Intellectual Property Code (R.A. No.

8293) [Note: Exclude Implementing Rules and Regulations]

A. Patents

Any technical solution of a problem in any field of human activity which is new, involves an inventive step
and is industrially applicable.

• REQUISITES OF PATENTABILITY:

1.Any technical solution of a problem in any field of human activity. (Sec. 21,IPC)

2.Inventive Step – having regard to prior art, it is not obvious to a person skilled in the art at the time of
the filing date or priority date of the application claiming invention. (Sec.26.1, IPC)

3.Novelty – new if it does not form part of a prior art. (Sec. 23,IPC)

4.Industrial Applicability – can be produced and used in any industry (Sec. 27, IPC)

5. Patentable Subject Matter – does not fall within the prohibitions of a Non-Patentable Invention under
Sec. 22 of the IPC.

1. Patentable Inventions

a) Novelty

An invention shall be considered new if it does not form part of a prior art.

If a device or process has been known or used by others prior to its invention or discovery by the
applicant, an application for patent therefor should be denied. Because Novelty is one of the essential
requisites of the patentability of the invention.

b) Inventive Step

An invention involves inventive step if, having regard to prior art, it is not obvious to a person skilled in
the art at the time of the filing date or priority date of the application claiming the invention. (Sec. 26.1,
IPC)

c) Industrial Applicability

An invention that can be produced and used in any industry. (Sec. 27, IPC)
2. Non-Patentable Inventions

The following shall be excluded from patent protection:

1. Discoveries, scientific theories and mathematical methods; (Sec. 22.1, /PC)

2. Schemes, rules and methods of performing mental acts, playing games or doing business, and
programs for computers; {Sec. 22.2, /PC)

3. Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods
practiced on the human or animal body; (Sec. 22.3, /PC)

This provision shall not apply to products and composition for use in any of these methods.

Plant varieties or animal breeds or essentially biological process for the production of plants or animals;

This provision shall not apply to micro-organisms and non-biological and microbiological processes.

4. Provisions under this subsection shall not preclude Congress to consider the enactment of a law
providing sui generis protection of plant varieties and animal breeds and a system of community
intellectual rights protection. (Sec. 22.4, /PC)

s. Aesthetic creations; and (Sec. 22.5, /PC)

6. Anything which is contrary to public order or morality. (Sec. 22.6, /PC}

3. Ownership of a Patent

a) Right of a Patent

The right to a patent belongs to the inventor, his heirs, or assigns. When two (2) or more persons have
jointly made an invention, the right to a patent shall belong to them jointly.

Created in the course of employment

In case the employee made the invention in the course of his employment contract, the patent shall
belong to:

(a) The employee, if the inventive activity is not a part of his regular duties even if the employee
uses the time, facilities and materials of the employer.

(b) The employer, if the invention is the result of the performance of his regularly-assigned duties,
unless there is an agreement, express or implied, to the contrary. (Sec. 30.2, /PC}

b) First-to-File Rule

If two (2) or more persons have made the invention separately and independently of each other, the
right to the patent shall belong to the person who filed an application for such invention, or where two
(2) or more applications are filed for the same invention, to the applicant who has the earliest filing date
or, the earliest priority date. (Sec. 29, /PC)

c) Inventions Created Pursuant to a Commission

The person who commissions the work shall own the patent, unless otherwise provided in the contract.
(Sec. 30.1, /PC)

d) Right of Priority

An application for patent made by a person who earlier filed the same invention in another country
(subject to reciprocity) shall be considered as filed here as of the date of filing of the foreign application
subject to the following:

a) the local application expressly claims priority;

b) it is filed within twelve (12) months from the date the earliest foreign application was filed; and
c) a certified copy of the foreign application together with an English translation is filed within six
(6) months from the date of filing in the Philippines. (Sec. 31, /PC}

4. Grounds for Cancellation of a Patent

Any interested person may, upon payment of the required fee, petition to cancel the patent or any claim
thereof, or parts of the claim, on any of the following grounds:

(a) That what is claimed as the invention is not new or Patentable;

(b) That the patent does not disclose the invention in a manner sufficiently clear and complete for it
to be carried out by any person skilled in the art; or
(c) That the patent is contrary to public order or morality. (Sec. 61.1, /PC)

5. Remedy of the True and Actual Inventor

If a person, who was deprived of the patent without his consent or through fraud is declared by final
court order or decision to be the true and actual inventor, the court shall order for his substitution as
patentee, or at the option of the true inventor, cancel the patent, and award actual and other damages
in his favor if warranted by the circumstances. (Sec. 68, /PC)

6. Rights Conferred by a Patent

A patent shall confer on its owner the following exclusive rights:

