INTELLECTUAL PROPERTY LAW

B. Kinds of intellectual property rights

- Sec. 4 RA No. 8293
INTELLECTUAL PROPERTY LAW 1. Copyright and Related Rights:
- Related Rights: in relation to copyrights
A. Concepts and definitions -
-
Exists over original and derivative
protected from the moment of their creation (automatic)
Intellectual property: refers to the creations of the mind - must primarily relate to literary and artistic domain
(inventions, literary and artistic works, and symbols, names,
images, and designs used in commerce)
- the legal rights which results from intellectual activities in
2. Trademarks and Service Marks:
the industrial, scientific, literary and artistic fields. - 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.
Basis in the Constitution - Non-traditional marks, recognized in other jurisdiction, are
– Art. 14, Sec. 13: The State shall protect and secure the not recognized in the PH as we only recognize VISIBLE sign.
exclusive rights of scientist, inventors, artists, and other
gifted citizens to their intellectual property and creations, 3. Geographic Indication
particularly when beneficial to the people, for such as may be
- originating in the territory of a Member of the Agreement
provided by the law.
(TRIPS agreement) or a region or locality in that territory,
where a given quality, reputation, or other characteristic of
Intellectual Property Rights the good is essentially attributable to its geographic origin.
a. It is property - There has to be some link between the product and the
b. Creations of the human mind or intellectual originating territory
- the territory dictates the quality, reputation or other
c. Intangible asset- vs. Object/Embodiment characteristic of the product.

d. Intellectual property rights 4. Industrial Design

i. Exclusive rights to do or prohibit
- Composition of lines or colors or any 3D form
ii. May be assigned or licensed to others
- Composition or form gives a special appearance to and can
iii. May be infringed
serve as pattern for an industrial product or handicraft
- it must be new or original
Two Categories of Intellectual Property
a. Industrial Property 5. Patents
– inventions (patents), trademarks, industrial designs, and - AKA Patentable invention
geographic indications of source - technical solution of a problem in any field of human activity
- business, commerce related which is new, involves an inventive step and is industrially
- intends to use it in business applicable.
- product, process, or improvement of any.
b.Copyright - Elements:
– literary and artistic works (novels, poems and plays, films a. Technical Solution
musical works, drawings, paintings, photographs and b. Problem in any field of human activity
sculptures, architectural designs. c. it must be new, novel, involves an inventive step
- Rights relating to copyright: performing artist in their d. Industrially applicable
performance, producers of phonograms in their recordings, and
those of broadcasters in their radio and television programs. 6.Integrated Circuit
- it is protected at the moment of creation. - product, in its final form or an intermediate form
- intended to perform an electronic function
Basis: - an example is a laptop
Sec. 13, Art. XIV, 1987 PH Constitution: obligation of the
State to protect the intellectual rights. 7. Layout Design
- Condition: beneficial to the people for such period – refer to - 3D Disposition of integrated Circuits
the law protecting the right (primarily: Intellectual Property
Code) 8. Protection of undisclosed Information
Elements:
Art. 427 of the NCC: ownership may be exercised over things
a. Secret
or rights
b. Has commercial value
c. Subject to reasonable steps under the circumstances, by
Art. 712 of the NCC: sources of the right: Intellectual creation
the person lawfully in control of the information, to keep it a
is a mode of ownership. When you create something, you
secret.
have the right for it to be protected.
- it is in relation to commercial activity
SEC 2 of RA 8293: Carrying out the State Policy. “The use of
CASE: Air Philippine corporation vs pennswell, inc
intellectual property bears a social function” – requires balance,
public benefits. - Air Philippines wanted Pennswell to disclose their lubricant
formula

