INTELLECTUAL PROPERTY Section 13.

The State shall protect and secure the exclusive rights of scientists,
inventors, artists, and other gifted citizens to their intellectual property and creations,
INTRODUCTION particularly when beneficial to the people, for such period as may be provided by law.

A. General Principles of Intellectual Property System

2. International Agreements
B. Sources of Intellectual Property Law
2.1 Agreement on Trade-Related Aspects of the Intellectual Property Rights
1. 1987 Philippine Constitution (TRIPs Agreement)
Article XII, Secs. 6, 19 Tañada vs. Angara, 272 SCRA 18
Section 6. The use of property bears a social function, and all economic agents shall
contribute to the common good. Individuals and private groups, including corporations, Art. 1 – Nature and Scope of Obligation
cooperatives, and similar collective organizations, shall have the right to own, establish,
and operate economic enterprises, subject to the duty of the State to promote Article 1
distributive justice and to intervene when the common good so demands. Nature and Scope of Obligations
1. Members shall give effect to the provisions of this Agreement. Members may, but
shall not be obliged to, implement in their law more extensive protection than is required
Section 9. The Congress may establish an independent economic and planning by this Agreement, provided that such protection does not contravene the provisions of
agency headed by the President, which shall, after consultations with the appropriate this Agreement. Members shall be free to determine the appropriate method of
public agencies, various private sectors, and local government units, recommend to implementing the provisions of this Agreement within their own legal system and
Congress, and implement continuing integrated and coordinated programs and policies practice.
for national development. 2. For the purposes of this Agreement, the term “intellectual property” refers to all
categories of intellectual property that are the subject of Sections 1 through 7 of Part
II.
Until the Congress provides otherwise, the National Economic and Development 3. Members shall accord the treatment provided for in this Agreement to the nationals
Authority shall function as the independent planning agency of the government. of other Members. (1) In respect of the relevant intellectual property right, the nationals
of other Members shall be understood as those natural or legal persons that would
Article XIV, Secs. 10 – 13 meet the criteria for eligibility for protection provided for in the Paris Convention (1967),
SCIENCE AND TECHNOLOGY the Berne Convention (1971), the Rome Convention and the Treaty on Intellectual
Property in Respect of Integrated Circuits, were all Members of the WTO members of
those conventions. (2) Any Member availing itself of the possibilities provided in
Section 10. Science and technology are essential for national development and
paragraph 3 of Article 5 or paragraph 2 of Article 6 of the Rome Convention shall make
progress. The State shall give priority to research and development, invention,
a notification as foreseen in those provisions to the Council for Trade-Related Aspects
innovation, and their utilization; and to science and technology education, training, and
of Intellectual Property Rights (the “Council for TRIPS”).
services. It shall support indigenous, appropriate, and self-reliant scientific and
technological capabilities, and their application to the country’s productive systems and
national life. Readings:
2.1.1 Article 3 (National Treatment)
2.1.2. Article 4 (Most-Favoured-Nation Treatment), TRIPS Agreement
Section 11. The Congress may provide for incentives, including tax deductions, to
encourage private participation in programs of basic and applied scientific research.
Scholarships, grants-in-aid, or other forms of incentives shall be provided to deserving
Article 3
science students, researchers, scientists, inventors, technologists, and specially gifted
National Treatment
citizens.
1. Each Member shall accord to the nationals of other Members treatment no less
favourable than that it accords to its own nationals with regard to the protection (3) of
Section 12. The State shall regulate the transfer and promote the adaptation of intellectual property, subject to the exceptions already provided in, respectively, the
technology from all sources for the national benefit. It shall encourage the widest Paris Convention (1967), the Berne Convention (1971), the Rome Convention or the
participation of private groups, local governments, and community-based organizations Treaty on Intellectual Property in Respect of Integrated Circuits. In respect of
in the generation and utilization of science and technology. performers, producers of phonograms and broadcasting organizations, this obligation
only applies in respect of the rights provided under this Agreement. Any Member
availing itself of the possibilities provided in Article 6 of the Berne Convention (1971) or
paragraph 1(b) of Article 16 of the Rome Convention shall make a notification as
foreseen in those provisions to the Council for TRIPS.
2. Members may avail themselves of the exceptions permitted under paragraph 1 in (1) Under the provisions on national treatment, the Convention provides that, as
relation to judicial and administrative procedures, including the designation of an regards the protection of industrial property, each Contracting State must grant
address for service or the appointment of an agent within the jurisdiction of a Member, the same protection to nationals of other Contracting States that it grants to its own
only where such exceptions are necessary to secure compliance with laws and nationals. Nationals of non-Contracting States are also entitled to national treatment
regulations which are not inconsistent with the provisions of this Agreement and where under the Convention if they are domiciled or have a real and effective industrial or
such practices are not applied in a manner which would constitute a disguised commercial establishment in a Contracting State.
restriction on trade. (2) The Convention provides for the right of priority in the case of patents (and utility
models where they exist), marks and industrial designs. This right means that, on the
Article 4 basis of a regular first application filed in one of the Contracting States, the applicant
Most-Favoured-Nation Treatment may, within a certain period of time (12 months for patents and utility models; 6 months
With regard to the protection of intellectual property, any advantage, favour, privilege for industrial designs and marks), apply for protection in any of the other Contracting
or immunity granted by a Member to the nationals of any other country shall be States. These subsequent applications will be regarded as if they had been filed on the
accorded immediately and unconditionally to the nationals of all other Members. same day as the first application. In other words, they will have priority (hence the
Exempted from this obligation are any advantage, favour, privilege or immunity expression "right of priority") over applications filed by others during the said period of