1. Where the subject matter of a patent is a product, to restrain, prohibit and prevent any
unauthorized person or entity from making, using, offering for sale, selling or importing that
product;
2. Where the subject matter of a patent is a process, to restrain, prevent or prohibit any
unauthorized person or entity from using the process, and from manufacturing, dealing in, using,
selling or offering for sale, or importing any product obtained directly or indirectly from such
process (Sec. 71.1, /PC); and
3. Patent owners shall also have the right to assign, or transfer by succession the patent, and to
conclude licensing contracts for the same. (Se 71.2 IPC)
7. Limitations of Patent Rights

The owner of a patent has no right to prevent third parties from performing, without his authorization,
the acts referred to in Section 71 hereof in the following circumstances:

1. Using a patented product which has been put on the market in the Philippines by the owner of
the product, or with his express consent, insofar as such use is performed after that product has
been so put on the said market (Sec. 72.1, /PC);
2. Where the act is done privately and on a noncommercial scale or for a non-commercial purpose:
Provided, That it does not significantly prejudice the economic interests of the owner of the
patent (Sec. 72.2, /PC);
3. Where the act consists of making or using exclusively for the purpose of experiments that relate
to the subject matter of the patented invention (Sec. 72.3, /PC);
4. Where the act consists of the preparation for individual cases. in a pharmacy or by a medical
professional, of a medicine in accordance with a medical prescription or acts concerning the
medicine so prepared (Sec. 72.4, /PC);
5. Where the invention is used in any ship, vessel, aircraft, or land vehicle of any other country
entering the territory of the Philippines temporarily or accidentally: Provided That such
invention is used exclusively for the needs of the ship, vessel, aircraft, or land vehicle and not
used for the manufacturing of anything to be sold within the Philippines. (Sec. 72.5, /PC)

a) Prior User

Notwithstanding Section 72 hereof, any prior user, who, in good faith was using the invention or has
undertaken serious preparations to use the invention in his enterprise or business, before the filing date
or priority date of the application on which a patent is granted, shall have the right to continue the use
thereof as envisaged in such preparations within the territory where the patent produces its effect. (Sec.
73.1, /PC)

The right of the prior user may only be transferred or assigned together with his enterprise or business,
or with that part of his enterprise or business in which the use or preparations for use have been made.
(Sec. 73.2, /PC)

b) Use by Government

A government agency or third person authorized by the Government may exploit the invention even
without agreement of the patent owner where:

(a) The public interest, in particular, national security, nutrition, health or the development of other
sectors, as determined by the appropriate agency of the government, so requires; or
(b) A judicial or administrative body has determined that the manner of exploitation, by the owner
of the patent or his licensee is anti-competitive. (Sec. 74, /PC}
8. Patent Infringement

a) Tests in Patent Infringement

(1) Literal Infringement - means each and every element recited in a claim has identical correspondence
in the allegedly infringing device or process

(2) Doctrine of Equivalents - provides that an infringement also takes place when a device appropriates a
prior invention by incorporating its innovative concept and, although with some modification and
change, performs substantially the same function in substantially the same way to achieve substantially
the same result.

b) Defenses in Action for Infringement - The defendant, in addition to other defenses available to him,
may show the invalidity of the patent, or any claim thereof, on any of the grounds on which a petition of
cancellation can be brought under Sec. 61 hereof. (Sec. 81, IPC)

9. Licensing

a) Voluntary

b) Compulsory - Usually involves public interest like medicines etc

10. Assignment and Transmission of Rights - By inheritance or bequest or may be the subject of a license
contract. (Sec. 103.2, IPC)

Assignment must be in writing, acknowledged before a notary public other officer authorized oath or
perform notarial acts, and certified under the hand and official seal of the notary or such other officer.
(Sec. 105, IPC)

B. Trademarks

1. Marks vs. Collective Marks vs. Trade Names

MARK – Any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an
enterprise and shall include a stamped or marked container of goods; (Sec. 121.1, IPC)

COLLECTIVE MARK - Any visible sign designated as such in the application for registration and capable of
distinguishing the origin or any other common characteristic, including the quality of goods or services of
different enterprises which use the sign under the control of the registered owner of the collective mark;
(Sec. 121.2, IPC)

TRADE NAME - The name or designation identifying or distinguishing an enterprise; (Sec.121.3, IPC)

2. Acquisition of Ownership of Mark - The rights in a mark shall be acquired through registration made
validly in accordance with the provisions of this law.