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- SC: Air PH cannot compel Pennswell to disclose the formula

because it is a trade secret RA No. 9502: Universally Accessible Cheaper and Quality
Medicines Act of 2009
Trade Secret: plan or process, toll, mechanism or compound a. Compulsory Licensing on the manufacture of patented
known only to its owner and those of his employees to whom medicines.
it is necessary to confide it. It extends to b. Compulsory licensing on the importation of medicines
a. Secret formula or process not patented but known only to protected by patent or trademark
certain individuals using it in compounding some article or c. Non-patentability of second use of known substance unless
trade having a commercial value or there is enhanced efficacy.
b. Any formula, pattern, device or compilation of information
that: RA No. 10372: on Copyright
1. is used in one’s business; and
a. Retransmission of broadcast made a right
2. gives the employer an opportunity to obtain an
b. Vicarious liability including landlord liability
advantage over competitors who do not possess the
c. Providing as aggravating circumstances the following:
information.
i. Circumvention of effective technological protection
measures and
CASE: Kho vs CA
ii. Electronic rights management information
- Trademark, copyright and patents are different intellectual
property rights that cannot be interchanged with one another.
A trademark is any visible sign capable of distinguishing the
Distinctions
goods or services of an enterprise and shall include a stamped management information
or marked container of goods. In relation thereto, a PATENT COPYRIGHT TRADEMARK
tradename means the name or designation identifying or Subject Invention: Literary or Any visible
distinguishing an enterprise. The scope of copyright is matter of Technical artistic work sign capable
confined to literary and artistic works which are original Protection Solution of a which is an of
intellectual creations in the literary and artistic domain problem original distinguishing
protected from the moment of their creation. Patentable which is intellectual goods or
inventions refer to any technical solution of a problem in any new, creation; services of an
field of human activity which is new, involves an inventive involves an Expression enterprise;
step and is industrially applicable. inventive brand
step and is
CASE: Pearl & Dean vs Shoemart industrially
applicable
- Pearl and Dean is engaged in the manufacture of advertising
Office where Bureau of Not Bureau of
display units or light boxes. They secured a Copyright
right is Patents, IPO required. Trademarks,
Registration over the drawings of these light boxes, marketed
registered Optional IPO
under the trademark “Poster Ads”.
at the
- Without going through Pearl and Dean, SM ordered the
National
exact same boxes from NEMI (P&D’s former contractor-
Library or
manufacturer) IPO
- P&D sued SM and NEMI for Copyright Infringement, Duration of Generally,
20 years 10 year,
Trademark Infringement, and Unfair Competition the Right 50 years
form filing renewable
SC: Copyright, in the strict sense of the term, is purely a after the
or priority indefinitely
statutory right. Being a mere statutory grant, the rights are death of the
date
limited to what the statute confers. It may be obtained and author.
enjoyed only with respect to the subjects and by the persons,
and on terms and conditions specified in the statute.7
Accordingly, it can cover only the works falling within the International Regime of IP Rights
statutory enumeration or description. a. Berne Convention
- Protection of Literary and Artistic Works 1971
P & D secured its copyright under the classification class "O" - 3 basic principles:
work. This being so, petitioner’s copyright protection i. National Treatment: Local must treat the foreign
extended only to the technical drawings and not to the light the same
box itself because the latter was not at all in the category of ii. Automatic Protection: if there is a work created in
"prints, pictorial illustrations, advertising copies, labels, tags the PH, no need for registration and within the
and box wraps. members of the Convention
iii. Independence of Protection: protection granted in
On patents: To be able to effectively and legally preclude the PH may not be the same, depending on the subject
others from copying and profiting from the invention, a patent matter.
is a primordial requirement. No patent, no protection. The - Minimum Standards of Protection
ultimate goal of a patent system is to bring new designs and
technologies into the public domain through disclosure. Ideas, b. Paris Convention on the Protection of Industrial Property (1967)
once disclosed to the public without the protection of a valid - including patents, trademarks, industrial designs, utility
patent, are subject to appropriation without significant models, service marks, trade names, geographical indications,
restraint. (If you follow: Invent, register, and follow and the repression of unfair competition
procedure, you will have monopoly for 20 years)
- Basic principles:

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i. National Treatment

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ii. Right of priority (date of filing): You can use the date of
pay fees. The day will retroact to the day when there was no
filing here in the PH when filing abroad, the date will retroact.
opposition.
iii. Common Rules (Minimum Standards)
CASE: IPAP vs ES. 2016
c. Patent Cooperation Treaty - 2012, PH acceded to the Madrid Protocol through mere
- Similar Madrid System in filing ratification by the President
- A PCT Application has the effect of automatically designating - the IPAP petition the SC to declare it unconstitutional on the
all Contracting State bound by the PCT on the international ground that it was in the nature of the treaty and the
filing date, as if a national patent application had been filed accession had not been approved by the Congress.
with the national patent office of that member State. - SC: IPAP has no locus standi because they do not have real
right that will be affected; Under the law the DFA has the
- Advantages: discretion to determine if the agreement is in the nature of an
a. Brings the world within reach executive agreement or treaty, and if the protocol need or
b. Provides a strong basis – through ISR – for patenting need not go to Senate.
decisions - SC: The accession was not in conflict with the IP Code. The
c. Postpones (by 18 months) the major costs associated with application when it reached the PH, it was examined.
international patent protection.
e. TRIPs Agreement
d.Madrid Protocol - Trade-Related aspects of Intellectual Property Agreement or
(can be a question to the bar) TRIPs (WTO)
- Filing system siya, filing date is important - Annex C to the General Agreement on Tariffs and Trade or
- Filing one application with the International Bureau (though GATT
the office of the home country)
- in 1 language (English, French or Spanish) - Basic Principles:
- and paying one set of fees i. National Treatment
ii. Most-Favored-Nation Treatment: member state cannot
- Includes: maintenance, renewals, amendments and discriminate among other member state
assignments.
- 3 Main Sets of Provisions
i. Minimum Standards: Berne – Plus and Paris – Plus
ii. Enforcement: Inaudita Altera Parte (Without the other
party being heard); border enforcement
iii. Dispute Settlement: WTO Procedures

f. The Marrakesh Treaty to Facilitate Access to Published Works for

Persons who are Blind, Visual Impaired and Persons with Print
Disability
- Book Famine Crisis
- Problem: Copyright infringement, there is a lack of legal fair
use for: local production and distribution of books in
accessible formats; cross-border distribution of books in
- Application through National or Regional IP Office (some accessible formats to institutions and individuals.
jurisdictions have their own IP System – European - Objective: clear humanitarian and social justice
Community, one application lang) - Treaty allows for copyright exceptions to facilitate the
- Formality Examination by WIPO: did you pay fees, logo, etc. creation of accessible versions of books and other copyrighted
- Substantive examination by Office of the designated country works for visually impaired persons.
- Contracting Party (Local - it only applies to books
- copy of a work in an alternative matter or form: feasibly and
Application) LOCAL APPLICATION: comfortably: large print, braille, and audio information.

CASE: Mirpuri vs CA
- Intellectual and industrial property rights cases are not
simple property cases. Trademarks deal with the
psychological function of symbols and the effect of these
symbols on the public at large. Trademarks play a significant
role in communication, commerce and trade, and serve
valuable and interrelated business functions, both nationally
and internationally. For this reason, all agreements
concerning industrial property, like those on trademarks and
tradenames, are intimately connected with economic
development. 76 Industrial property encourages investments
in new ideas and inventions and stimulates creative efforts for
Date of Registration is 30 days immediately pag walang nag
the satisfaction of human needs. They speed up transfer of
oppose (publication in the E-Gaezette), it will be registered,
technology and industrialization, and thereby bring about
social and economic progress.
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- The Intellectual Property Code of the Philippines declares

that "an effective intellectual and industrial property system is
f. IPR is distinct from the material object
vital to the development of domestic and creative activity,
- Incorporeal right is distinct from the property right, ownership
facilitates transfer of technology, it attracts foreign
in one does not necessarily vest ownership in the other.
investments, and ensures market access for our products."
- Example the painting is different from the copyright of the
- The Code was enacted to strengthen the intellectual and
painting.
industrial property system in the Philippines as mandated by
- Transfer or assignment of the IP does not necessarily
the country’s accession to the Agreement Establishing the
constitute a conveyance of the thing.
World Trade Organization.
- The WTO is a common institutional framework for the
conduct of trade relations among its members in matters D. Intellectual Property Rights
related to the multilateral and plurilateral trade agreements
annexed to the WTO Agreement. The WTO framework
ensures a "single undertaking approach" to the administration A. Trademarks
and operation of all agreements and arrangements attached - Most of the cases are trademark.
to the WTO Agreement.
Definitions:
B. Three aspects of intellectual property A. Mark
- any visible sign capable of distinguishing the goods
(trademark) or services (servicemark) of an enterprise and
shall include a stamped or marked container of goods.