accorded by a Member: time for the same invention, utility model, mark or industrial design. Moreover, these
(a) deriving from international agreements on judicial assistance or law enforcement subsequent applications, being based on the first application, will not be affected by
of a general nature and not particularly confined to the protection of intellectual any event that takes place in the interval, such as the publication of an invention or the
property; sale of articles bearing a mark or incorporating an industrial design. One of the great
practical advantages of this provision is that applicants seeking protection in several
(b) granted in accordance with the provisions of the Berne Convention (1971) or the countries are not required to present all of their applications at the same time but have
Rome Convention authorizing that the treatment accorded be a function not of 6 or 12 months to decide in which countries they wish to seek protection, and to
national treatment but of the treatment accorded in another country; organize with due care the steps necessary for securing protection.
(3) The Convention lays down a few common rules that all Contracting States must
(c) in respect of the rights of performers, producers of phonograms and broadcasting follow. The most important are:
organizations not provided under this Agreement; (a) Patents. Patents granted in different Contracting States for the same invention
are independent of each other: the granting of a patent in one Contracting State does
(d) deriving from international agreements related to the protection of intellectual not oblige other Contracting States to grant a patent; a patent cannot be refused,
property which entered into force prior to the entry into force of the WTO Agreement, annulled or terminated in any Contracting State on the ground that it has been refused
provided that such agreements are notified to the Council for TRIPS and do not or annulled or has terminated in any other Contracting State.
constitute an arbitrary or unjustifiable discrimination against nationals of other The inventor has the right to be named as such in the patent.
Members. The grant of a patent may not be refused, and a patent may not be invalidated, on the
ground that the sale of the patented product, or of a product obtained by means of the
patented process, is subject to restrictions or limitations resulting from the domestic
law.
2.2 Treaties/Conventions and International Agreements
World Trade Organization’s Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS Agreement) Each Contracting State that takes legislative measures providing for the grant of
WIPO Administered Treaties/Conventions compulsory licenses to prevent the abuses which might result from the exclusive rights
conferred by a patent may do so only under certain conditions. A compulsory license
• Paris Convention for the Protection of Intellectual Property (a license not granted by the owner of the patent but by a public authority of the State
concerned), based on failure to work or insufficient working of the patented invention,
may only be granted pursuant to a request filed after three years from the grant of the
Summary of the Paris Convention
The Paris Convention applies to industrial property in the widest sense, including patent or four years from the filing date of the patent application, and it must be refused
patents, trademarks, industrial designs, utility models (a kind of "small-scale patent" if the patentee gives legitimate reasons to justify this inaction. Furthermore, forfeiture
provided for by the laws of some countries), service marks, trade names (designations of a patent may not be provided for, except in cases where the grant of a compulsory
license would not have been sufficient to prevent the abuse. In the latter case,
under which an industrial or commercial activity is carried out), geographical indications
(indications of source and appellations of origin) and the repression of unfair proceedings for forfeiture of a patent may be instituted, but only after the expiration of
competition. two years from the grant of the first compulsory license.
(b) Marks. The Paris Convention does not regulate the conditions for the filing and
registration of marks which are determined in each Contracting State by domestic
The substantive provisions of the Convention fall into three main categories: national law. Consequently, no application for the registration of a mark filed by a national of a
treatment, right of priority, common rules. Contracting State may be refused, nor may a registration be invalidated, on the ground
that filing, registration or renewal has not been effected in the country of origin. The
registration of a mark obtained in one Contracting State is independent of its possible • Patent Cooperation Treaty
registration in any other country, including the country of origin; consequently, the lapse
or annulment of the registration of a mark in one Contracting State will not affect the Summary of the Patent Cooperation Treaty (PCT) (1970)
validity of the registration in other Contracting States.
Where a mark has been duly registered in the country of origin, it must, on request,
The Patent Cooperation Treaty (PCT) makes it possible to seek patent protection for
be accepted for filing and protected in its original form in the other Contracting States.
an invention simultaneously in each of a large number of countries by filing an
Nevertheless, registration may be refused in well-defined cases, such as where the
"international" patent application. Such an application may be filed by anyone who is a
mark would infringe the acquired rights of third parties; where it is devoid of distinctive
national or resident of a PCT Contracting State. It may generally be filed with the
character; where it is contrary to morality or public order; or where it is of such a nature
national patent office of the Contracting State of which the applicant is a national or
as to be liable to deceive the public.
resident or, at the applicant's option, with the International Bureau of WIPO in Geneva.
If, in any Contracting State, the use of a registered mark is compulsory, the registration
cannot be canceled for non-use until after a reasonable period, and then only if the
owner cannot justify this inaction. If the applicant is a national or resident of a Contracting State party to the European
Patent Convention, the Harare Protocol on Patents and Industrial Designs (Harare
Protocol), the Bangui Agreement, or the Eurasian Patent Convention, the international
Each Contracting State must refuse registration and prohibit the use of marks that
application may also be filed with the European Patent Office (EPO), the African
constitute a reproduction, imitation or translation, liable to create confusion, of a mark
Regional Intellectual Property Organization (ARIPO), the African Intellectual Property
used for identical and similar goods and considered by the competent authority of that
Organization (OAPI) or the Eurasian Patent Office (EAPO), respectively.
