon the request of the patentee or
thereon, on such persons and petitioner. The the licensee, the Director of Legal Affairs may
resident agent or representative appointed in amend the decision granting the compulsory
accordance with Section 33 hereof, shall be bound license, upon proper showing of new facts or
to accept service of notice of the filing of the circumstances justifying such amendment.
petition within the meaning of this Section.
101.2. Upon the request of the patentee, the said
99.2. In every case, the notice shall be published Director may cancel the compulsory license:
by the said Office in a newspaper of general (a) If the ground for the grant of the compulsory
circulation, once a week for three (3) consecutive license no longer exists and is unlikely to recur;
weeks and once in the IPO Gazette at applicant’s (b) If the licensee has neither begun to supply
expense. (Sec. 34-E, R. A. No. 165) the domestic market nor made serious preparation
therefor;
viii.Grounds for Cancellation (c) If the licensee has not complied with the
Amendment, Cancellation, Surrender of prescribed terms of the license;
Compulsory License
Sec. 101.1. Upon the request of the patentee or 101.3. The licensee may surrender the license by
the licensee, the Director of Legal Affairs may a written declaration submitted to the Office.
amend the decision granting the compulsory
license, upon proper showing of new facts or 101.4. The said Director shall cause the
circumstances justifying such amendment. amendment, surrender, or cancellation in the
Register, notify the patentee, and/or the licensee,
101.2. Upon the request of the patentee, the said and cause notice thereof to be published in the
Director may cancel the compulsory license: IPO Gazette.
(a) If the ground for the grant of the compulsory
license no longer exists and is unlikely to recur;
(b) If the licensee has neither begun to supply Licensee’s Exemption from Liability
the domestic market nor made serious preparation Sec. 102. Any person who works a patented
therefor; product, substance and/or process under a license
(c) If the licensee has not complied with the granted under this Chapter, shall be free from any
prescribed terms of the license; liability for infringement: Provided however, That
in the case of voluntary licensing, no collusion
101.3. The licensee may surrender the license by with the licensor is proven. This is without
a written declaration submitted to the Office. prejudice to the right of the rightful owner of the
patent to recover from the licensor whatever he
101.4. The said Director shall cause the may have received as royalties under the license.
amendment, surrender, or cancellation in the
Register, notify the patentee, and/or the licensee, p. Assignment
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IPL SYLLABUS 3B
Sec. 104. Assignment of Inventions. - An 106.2. Such instruments shall be void as against
assignment may be of the entire right, title or any subsequent purchaser or mortgagee for
interest in and to the patent and the invention valuable consideration and without notice, unless,
covered thereby, or of an undivided share of the it is so recorded in the Office, within three (3)
entire patent and invention, in which event the months from the date of said instrument, or prior
parties become joint owners thereof. An to the subsequent purchase or mortgage. (Sec. 53,
assignment may be limited to a specified territory. R. A. No. 165a
(Sec. 51, R. A. No. 165)
Assignment v Licensing
Total – assignment of the entire patent; the title is *An assignment of patent rights operates to
transferred transfer title to the patent, while a license leaves
Partial – some but not all of the rights. title in the patent owner (no transfer of title).

There are 2 kinds of partial patent: (Sec. 103. Transmission of Rights. -

o Separate rights: assigning right to sell only or to 103.1 Patents or applications for patents and
use only invention to which they relate, shall be protected
o Pro-indiviso: undivided share in the same way as the rights of other property
under the Civil Code.
Form of Assignment
Sec. 105. Form of Assignment. - The assignment 103.2. Inventions and any right, title or interest in
must be in writing, acknowledged before a notary and to patents and inventions covered thereby,
public or other officer authorized to administer may be assigned or transmitted by inheritance or
oath or perform notarial acts, and certified under bequest or may be the subject of a license
the hand and official seal of the notary or such contract.
other officer.
o An assignment of a patent, or of the
Recording of the assignment invention upon which a patent is
Sec. 106. Recording. - subsequently granted to the assignee,
106.1. The Office shall record assignments, though not required to be under seal,
licenses and other instruments relating to the works an estoppels by deed, preventing the
transmission of any right, title or interest in and assignor from denying the novelty and
to inventions, and patents or application for utility of the patented invention when sued
patents or inventions to which they relate, which by the assignee for infringement
are presented in due form to the Office for
registration, in books and records kept for the Sec. 107. Rights of Joint Owners. - If two (2)
purpose. The original documents together with a or more persons jointly own a patent and the
signed duplicate thereof shall be filed, and the invention covered thereby, either by the issuance
contents thereof should be kept confidential. If the of the patent in their joint favor or by reason of
original is not available, an authenticated copy the assignment of an undivided share in the patent
thereof in duplicate may be filed. Upon recording, and invention or by reason of the succession in
the Office shall retain the duplicate, return the title to such share, each of the joint owners shall
original or the authenticated copy to the party who be entitled to personally make, use, sell, or import
filed the same and notice of the recording shall be the invention for his own profit: Provided,
published in the IPO Gazette. however, That neither of the joint owners shall be
entitled to grant licenses or to assign his right,
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IPL SYLLABUS 3B
title or interest or part thereof without the consent may, upon payment of the prescribed fee, convert
of the other owner or owners, or without his application into an application for
proportionally dividing the proceeds with such registration of a utility model, which shall be
other owner or owners. accorded the filing date of the initial application.
An application may be converted only once.
*Licensee is not allowed to maintain a suit for
infringement and that to entitle an assignee or e. Conversion from Utility model to invention
grantee to do so, he must first have a valid 110.2. At any time before the grant or refusal of
assignment. a utility model registration, an applicant for a
utility model registration may, upon payment of
*An assignment of patent rights operates to the prescribed fee, convert his application into a
transfer title to the patent, while a license leaves patent application, which shall be accorded the
title in the patent owner) filing date of the initial application.