B.Collective Mark
- The one who owns the collective mark is one entity, but the
one using the Collective Mark is madami. You can only use
the collective mark when you passed the requirements
needed of the 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.
A. Asset: treat it as an ordinary tangible property
- Disposable, leasable, part of inheritance. C. Tradename
- name or designation identifying or distinguishing an
B. Rights enterprise.
- There are set of rights available
- This will be the basis of enforcement D. Well – known Marks
- Discussed in Paris Convention: The countries of the Union
C. Policy Tool undertake, ex officio if their legislation so permits, or at the
- how you protect and enforce will also determine your request of an interested party, to refuse or to cancel the
economic environment. registration, and to prohibit the use, of a trademark which
constitutes a reproduction, an imitation, or a translation,
- There are important because in an IP Case you have to liable to create confusion, of a mark considered by the
know in what context will you address the IP Case. competent authority of the country of registration or use to be
well known in that country as being already the mark of a
C. fundamental Principles person entitled to the benefits of this Convention and used for
a. Principle of Territoriality identical or similar goods.
- Constitution it states that protection must be provided for by - To determine well-known mark: take account of the
the law and the application of the law is limited to the knowledge of the relevant sector or the public, rather than of
jurisdiction enacting that law that public at large, including knowledge in the Philippines
- If the IP is not registered in the PH, it will not be registered which has been obtained as a result of the promotion of the
abroad, vice-versa. mark.
- Criteria: (any combination)
b. IPR is a private right a. Duration, extend and geographical are of any use of the
- if there is a violation of IPR, you need the complaint, mark;
testimony of the owner of the IP because s/he is competent b. The market share in the PH and in other countries;
to tell the court c. The degree of the inherent or acquired distinction of the
mark;
c. For every IPR, the law grants the rightholder a set of d. The quality-image or reputation acquired by the mark;
exclusive rights e. The extent to which the mark has been registered in the
world;
d. IPR is not absolute, it is subject to limitations f. The exclusivity of registration attained by the marks in the
world;
e. Principle of good faith applies g. The extent of which the mark has been used in the world;
h. the exclusivity of use attained by the mark in the world;
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i. the commercial value attributed to the mark in the world;

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j. The record of successful protection of the rights in the mark; the 5th year of registration.
k. The outcome of litigation dealing with the issue of whether
he mark is well-known mark; and
l. the presence or absence of identical or similar goods or
services and owned by persons other than the person
claiming that his mark is a well-known mark.

Functions of a Trademark
a. Identifies the product
b. Establishes certain reputations or identity, symbolizes
goodwill and business reputation, and is a property right
protected by law

CASE: Mirpuri vs court of appeals

The Trademark’s functions:
a. to point out distinctively the origin or ownership of the
goods to which it is affixed;
b. Secure to him, who has been instrumental in bringing into
the market as a superior article of merchandise, the fruit of
his industry and skill;
c. to assure the public that they are procuring the genuine
article;
d. to prevent fraud and imposition; and
e. To protect the manufacturer against substitution and sale
of an inferior and different article as his product.

Modern authorities on trademark law view: (3 distinct

functions)
a. Indicate origin or ownership of the articles to which they
are attached;
b. Guarantee those articles come up to a certain standard of
quality; and
c. They advertise the articles they symbolize.

Protection of Trademarks/Ownership of a Mark (possible Qs)

- Marks are acquired: it must be validly registered made
validly in accordance with provisions of the law; Prior use is
not a requirement but there must be actual use after
application.
Declaration of Actual Use: within 3 years from filing of the
application.
- Certificate of Registration is the prima facie evidence of
validity of Registration, this contains:
a. Prima facie owner of the mark
b. You have exclusive right to use the mark
c. Goods or services and those that are related specified in
the Certificate.
- Exclusive right is to use the mark in relation to the goods or
service, you cannot use the mark for products not related to
the goods or services.
- A registered mark shall have no effect against any person
who, in good faith, before the filing date or the priority date,
was using the mark for the purpose of his business or
enterprise.
- Term of Protection: 10 years from registration, renewable
for periods of 10 years each, indefinitely, provided a
declaration of use if filed within 1 year from filing and from

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CASE: Zuneca vs Natrapharm (Possible Qs, but JL dissented)

It involves Zynaps and Zynapse, almost same name but
different purpose. Zynaps was registered on April 2003,
Zynapse was registered September 2007. Zynapse sued
Zynaps, suing the earlier user of the mark.