State to be well known in that State and to already belong to a person entitled to the
benefits of the Convention.
Each Contracting State must likewise refuse registration and prohibit the use of marks The Treaty regulates in detail the formal requirements with which international
that consist of or contain, without authorization, armorial bearings, State emblems and applications must comply.
official signs and hallmarks of Contracting States, provided they have been
communicated through the International Bureau of WIPO. The same provisions apply Filing a PCT application has the effect of automatically designating all Contracting
to armorial bearings, flags, other emblems, abbreviations and names of certain States bound by the PCT on the international filing date. The effect of the international
intergovernmental organizations. application is the same in each designated State as if a national patent application had
Collective marks must be granted protection. been filed with the national patent office of that State.
(c) Industrial Designs. Industrial designs must be protected in each Contracting State,
and protection may not be forfeited on the ground that articles incorporating the design The international application is subjected to an international search. That search is
are not manufactured in that State. carried out by one of the competent International Searching Authorities (ISA) under the
(d) Trade Names. Protection must be granted to trade names in each Contracting PCT [1] and results in an international search report, that is, a listing of the citations of
State without there being an obligation to file or register the names. published documents that might affect the patentability of the invention claimed in the
(e) Indications of Source. Measures must be taken by each Contracting State against international application. In addition, a preliminary and non-binding written opinion on
direct or indirect use of a false indication of the source of goods or the identity of their whether the invention appears to meet patentability criteria in light of the search report
producer, manufacturer or trader. results is also issued.
(f) Unfair competition. Each Contracting State must provide for effective protection The international search report and written opinion are communicated to the applicant
against unfair competition. who, after evaluating their content, may decide to withdraw the application, in particular
The Paris Union, established by the Convention, has an Assembly and an Executive where the content of the report and opinion suggests that the granting of patents is
Committee. Every State that is a member of the Union and has adhered to at least the unlikely, or the applicant may decide to amend the claims in the application.
administrative and final provisions of the Stockholm Act (1967) is a member of the
Assembly. The members of the Executive Committee are elected from among the If the international application is not withdrawn, it is published by the International
members of the Union, except for Switzerland, which is a member ex officio. The Bureau, together with the international search report. At the same time, the written
establishment of the biennial program and budget of the WIPO Secretariat – as far as opinion is made available on PATENTSCOPE.
the Paris Union is concerned – is the task of its Assembly.
The Paris Convention, concluded in 1883, was revised at Brussels in 1900, at Before the expiration of 22 months from the priority date, the applicant has the option
Washington in 1911, at The Hague in 1925, at London in 1934, at Lisbon in 1958 and to request a Supplementary International Searching Authority (SISA) (an ISA willing to
at Stockholm in 1967, and was amended in 1979. offer this service) to carry out an additional search of relevant documentation,
specifically focusing on documents in the particular language in which that authority
The Convention is open to all States. Instruments of ratification or accession must be specializes. The goal of this additional search is to reduce the likelihood of further
deposited with the Director General of WIPO. documents coming to light in the national phase that would make granting the patent
unlikely.
An applicant that decides to continue with the international application with a view to (vii) since each international application is published with an international search report,
seeking national (or regional) patents can, in relation to most Contracting States, wait third parties are in a better position to formulate a well-founded opinion about the
until the end of the thirtieth month from the priority date to commence the national potential patentability of the claimed invention; and
procedure before each designated office by furnishing a translation (where necessary)
of the application into the official language of that office, paying to it the necessary fees (viii) for applicants, international publication on PATENTSCOPE puts the world on
and acquiring the services of local patent agents. notice of their applications, which can be an effective means of advertising and looking
for potential licensees.
If the applicant wishes to make amendments to the application – for example, in order
to address documents identified in the search report and conclusions made in the Ultimately, the PCT:
written opinion – and to have the potential patentability of the "as-amended" application
reviewed – an optional international preliminary examination may be requested. The
• brings the world within reach;
result of the preliminary examination is an international preliminary report on
patentability (IPRP Chapter II) which is prepared by one of the competent International • streamlines the process of fulfilling diverse formality requirements;
Preliminary Examining Authorities (IPEA) under the PCT [2] and which contains a • postpones the major costs associated with international patent protection;
preliminary and non-binding opinion on the patentability of the claimed invention. It • provides a strong basis for patenting decisions; and
provides the applicant with an even stronger basis on which to evaluate the chances of • is used by the world's major corporations, research institutions and universities in
obtaining a patent and, if the report is favorable, a stronger basis on which to continue seeking international patent protection.
with the application before national and regional patent offices. If no international
preliminary examination has been requested, the International Bureau establishes an The PCT created a Union which has an Assembly. Every State party to the PCT is a
international preliminary report on patentability (IPRP Chapter I) on the basis of the member of the Assembly. Among the most important tasks of the Assembly are the
written opinion of the ISA and communicates this report to the designated offices. amendment of the Regulations issued under the Treaty, the adoption of the biennial
The procedure under the PCT has numerous advantages for applicants, patent offices program and budget of the Union and the fixing of certain fees connected with the use
and the general public: of the PCT system.