4. UTILITY MODEL f. Parallel Application

a. Concept and Elements: Sec. 111. An applicant may not file two (2)
I. New applications for the same subject, one for utility
II. Industrially Applicable model registration and the other for the grant of a
patent whether simultaneously or consecutively.
A utility model is a technical solution to a problem in
any field of human activity which is new and APPLICABILITY OF PROVISIONS
industrially applicable. It may be, or may relate to, a RELATING TO PATENTS
product, or process, or any improvement of any of the Sec. 108.1. Subject to Section 109, the provisions
aforesaid. Essentially, utility model refers to an governing patents shall apply, mutatis mutandis, to
invention in the mechanical field. This is the reason the registration of utility models.
why its object is sometimes described as a device or
useful object. 108.2. Where the right to a patent conflicts with
the right to a utility model registration in the case
b. Requisites of Patentability referred to in Section 29, the said provision shall
Sec. 109.1. (a) An invention qualifies for apply as if the word patent were replaced by the
registration as a utility model if it is new and words "patent or utility model registration."
industrially applicable. (b) Section 21, "Patentable
Inventions", shall apply except the reference to SPECIAL PROVISIONS RELATING TO
inventive step as a condition of protection. UTILITY MODELS
109.4. In proceedings under Sections 61 to 64,
c. Term of Protection the utility model registration shall be canceled on
109.3. A utility model registration shall expire, the following grounds:
without any possibility of renewal, at the end of (a) That the claimed invention does not qualify
the seventh year after the date of the filing of the for registration as a utility model and does not
application. meet the requirements of registrability, in
particular having regard to Subsection 109.1
d. Conversion from invention to Utility Model and Sections 22, 23, 24 and 27;
Application (b) That the description and the claims do not
Sec. 110.1. At any time before the grant or comply with the prescribed requirements;
refusal of a patent, an applicant for a patent
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IPL SYLLABUS 3B
(c) That any drawing which is necessary for the dimensional form, whether or not associated with
understanding of the invention has not been lines or colors: Provided,That such composition or
furnished; form gives a special appearance to and can serve
(d) That the owner of the utility model as pattern for an industrial product or handicraft;
registration is not the inventor or his successor
in title. Sec. 113.2. Industrial designs dictated essentially
by technical or functional considerations to obtain
UTILITY MODELS AND INVENTIONS a technical result or those that are contrary to
COMPARED public order, health or morals shall not be
Utility models differ from inventions for which protected.
patents for invention are available mainly in two
respects: b. Design dedicated by function
1) In the case of an invention called “utility No functionality requirement in obtaining a design
model,” the technological progress required is patent. A design patent cannot be obtained to
smaller than that of an invention protect a mechanical function or cover an article
2) The maximum term of protection provided in whose configuration affects utility alone.
the law for a utility model is generally much Patentability is based on the design of the thing,
shorter than the maximum term of that of an not the use. The design of a useful article is
invention. deemed to be “functional,” and thus not
patentable, when the appearance of the claimed
UTILITY MODEL NOT CONSIDERED NEW design is dictated by the use or purpose of the
It is not considered new if it is substantially article; if a particular design is essential to the use of
similar to any utility model so known, used or the article, it cannot be the subject of a design patent.
described within the country. If two devices do
the same work in substantially the same way But if other designs could produce the same or
accomplishing the same result—they are the same, similar functional capabilities, the design of the
even though they differ in name, form or shape. article in question is likely ornamental, not
functional.
*The Chapter on Utility Model dispenses with the
substantive examination of utility models and opts c. Term of Protection
for simple registration system. (See Sec. 109.2) Sec. 118.1. The registration of an industrial design
shall be for a period of five (5) years from the
However, utility models must be new and filing date of the application.
industrially applicable to qualify for registration.
Otherwise, it is a ground for cancellation of the 118.2. The registration of an industrial design may
registration. be renewed for not more than two (2) consecutive
periods of five (5) years each, by paying the
renewal fee.
5. INDUSTRIAL DESIGN
a. Concept and Elements 118.3. The renewal fee shall be paid within
I. New twelve (12) months preceding the expiration of the
II. Useful Design period of registration. However, a grace period of
six (6) months shall be granted for payment of
Sec. 112. An Industrial Design is any the fees after such expiration, upon payment of a
composition of lines or colors or any three- surcharge.
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IPL SYLLABUS 3B
(c) In the event the technology transfer