3. Acquisition of Ownership of Trade Name -

4. Non-Registrable Marks
A mark cannot be registered if it:

(a) Consists of immoral, deceptive or scandalous matter, or matter which may disparage or falsely
suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring
them into contempt or disrepute;

(b) Consists of the flag or coat of arms or other insignia of the Philippines or any of its political
subdivisions, or of any foreign nation, or any simulation thereof;

(c) Consists of a name, portrait or signature identifying a particular living individual except by his written
consent, or the name, signature, or portrait of a deceased President of the Philippines, during the life of
his widow, if any, except by written consent of the widow;

(d) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing
or priority date, in respect of:

(i) The same goods or services, or

(ii) Closely related goods or services, or

(iii) If it nearly resembles such a mark as to be likely to deceive or cause confusion;

(e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered
by the competent authority of the Philippines to be well-known internationally and in the Philippines,
whether or not it is registered here, as being already the mark of a person other than the applicant for
registration, and used for identical or similar goods or services: Provided,  That in determining whether a
mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather
than of the public at large, including knowledge in the Philippines which has been obtained as a result of
the promotion of the mark;

(f) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-
known in accordance with the preceding paragraph, which is registered in the Philippines with respect to
goods or services which are not similar to those with respect to which registration is applied
for: Provided, That use of the mark in relation to those goods or services would indicate a connection
between those goods or services, and the owner of the registered mark: Provided further,  That the
interests of the owner of the registered mark are likely to be damaged by such use;

(g) Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical
origin of the goods or services;

(h) Consists exclusively of signs that are generic for the goods or services that they seek to identify;

(i) Consists exclusively of signs or of indications that have become customary or usual to designate the
goods or services in everyday language or in bona fide and established trade practice;

(j) Consists exclusively of signs or of indications that may serve in trade to designate the kind, quality,
quantity, intended purpose, value, geographical origin, time or production of the goods or rendering of
the services, or other characteristics of the goods or services;
(k) Consists of shapes that may be necessitated by technical factors or by the nature of the goods
themselves or factors that affect their intrinsic value;

(l) Consists of color alone, unless defined by a given form; or

(m) Is contrary to public order or morality.

5. Test to Determine Confusing Similarity Between Marks

a) Dominancy Test - relies not only on the visual but also on the aura; and connotative comparisons and
overall impressions between the two trademarks. The Dominancy Test focuses on the similarity of the
prevalent or dominant features of the competing trademarks that might cause confusion, mistake, and
deception in the mind of the purchasing public.

The test of dominancy is now explicitly incorporated into law in Section 155.1 of the Intellectual Property
Code which defines infringement as the "colorable imitation of a registered mark or a dominant feature
thereof."

6. Well-Known Marks - To be protected it must be a “wellknown” on the country where protection is

sought.

To determine whether a trademark is well-known lies in the “competent authority of the country of
registration or use.”

7. Rights Conferred by Registration -

The owner of a registered mark shall have the exclusive right to prevent all third parties not having the
owner's consent from using in the course of trade identical or similar signs or containers for goods or
services which are identical or similar to those in respect of which the trademark is registered where
such use would result in a likelihood of confusion. In case of the use of an identical sign for identical
goods or services, a likelihood of confusion shall be presumed.

The exclusive right of the owner of a well-known mark defined in Subsection 123.1(e) which is registered
in the Philippines, shall extend to goods and services which are not similar to those in respect of which
the mark is registered: Provided, That use of that mark in relation to those goods or services would
indicate a connection between those goods or services and the owner of the registered mark: Provided
further, That the interests of the owner of the registered mark are likely to be damaged by such use.
(Sec. 147, IPC)

8. Cancellation of Registration
- any interested person may, upon payment of the required fee, petition to cancel the patent or any
claim thereof, or parts of the claim, on any of the following grounds:

a) What is claimed as the invention is not new or patentable.

b) The patent does not disclose the invention in a manner sufficiently blear and complete for it to be
carried out by any person skilled in the art;

c) The patent is contrary to public order or morality.

9. Trademark Infringement

Any person who shall use, without the consent of the registrant, any reproduction, counterfeit, copy or
colorable imitation of any registered mark or tradename in connection with the sale, offering for sale, or
advertising of any goods, business or service on or in connection with which such use is likely to cause
confusion or mistake or to deceive purchasers or others as to the source or origin of such goods or
service or identity of such business; or reproduce , counterfeit, copy, or colorably imitate any such mark
or tradename and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs,
prints, packages, wrappers, receptacles, shall be liable to civil action by the registrant for any or ll of the
remedies herein provided.

• TO ESTABLISH TRADEMARK INFRINGEMENT –

1. Validity of owners mark;

2. Ownership of the mark;

10. Unfair Competition

• ELEMENTS OF UNFAIR COMPETITION:

1. Confusing similarity in the general appearance of the goods;

2. Intent to deceive the public and defraud a competitor.

C. Copyright

1. Basic Principles [Sec. 172.2, 175, and 181 only]

172.2. Works are protected by the sole fact of their creation, irrespective of their mode or form
of expression, as well as of their content, quality and purpose.