(i) applicants have up to 18 months more than if they had not used the PCT to reflect The Assembly of the PCT Union has established a special measure to benefit (1) an
on the desirability of seeking protection in foreign countries, appoint local patent agents applicant who is a natural person and who is a national of and resides in a State that is
in each foreign country, prepare the necessary translations and pay national fees; listed as being a State whose per capita gross domestic product is below US$ 25,000
(according to the most recent 10-year average per capita gross domestic product
(ii) applicants can rest assured that, if their international application is in the form figures at constant 2005 US$ values published by the United Nations), and whose
prescribed by the PCT, it cannot be rejected on formal grounds by any designated office nationals and residents who are natural persons have filed less than 10 international
during the national phase; applications per year (per million population) or less than 50 international applications
per year (in absolute numbers) according to the most recent five-year average yearly
(iii) on the basis of the international search report and the written opinion, applicants filing figures published by the International Bureau, and (2) applicants, whether natural
can evaluate with reasonable probability the chances of their invention being patented; persons or not, who are nationals of and reside in a State that is listed as being
classified by the United Nations as a LDC. That benefit consists of a reduction of 90
(iv) applicants have the possibility, during the optional international preliminary per cent of certain fees under the Treaty.
examination, to amend the international application and thus put it in order before
processing by the various patent offices; Details concerning the PCT can be obtained by consulting the PCT website, the PCT
Applicant's Guide, published by WIPO in English and French and the PCT Newsletter,
(v) the search and examination work of patent offices can be considerably reduced or published by WIPO in English.
eliminated thanks to the international search report, the written opinion and, where The PCT was concluded in 1970, amended in 1979 and modified in 1984 and in 2001.
applicable, the international preliminary report on patentability which are communicated
to designated offices together with the international application; It is open to States party to the Paris Convention for the Protection of Industrial Property
(1883). Instruments of ratification or accession must be deposited with the Director
(vi) applicants are able to access fast-track examination procedures in the national General of WIPO.
phase in Contracting States that have PCT-Patent Prosecution Highway (PCT-PPH)
agreements or similar arrangements; • Berne Convention for the Protection of Literary and Artistic
Works
Summary of the Berne Convention for the Protection of Literary and Artistic Works
(1886) (c) As to the duration of protection, the general rule is that protection must be granted
until the expiration of the 50th year after the author's death. There are, however,
The Berne Convention deals with the protection of works and the rights of their authors. exceptions to this general rule. In the case of anonymous or pseudonymous works, the
It is based on three basic principles and contains a series of provisions determining term of protection expires 50 years after the work has been lawfully made available to
the minimum protection to be granted, as well as special provisions available the public, except if the pseudonym leaves no doubt as to the author's identity or if the
to developing countries that want to make use of them. author discloses his or her identity during that period; in the latter case, the general rule
applies. In the case of audiovisual (cinematographic) works, the minimum term of
(1) The three basic principles are the following: protection is 50 years after the making available of the work to the public ("release") or
(a) Works originating in one of the Contracting States (that is, works the author of which – failing such an event – from the creation of the work. In the case of works of applied
is a national of such a State or works first published in such a State) must be given the art and photographic works, the minimum term is 25 years from the creation of the
same protection in each of the other Contracting States as the latter grants to the works work [5].
of its own nationals (principle of "national treatment") [1].
(b) Protection must not be conditional upon compliance with any formality (principle of (3) The Berne Convention allows certain limitations and exceptions on economic rights,
"automatic" protection) [2]. that is, cases in which protected works may be used without the authorization of the
(c) Protection is independent of the existence of protection in the country of origin of owner of the copyright, and without payment of compensation. These limitations are
the work (principle of "independence" of protection). If, however, a Contracting State commonly referred to as "free uses" of protected works, and are set forth in Articles