118.4. The Regulations shall fix the amount of arrangement shall provide for arbitration, the
renewal fee, the surcharge and other requirements Procedure of Arbitration of the Arbitration
regarding the recording of renewals of registration. Law of the Philippines or the Arbitration Rules
of the United Nations Commission on
118.5. Registration of a layout-design shall be International Trade Law (UNCITRAL) or Rules
valid for a period often (10) years, without of Conciliation and Arbitration of the
renewal, and such validity to be counted from the International Chamber of Commerce (ICC)
date of commencement of the protection accorded shall apply and the venue of arbitration shall
to the layout-design. The protection of a layout- be the Philippines or any neutral country;
design under this Act shall commence: (d) The Philippine taxes on all payments relating
a) on the date of the first commercial to the technology transfer arrangement shall be
exploitation, anywhere in the world, of the borne by the licensor.
layout-design by or with the consent of the
right holder: Provided, That an application for b. Prohibited Clauses
registration is filed with the Intellectual The following provisions shall be deemed prima
Property Office within two (2) years from such facie to have an adverse effect on competition
date of first commercial exploitation; or and trade: (Quoted From SEC. 87, CHAPTER
b) on the filing date accorded to the application IX, PART II of the INTELLECTUAL PROPERTY
for the registration of the layout-design if the CODE)
layout-design has not been previously exploited
commercially anywhere in the world. (a) Those which impose upon the licensee the
obligation to acquire from a specific source
6. TECHNOLOGY TRANSFER capital goods, intermediate products, raw
ARRANGEMENTS materials, and other technologies, or of
Technology Transfer: transfer of systematic permanently employing personnel indicated by
knowledge for the manufacture of a product, the the licensor;
application of the process, or rendering of a (b) Those pursuant to which the licensor reserves
service including management contracts. the right to fix the sale or resale prices of
the products manufactured on the basis of the
a. Mandatory Provisions license;
The following provisions shall be included in (c) Those that contain restrictions regarding the
voluntary license contracts: (Quoted From SEC. volume and structure of production;
88, CHAPTER IX, PART II of the (d) Those that prohibit the use of competitive
INTELLECTUAL PROPERTY CODE) technologies in a non-exclusive technology
transfer arrangement;
(a) That the laws of the Philippines shall govern (e) Those that establish a full or partial purchase
the interpretation of the same and in the event option in favor of the licensor;
of litigation, the venue shall be the proper (f) Those that obligate the licensee to transfer for
court in the place where the licensee has its free to the licensor the inventions or
principal office; improvements that may be obtained through
(b) Continued access to improvements in the use of the licensed technology;
techniques and processes related to technology (g) Those that require payment of royalties to the
shall be made available during the period of owners of patents for patents which are not
the technology transfer arrangement; used;
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IPL SYLLABUS 3B
(h) Those that prohibit the licensee to export the unenforceable, unless said technology transfer
licensed product unless justified for the arrangement is approved and referred with the
protection of the legitimate interest of the Documentation, Information and Technology Transfer
licensor such as exports to countries where Bureau under the provisions of Section 91 on
exclusive licenses to manufacture and/or exceptional cases.
distribute the licensed product(s) have already
been granted;
(i) Those which restrict the use of the technology
supplied after expiration of technology transfer
arrangement, except in cases of early
termination of technology transfer arrangement
due to reason(s) attributable to the licensee;
(j) Those which require payments for patents and
other industrial property rights after their
expiration, termination arrangement;
(k) Those which require that the technology
recipient shall not contest the validity of any
patents of the technology supplier;
(l) Those which restrict the research and
development activities of the licensee designed
to absorb and adapt the transferred technology
to local conditions or to initiate research and
development programs in connection with new
products, processes or equipment;
(m) Those which prevent the licensee from
adapting the imported technology to local
conditions, or introducing innovation to it, as
long as it does not impair the quality
standards prescribed by the licensor;
(n) Those which exempt the licensor from liability
for non-fulfillment of his responsibilities under
the technology transfer arrangement and/or
liability arising from third party suits brought
about by the use of the licensed product or the
licensed technology; and
(o) Other clauses with equivalent effects.

c. Effect of Non-Registration
Section 92 states that technology transfer
arrangements that conform with the provisions of
Sections 86 and 87 need not be registered with the
Documentation, Information and Technology Transfer
Bureau. Non-conformance with any of the provisions
of Sections 87 and 88, however, shall automatically
render the technology transfer arrangement