RA 8293: The bill no longer requires prior use of the mark

as a requirement for filing a trademark application. It also
abandons the rule that ownership of a mark is acquired
through use by now requiring registration of the mark in the
IPO.

CASE: ABS-CBN Publishing Inc vs Director of the Bureau of

Trademarks
The petitioner in allowing this abandonment cannot now
come before the Court to cry foul if another entity has in the
time that it has abandoned its trademark and in full
cognizance of the IPC and the IPO rules, registered its own.

Distinctiveness of a Product (guide)

1. Fanciful/Arbitrary (registrable)
- Mark is created uniquely, you cannot find in the dictionary,
either you created it. Peculiar marks.
- The word/symbol is contrary to the product it represent or
item it describes.
- Example the word Apple is used to identify a mobile
phone. Can you register a generic word as a trademark?
- It depends. You have to qualify. If use as arbitrary, it can
be used as a trademark. But if it describes the very product,
it cannot be used.

2. Suggestive (registrable)
- It implies that a certain product is used.

3. Descriptive (can’t be registered)

- GR: you cannot register because it describes the very
product itself. This directly describe the product.

4. Generic
- Cannot be registered.

Principle of Specificity

- Your right to use of IPR is not absolute, it is limited.

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- The principle of specificity defines the limits of your

a. Confusion of Goods
Intellectual Property Rights.
- Ordinarily prudent purchaser would be induced to purchase
one product in belief that he was purchasing the other.
Non-registrable marks (Sec. 123 of IP Code, read this prov.)
(a) Consists of immoral, deceptive or scandalous matter, or matter which b. Confusion of Origin
may disparage (regard or represent of little worth) or falsely suggest a connection with
persons, living or dead, institutions, beliefs, or national symbols, or bring
- The goods are different but one’s product is such as might
them into contempt or disrepute; reasonably be assumed to originate with the other party.
- Disparage or falsely suggest: take note of the false connection. - In the mind of the ordinary purchaser, the company A
produces the product of another product (probably a product
(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
of another company)
thereof;
- Public Policy will tell us that we cannot use the coat of arms.
2 test to determine Colorable Imitation
(c) Consists of a name, portrait or signature identifying a particular living
individual except by his written consent, or the name, signature, or
A. Dominancy Test
portrait of a deceased President of the Philippines, during the life of his - Competing trademark contains the main or essential or
widow, if any, except by written consent of the widow; dominant features of another, and confusion and deception
are likely to happen, infringement takes place.
(d) Is identical with a registered mark belonging to a different proprietor or
- Focuses on the similarity of the prevalent features of the
a mark with an earlier filing or priority date, in respect of:
competing trademarks which might cause confusion or
(i) The same goods or services, or deception and thus constitute infringement.
(ii) Closely related goods or services, or
(iii) If it nearly resembles such a mark as to be likely to deceive
or cause confusion;
B.Holistic Test
- This is the breeding ground of various cases. - Trademark in their entirety as they appear in their
respective labels are considered in relation to the goods to
CASE: Great White Shark vs Caralde Jr which they are attached.
A trademark device is susceptible to registration if it is crafted
fancifully or arbitrarily and is capable of identifying and CASE: Gallo (wines) vs gallo (cigarettes)
distinguishing the goods of one manufacturer or seller form SC made a caveat: tobacco and alcohol products may be
those of another. Apart from its commercial utility, the considered related only in cases involving special
benchmark of trade registrability is distinctiveness. If employed circumstances which exist only if a famous mark is involved
and designed in a distinctive manner, can be registered and there is a demonstrated intent to capitalize it.
trademark device.
CASE: Mighty corporation vs ej gallo
CASE: Shang Properties vs St. Francis In determining the likelihood of confusion, the Court must
- Descriptive geographical terms are in the public domain in consider:
the sense that every seller should have the right to inform a. Resemblance between the trademarks;
customers of the geographical origin of his goods. b. the similarity of the goods to which the trademarks are
- Test to determine WON the geographical term is attached;
descriptively used: a. Is the mark the name of the place or c. the likely effect on the purchaser; and
region from which the goods actually come? If yes, then it is a d. the registrant’s express or implied consent and other fair
geographic term, used in a descriptive sense, and secondary and equitable considerations.
meaning is required for protection. - The use of an identical mark does not, by itself, lead to a
legal confusion that there is trademark infringement.
CASE: Alhambra case
The law does not prohibit or enjoin every similarity. The
similarity must be such that the ordinary purchaser will be
deceived into the belief that the goods are those of another;