provides for a longer term of protection than the minimum prescribed by the Convention 9(2) (reproduction in certain special cases), 10 (quotations and use of works by way of
and the work ceases to be protected in the country of origin, protection may be denied illustration for teaching purposes), 10bis (reproduction of newspaper or similar articles
once protection in the country of origin ceases [3]. and use of works for the purpose of reporting current events) and 11bis(3) (ephemeral
(2) The minimum standards of protection relate to the works and rights to be recordings for broadcasting purposes).
protected, and to the duration of protection: (4) The Appendix to the Paris Act of the Convention also permits developing countries
(a) As to works, protection must include "every production in the literary, scientific and to implement non-voluntary licenses for translation and reproduction of works in certain
artistic domain, whatever the mode or form of its expression" (Article 2(1) of the cases, in connection with educational activities. In these cases, the described use is
Convention). allowed without the authorization of the right holder, subject to the payment of
remuneration to be fixed by the law.
(b) Subject to certain allowed reservations, limitations or exceptions, the following are
among the rights that must be recognized as exclusive rights of authorization: The Berne Union has an Assembly and an Executive Committee. Every country that is
▪ the right to translate, a member of the Union and has adhered to at least the administrative and final
▪ the right to make adaptations and arrangements of the work, provisions of the Stockholm Act is a member of the Assembly. The members of the
▪ the right to perform in public dramatic, dramatico-musical and musical Executive Committee are elected from among the members of the Union, except for
works, Switzerland, which is a member ex officio. The establishment of the biennial program
▪ the right to recite literary works in public, and budget of the WIPO Secretariat – as far as the Berne Union is concerned – is the
▪ the right to communicate to the public the performance of such works, task of its Assembly.
▪ the right to broadcast (with the possibility that a Contracting State may
The Berne Convention, concluded in 1886, was revised at Paris in 1896 and at Berlin
provide for a mere right to equitable remuneration instead of a right of
in 1908, completed at Berne in 1914, revised at Rome in 1928, at Brussels in 1948, at
authorization),
Stockholm in 1967 and at Paris in 1971, and was amended in 1979.
▪ the right to make reproductions in any manner or form (with the possibility
that a Contracting State may permit, in certain special cases, reproduction
without authorization, provided that the reproduction does not conflict with the The Convention is open to all States. Instruments of ratification or accession must be
normal exploitation of the work and does not unreasonably prejudice the deposited with the Director General of WIPO [6].
legitimate interests of the author; and the possibility that a Contracting State
may provide, in the case of sound recordings of musical works, for a right to
equitable remuneration), [1] Under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS
▪ the right to use the work as a basis for an audiovisual work, and the right Agreement), the principles of national treatment, automatic protection and independence of
to reproduce, distribute, perform in public or communicate to the public that protection also bind those World Trade Organization (WTO) Members not party to the Berne
audiovisual work [4]. Convention. In addition, the TRIPS Agreement imposes an obligation of "most-favored-nation
The Convention also provides for "moral rights", that is, the right to claim authorship treatment", under which advantages accorded by a WTO Member to the nationals of any other
of the work and the right to object to any mutilation, deformation or other modification country must also be accorded to the nationals of all WTO Members. It is to be noted that the
of, or other derogatory action in relation to, the work that would be prejudicial to the possibility of delayed application of the TRIPS Agreement does not apply to national treatment
and most-favored obligations.
author's honor or reputation.
 The Convention does not provide for the institution of a Union or budget. It establishes
• Rome Convention for the Protection of Performers, Producers an Intergovernmental Committee composed of Contracting States that considers
of Phonograms and Broadcasting Organization questions concerning the Convention [1].
This Convention is open to States party to the Berne Convention for the Protection of
Summary of the Rome Convention for the Protection of Performers, Producers of Literary and Artistic Works (1886) or to the Universal Copyright Convention.
Phonograms and Broadcasting Organisations (1961) Instruments of ratification or accession must be deposited with the Secretary-General
of the United Nations. States may make reservations with regard to the application of
certain provisions.
The Rome Convention secures protection in performances for performers, in
phonograms for producers of phonograms and in broadcasts for broadcasting
organizations. • WIPO Copyright Treaty