SECTION 175. Unprotected Subject Matter. - Notwithstanding the provisions of Sections 172
and 173, no protection shall extend, under this law, to any idea, procedure, system, method or
operation, concept, principle, discovery or mere data as such, even if they are expressed,
explained, illustrated or embodied in a work; news of the day and other miscellaneous facts
having the character of mere items of press information; or any official text of a legislative,
administrative or legal nature, as well as any official translation thereof. (n)

SECTION 181. Copyright and Material Object. - The copyright is distinct from the property in the
material object subject to it. Consequently, the transfer or assignment of the copyright shall not
itself constitute a transfer of the material object. Nor shall a transfer or assignment of the sole
copy or of one or several copies of the work imply transfer or assignment of the copyright. (Sec.
16, P.D. No. 49)
2. Copyrightable Works

Literary and artistic works, hereinafter referred to as "works", are original intellectual creations in the
literary and artistic domain protected from the moment of their creation and shall include in particular:

(a) Books, pamphlets, articles and other writings;

(b) Periodicals and newspapers;
(c) Lectures, sermons, addresses, dissertations prepared for oral delivery, whether or not reduced in
writing or other material form;
(d) (d) Letters;
(e) (e) Dramatic or dramatico-musical compositions; choreographic works or entertainment in dumb
shows;
(f) (f) Musical compositions, with or without words;
(g) (g) Works of drawing, painting, architecture, sculpture, engraving, lithography or other works of
art; models or designs for works of art;
(h) (h) Original ornamental designs or models for articles of manufacture, whether or not registrable
as an industrial design, and other works of applied art;
(i) (i) Illustrations, maps, plans, sketches, charts and threedimensional works relative to geography,
topography, architecture or science;
(j) (j) Drawings or plastic works of a scientific or technical character;
(k) (k) Photographic works including works produced by a process analogous to photography;
lantern slides;
(l) (l) Audiovisual works and cinematographic works and works produced by a process analogous to
cinematography or any process for making audio-visual recordings;
(m) (m) Pictorial illustrations and advertisements;
(n) (n) Computer programs; and
(o) (o) Other literary, scholarly, scientific and artistic works.

a) Original Works -

b) Derivative Works - - The following derivative works shall also be protected by copyright:

(a)Dramatizations, translations, adaptations, abridgments, arrangements, and other alterations of

literary or artistic works; and

(b) Collections of literary, scholarly or artistic works, and compilations of data and other materials which
are original by reason of the selection or coordination or arrangement of their contents.

3. Non-Copyrightable Works - No protection shall extend, under this law, to any idea, procedure, system,
method or operation, concept, principle, discovery or mere data as such, even if they are expressed,
explained, illustrated or embodied in a work; news of the day and other miscellaneous facts having the
character of mere items of press information; or any official text of a legislative, administrative or legal
nature, as well as any official translation thereof (n)

4. Rights Conferred by a Copyright - Exclusive right to publish and reproduce, or to sell, or license or
exploit, a literary, artistic or other work of the mind.
5. Ownership of a Copyright

1. IN GENERAL – author of the work. (Sec. 18.1, IPC)

2. JOINT AUTHORSHIP – co-authors shall be the original owners of the copyright and in the absence of
agreement, their rights shall be governed by the rules on co-ownership. If it can be used separately and
the author of each part can be determined, the author of each part shall be the original owner.

3. IN THE COURSE OF EMPLOYMENT – Employee – not part of his regular duties. EMPLOYER – part of his
regularly-assigned duties

4. COMMISSIONED WORK – the person who commissioned has the ownership over the work but the
copyright remains to the creator.

5. AUDIOVISUAL WORK – belongs to the producer, author of the scenario, the composer of the music,
the film director, and the author of the work so adapted.

6. LETTERS – belongs to the writer.

7.ANONYMOUS AND PSEUDONYMOUS WORKS – Publishers shall be deemed to represent the authors of
articles and other writings published without the names of the authors or under pseudonyms, unless the
contrary appears, or the pseudonyms or adopted name leaves no doubt as to the authors identity

6. Limitations on Copyright

No infringement: (not complete list, check codal)

I. 1.Once made accessible to the public and for charitable or religious institution.
II. Making quotations
III. Reproduction or communication to the public by mass media of articles on current political,
social etc
IV. Current events

7. Doctrine of Fair Use

– A privilege to use the copyrighted material in a reasonable manner without the consent of the
copyright owner or as copying the theme or ideas rather than their expectation.

The fair use of a copyrighter work for criticism, comment, new reporting, teaching including multiple
copies for classroom use, scholarship, research, and similar purposes is not an infringement of copyright.
Including decompilation.

8. Copyright Infringement

A person infringes a right protected when one:

1. Directly commits an infringement;

2. Benefits from the infringing activity of another person who commits an infringement if the
person benefiting has been given notice of the infringing the activity and has the right and ability
to control the activities of the other person;
3. With the knowledge of infringing activity, induces, cause or materially contributes to the
infringing conduct of another. (Sec. 216, IPC)