(1) Performers (actors, singers, musicians, dancers and those who perform literary or Summary of the WIPO Copyright Treaty (WCT) (1996)
artistic works) are protected against certain acts to which they have not consented,
such as the broadcasting and communication to the public of a live performance; the The WIPO Copyright Treaty (WCT) is a special agreement under the Berne Convention
fixation of the live performance; the reproduction of the fixation if the original fixation that deals with the protection of works and the rights of their authors in the digital
was made without the performer's consent or if the reproduction was made for purposes environment. Any Contracting Party (even if it is not bound by the Berne Convention)
different from those for which consent was given. must comply with the substantive provisions of the 1971 (Paris) Act of the Berne
(2) Producers of phonograms have the right to authorize or prohibit the direct or Convention for the Protection of Literary and Artistic Works (1886). Furthermore, the
indirect reproduction of their phonograms. In the Rome Convention, “phonograms” WCT mentions two subject matters to be protected by copyright: (i) computer
means any exclusively aural fixation of sounds of a performance or of other sounds. programs, whatever the mode or form of their expression; and (ii) compilations of data
Where a phonogram published for commercial purposes gives rise to secondary uses or other material ("databases"), in any form, which, by reason of the selection or
(such as broadcasting or communication to the public in any form), a single equitable arrangement of their contents, constitute intellectual creations. (Where a database
remuneration must be paid by the user to the performers, to the producers of the does not constitute such a creation, it is outside the scope of this Treaty.)
phonograms, or to both. Contracting States are free, however, not to apply this rule or As to the rights granted to authors, apart from the rights recognized by the Berne
to limit its application. Convention, the Treaty also grants: (i) the right of distribution; (ii) the right of rental;
(3) Broadcasting organizations have the right to authorize or prohibit certain acts, and (iii)a broader right of communication to the public.
namely the rebroadcasting of their broadcasts; the fixation of their broadcasts; the • The right of distribution is the right to authorize the making available to the public
reproduction of such fixations; the communication to the public of their television of the original and copies of a work through sale or other transfer of ownership.
broadcasts if such communication is made in places accessible to the public against • The right of rental is the right to authorize commercial rental to the public of the
payment of an entrance fee. original and copies of three kinds of works: (i) computer programs (except where
The Rome Convention allows for limitations and exceptions to the above-mentioned the computer program itself is not the essential object of the
rights in national laws as regards private use, use of short excerpts in connection with rental); (ii) cinematographic works (but only in cases where commercial rental has
reporting current events, ephemeral fixation by a broadcasting organization by means led to widespread copying of such works, materially impairing the exclusive right of
of its own facilities and for its own broadcasts, use solely for the purpose of teaching or reproduction); and (iii) works embodied in phonograms as determined in the
scientific research and in any other cases where national law provides exceptions to national law of Contracting Parties (except for countries which, since April 15, 1994,
copyright in literary and artistic works. Furthermore, once a performer has consented have had a system in force for equitable remuneration of such rental).
to the incorporation of a performance in a visual or audiovisual fixation, the provisions
• The right of communication to the public is the right to
on performers' rights have no further application.
authorize any communication to the public, by wire or wireless means, including
As to duration, protection must last at least until the end of a 20-year period computed
"the making available to the public of works in a way that the members of the public
from the end of the year in which (a) the fixation was made, for phonograms and for
may access the work from a place and at a time individually chosen by them". The
performances incorporated therein; (b) the performance took place, for performances
quoted expression covers, in particular, on-demand, interactive communication
not incorporated in phonograms; (c) the broadcast took place. However, national laws
through the Internet.
increasingly provide for a 50-year term of protection, at least for phonograms and
As to limitations and exceptions, Article 10 of the WCT incorporates the so-called
performances.
"threestep" test to determine limitations and exceptions, as provided for in Article 9(2)
WIPO is responsible, jointly with the International Labour Organization (ILO) and the
of the Berne Convention, extending its application to all rights. The Agreed Statement
United Nations Educational, Scientific and Cultural Organization (UNESCO), for the
accompanying the WCT provides that such limitations and exceptions, as established
administration of the Rome Convention. These three organizations constitute the
in national law in compliance with the Berne Convention, may be extended to the digital
Secretariat of the Intergovernmental Committee set up under the Convention consisting
environment. Contracting States may devise new exceptions and limitations
of the representatives of 12 Contracting States.
appropriate to the digital environment. The extension of existing or the creation of new
limitations and exceptions is allowed if the conditions of the "three-step" test are met.
As to duration, the term of protection must be at least 50 years for any kind of work.
 • The right of rental is the right to authorize the commercial rental to the public of the
original and copies of the phonogram, as determined in the national law of the
The enjoyment and exercise of the rights provided for in the Treaty cannot be subject Contracting Parties (except for countries that, since April 15, 1994, have had a
to any formality. system in force for equitable remuneration of such rental).
• The right of making available is the right to authorize the making available to the
The Treaty obliges Contracting Parties to provide legal remedies against the public, by wire or wireless means, of any performance fixed in a phonogram, in such
circumvention of technological measures (e.g., encryption) used by authors in a way that members of the public may access the fixed performance from a place
connection with the exercise of their rights, and against the removal or altering of and at a time individually chosen by them. This right covers, in particular, on-
information, such as certain data that identify works or their authors, necessary for the demand, interactive making available through the Internet.
management (e.g., licensing, collecting and distribution of royalties) of their rights As to unfixed (live) performances, the Treaty grants performers: (i) the right of
("rights management information"). broadcasting (except in the case of rebroadcasting); (ii) the right of communication to
the public (except where the performance is a broadcast performance); and (iii) the
The Treaty obliges each Contracting Party to adopt, in accordance with its legal system, right of fixation.
the measures necessary to ensure the application of the Treaty. In particular, each The Treaty also grants performers moral rights, that is, the right to claim to be
Contracting Party must ensure that enforcement procedures are available under its law identified as the performer and the right to object to any distortion, mutilation or other
so as to permit effective action against any act of infringement of rights covered by the modification that would be prejudicial to the performer's reputation.
Treaty. Such action must include expeditious remedies to prevent infringement as well As far as producers of phonograms are concerned, the Treaty grants them economic
as remedies that constitute a deterrent to further infringement. rights in their phonograms: (i) the right of reproduction; (ii) the right of
distribution; (iii) the right of rental; and (iv) the right of making available.
The Treaty establishes an Assembly of the Contracting Parties whose main task is to • The right of reproduction is the right to authorize direct or indirect reproduction of
address matters concerning the maintenance and development of the Treaty. It the phonogram in any manner or form.
entrusts to the Secretariat of WIPO the administrative tasks concerning the Treaty. • The right of distribution is the right to authorize the making available to the public
of the original and copies of the phonogram through sale or other transfer of
The Treaty was concluded in 1996 and entered into force in 2002. ownership.
• The right of rental is the right to authorize the commercial rental to the public of the
The Treaty is open to States members of WIPO and to the European Community. The original and copies of the phonogram, as determined in the national law of the
Assembly constituted by the Treaty may decide to admit other intergovernmental Contracting Parties (except for countries that, since April 15, 1994, have a system
organizations to become party to the Treaty. Instruments of ratification or accession in force for equitable remuneration of such rental).
must be deposited with the Director General of WIPO. • The right of making available is the right to authorize making available to the
public, by wire or wireless means, a phonogram in such a way that members of the
• WIPO Performances and Phonograms Treaty public may access the phonogram from a place and at a time individually chosen by
them. This right covers, in particular, on-demand, interactive making available
through the Internet.
Summary of the WIPO Performances and Phonograms Treaty (WPPT) (1996)
The Treaty provides that performers and producers of phonograms have the right to a
single equitable remuneration for the direct or indirect use of phonograms, published
The WIPO Performances and Phonograms Treaty (WPPT) deals with the rights of two for commercial purposes, broadcasting or communication to the public. However, any
kinds of beneficiaries, particularly in the digital environment: (i) performers (actors, Contracting Party may restrict or – provided that it makes a reservation to the Treaty –
singers, musicians, etc.); and (ii) producers of phonograms (persons or legal entities deny this right. In the case and to the extent of a reservation by a Contracting Party,
that take the initiative and have the responsibility for the fixation of sounds). These the other Contracting Parties are permitted to deny, vis-à-vis the reserving Contracting
rights are addressed in the same instrument, because most of the rights granted by the Party, national treatment ("reciprocity").
Treaty to performers are rights connected to their fixed, purely aural As to limitations and exceptions, Article 16 of the WPPT incorporates the so-called
performances (which are the subject matter of phonograms). "threestep" test to determine limitations and exceptions, as provided for in Article 9(2)
As far as performers are concerned, the Treaty grants performers economic rights in of the Berne Convention, extending its application to all rights. The accompanying
their performances fixed in phonograms (not in audiovisual fixations, such as motion Agreed Statement provides that such limitations and exceptions, as established in
pictures): (i) the right of reproduction; (ii) the right of distribution; (iii) the right of rental; national law in compliance with the Berne Convention, may be extended to the digital
and (iv) the right of making available. environment. Contracting States may devise new exceptions and limitations
• The right of reproduction is the right to authorize direct or indirect reproduction of appropriate to the digital environment. The extension of existing or the creation of new
the phonogram in any manner or form. limitations and exceptions is allowed if the conditions of the "three-step" test are met.
• The right of distribution is the right to authorize the making available to the public The term of protection must be at least 50 years.
of the original and copies of the phonogram through sale or other transfer of
ownership.
 The enjoyment and exercise of the rights provided for in the Treaty cannot be subject The system makes it possible to protect a mark in a large number of countries by
to any formality. obtaining an international registration that has effect in each of the designated
Contracting Parties.
The Treaty obliges Contracting Parties to provide for legal remedies against the
circumvention of technological measures (e.g., encryption) used by performers or
phonogram producers in connection with the exercise of their rights, and against the Who May Use the System ?
removal or altering of information – such as the indication of certain data that identify An application for international registration (international application) may be filed only
the performer, performance, producer of the phonogram and the phonogram itself – by a natural person or legal entity having a connection – through establishment,
necessary for the management (e.g., licensing, collecting and distribution of royalties) domicile or nationality – with a Contracting Party to the Agreement or the Protocol.
of the said rights ("rights management information"). A mark may be the subject of an international application only if it has already been
registered with the trademark office of the Contracting Party with which the applicant
The Treaty obliges each Contracting Party to adopt, in accordance with its legal system, has the necessary connections (referred to as the office of origin). However, where all
the measures necessary to ensure the application of the Treaty. In particular, each the designations are effected under the Protocol (see below), the international
Contracting Party must ensure that enforcement procedures are available under its law application may be based simply on an application for registration filed with the office
so as to permit effective action against any act of infringement of rights covered by the of origin. An international application must be presented to the International Bureau of
Treaty. Such action must include expeditious remedies to prevent infringement as well WIPO through the intermediary of the office of origin.
as remedies that constitute a deterrent to further infringement.

The Treaty establishes an Assembly of the Contracting Parties whose main task is to The International Application
address matters concerning the maintenance and development of the Treaty. It An application for international registration must designate one or more Contracting
entrusts to the Secretariat of WIPO the administrative tasks concerning the Treaty. Parties in which protection is sought. Further designations can be effected
subsequently. A Contracting Party may be designated only if it is party to the same
The Treaty was concluded in 1996 and entered into force in 2002. treaty as the Contracting Party whose office is the office of origin. The latter cannot
itself be designated in the international application.
The Treaty is open to States members of WIPO and to the European Community. The The designation of a given Contracting Party is made either under the Agreement or
Assembly constituted by the Treaty may decide to admit other intergovernmental the Protocol, depending on which treaty is common to the Contracting Parties
organizations to become party to the Treaty. Instruments of ratification or accession concerned. If both Contracting Parties are party to the Agreement and the Protocol, the
must be deposited with the Director General of WIPO. designation will be governed by the Protocol.

International applications can be filed in English, French or Spanish, irrespective of

• Protocol Relating to the Madrid Agreement Concerning the which treaty or treaties govern the application, unless the office of origin restricts that
International Registration of Marks (Madrid Protocol) choice to one or two of these languages.

Summary of the Madrid Agreement Concerning the International Registration of The filing of an international application is subject to the payment of a basic fee (which
Marks (1891) and the Protocol Relating to that Agreement (1989) is reduced to 10 per cent of the prescribed amount for international applications filed
by applicants whose country of origin is an LDC, in accordance with the list established
by the United Nations), a supplementary fee for each class of goods and/or services
Introduction
beyond the first three classes, and a complementary fee for each Contracting Party
designated. However, a Contracting Party to the Protocol may declare that, when it is
The Madrid System for the International Registration of Marks is governed by two designated under the Protocol, the complementary fee is replaced by an individual fee,
treaties: whose amount is determined by the Contracting Party concerned but may not be higher
than the amount that would be payable for the registration of a mark, at the national
• the Madrid Agreement, concluded in 1891 and revised at Brussels (1900), level, with its office.
Washington (1911), The Hague (1925), London (1934), Nice (1957) and Stockholm
(1967), and amended in 1979, and
• the Protocol relating to that Agreement, concluded in 1989, which aims to make the International Registration
Madrid system more flexible and more compatible with the domestic legislation of Once the International Bureau receives an international application, it carries out an
certain countries or intergovernmental organizations that had not been able to examination for compliance with the requirements of the Protocol and its Regulations.
accede to the Agreement. This examination is restricted to formalities, including the classification and
States and organizations party to the Madrid system are collectively referred to as comprehensibility of the list of goods and/or services. If there are no irregularities in the
Contracting Parties.
application, the International Bureau records the mark in the International Register, paying several different (and often higher) fees, an international registration may be
publishes the international registration in the WIPO Gazette of International obtained by simply filing one application with the International Bureau (through the
Marks (hereinafter referred to as "the Gazette"), and notifies it to each designated office of the home country), in one language (English, French or Spanish) and paying
Contracting Party. Any matter of substance, such as whether the mark qualifies for one set of fees.
protection or whether it is in conflict with a mark registered previously in a particular Similar advantages exist for maintaining and renewing a registration. Likewise, if the
Contracting Party, is determined by that Contracting Party's trademark office under the international registration is assigned to a third party, or is otherwise changed, such as
applicable domestic legislation. The Gazette is available in electronic form (e-Gazette) a change in name and/or address, this may be recorded with effect for all designated
on the Madrid system website. Contracting Parties by means of a single procedural step.

To facilitate the work of the users of the Madrid system, the International Bureau
Statement of Grant of Protection or Refusal of Protection publishes a Guide to the International Registration of Marks under the Madrid
The office of each designated Contracting Party shall issue a statement of grant of Agreement and the Madrid Protocol.
protection under Rule 18ter of the Regulations.
The Madrid Agreement and Protocol are open to any State party to the Paris
However, when designated Contracting Parties examine the international registration Convention for the Protection of Industrial Property (1883). The two treaties are parallel
for compliance with their domestic legislation, and if some substantive provisions are and independent, and States may adhere to either or both of them. In addition, an
not complied with, they have the right to refuse protection in their territory. Any such intergovernmental organization that maintains its own office for the registration of marks
refusal, including an indication of the grounds on which it is based, must be may become party to the Protocol. Instruments of ratification or accession must be
communicated to the International Bureau, normally within 12 months from the date of deposited with the Director General of WIPO.
notification. However, a Contracting Party to the Protocol may declare that, when it is
designated under the Protocol, this time limit is extended to 18 months. That • IPAP v. Ochoa, G.R. 204605, July 19, 2016 [with separate opinion of
Contracting Party may also declare that a refusal based on an opposition may be J. Leonen]
communicated to the International Bureau even after the 18-month time limit.
The refusal is communicated to the holder of the registration or the holder's • IPOPhl Memo Circular 011-17 Regulations Relating to the Madrid
representative before the International Bureau, recorded in the International Register Protocol
and published in the Gazette. The procedure subsequent to a refusal (such as an
appeal or a review) is carried out directly by the competent administration and/or court 3. Laws
of the Contracting Party concerned and the holder, without the involvement of the
International Bureau. The final decision concerning the refusal must, however, be 3.1 Civil Code of the Philippines, Arts. 712, 521
communicated to the International Bureau, which records and publishes it.

Article 712. Ownership is acquired by occupation and by intellectual creation.

Effects of an International Registration
The effects of an international registration in each designated Contracting Party are, Ownership and other real rights over property are acquired and transmitted by law, by
from the date of the international registration, the same as if the mark had been donation, by testate and intestate succession, and in consequence of certain contracts,
deposited directly with the office of that Contracting Party. If no refusal is issued within by tradition.
the applicable time limit, or if a refusal originally notified by a Contracting Party is
subsequently withdrawn, the protection of the mark is, from the date of the international They may also be acquired by means of prescription. (609a)
registration, the same as if it had been registered by the office of that Contracting Party.
An international registration is effective for 10 years. It may be renewed for further
Article 521. The goodwill of a business is property, and may be transferred together
periods of 10 years on payment of the prescribed fees.
with the right to use the name under which the business is conducted. (n)
Protection may be limited with regard to some or all of the goods or services or may be
3.2 Republic Act No. 8293, Intellectual Property Code of the Philippines, as
renounced with regard to some only of the designated Contracting Parties. An
amended
international registration may be transferred in relation to all or some of the designated
Contracting Parties and all or some of the goods or services indicated.
3.3. Other Special Laws
Advantages of the Madrid System A. Intellectual Property Rights in General
The Madrid system offers several advantages for trademark owners. Instead of filing a 1. Intellectual Property Rights
separate national application in each country of interest, in several different languages,
in accordance with different national or regional procedural rules and regulations and
 2. Differences between Copyrights, Trademarks and Patent

Pearl & Dean v. Shoemart, 409 SCRA 231 (2003)

Kho vs. Court of Appeals, G.R. 115758, March 1, 2002
Juan v. Juan, G.R. No. 221732, [August 23, 2017]

3. Technology Transfer Arrangement (Sec. 4.2)

4.2. The term “technology transfer arrangements” refers to contracts or agreements

involving the transfer of systematic knowledge for the manufacture of a product, the
application of a process, or rendering of a service including management contracts;
and the transfer, assignment or licensing of all forms of intellectual property rights,
including licensing of computer software except computer software developed for mass
market.