CASE: Philip morris case

Likelihood of Confusion: The particular; and sometime
peculiar, circumstances of each case being determinative of
its existence.

CASE: Societe des produits nestle

NO DEFINITE RULE
- Each cases must be decided on its own merits. The
likelihood of confusion is a relative concept.
- The wisdom of the likelihood of confusion lies in its
recognition that each trademark infringement case presents
CASE: McDonalds corp vs lc big mak burger
its own unique set of facts.
- Under the dominancy test, courts give greater weight to the
similarity of the appearance of the product arising from the
Test to determine Confusing Similarity of Marks adoption of the dominant features of the registered mark,
2 Types of Confusion disregarding minor differences. Courts will consider more the

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aural and visual impressions created by the marks in the prima facie evidence that the mark has become distinctive.
public mid, giving little weight to factors like price, quality,
sales outlets and market segments.

- If the competing trademark contains the dominant features

of another and causes confusion, trademark infringement took
place.

(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;
- The mark is already well-known and determined by a
competent authority.
- This is an exception to the principle of territoriality.
- Protection is limited: identical or similar goods or services.
- Elements of well-known marks: knowledge of the relevant
sector of the public

(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;
- here the well-known mark is registered.
- entitled to protection even if the goods is not similar.

CASE: FREDCO MANUFACTURING VS PRESIDENT AND FELLOWS OF HARVARD

COLLEGE
- Even before Harvard University applied for registration of
the mark “Harvard” in the PH, the mark was already
protected under Article 6 bis and Article 8 of the Paris
Convention.
- Harvard is a tradename, this deserves already protection
even without registration.

(cont. Sec. 123, IPC)

(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.

Exceptions
- Descriptive marks, shapes, and color alone, may be
registered if it has become distinctive in relation to the goods
for which registration is requested as a result of the use that
has been made of it in commerce in the PH.
DOCTRINE OF SECONDARY MEANING: IPO may accept as

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Proof of substantially exclusive and continuous use for 5

years before the date on which the claim of distinctiveness
is made.

CASE: ang v Teodoro

Doctrine of Secondary Meaning: a word or phrase originally
incapable of exclusive appropriation with reference to an
article on the market, because geographically or otherwise
descriptive, might nevertheless have been used so long and
so exclusively by one producer with reference to his article
that, in the trade and to the branch of the purchasing public,
the word or phrase has come to mean that the article was
his product.

CASE: Shang Properties vs St. Francis

Sec. 123.2 of the IP Code, requirements to conclude that a
geographically descriptive mark has acquired secondary
meaning:
a. The secondary meaning must have arisen as a result of
substantial commercial use of a mark in the PH;
b. Such use must result in the distinctiveness of the mark
insofar as the goods or the products are concerned; and
c. Proof of the substantially exclusive and continuous
commercial use in the PH for 5 years before the date on
which the claim of distinctiveness is made.
- A & B are the basic requirements.

Protection of Tradename/business names

- this is the one that identifies the business and does not
need protection
- When it comes to remedies, those provided in Sec. 153-
156 and 166-167 IPC applies, mutatis mutandis.

Trademark infringement
Elements of Trademark Infringement
a. Ownership of a trademark through Registration
b. Trademark is reproduced, counterfeited, copied, or
colourably imitated by another
c. No consent by the trademark owner or assignee
d. Use in connection with the sale, offering for sale, or
advertising of any such goods, business or services or those
related
e. Likelihood of confusion. This is the gravamen of
infringement.
-Types: as to the goods themselves (confusion of goods) , as
to the source or origin of such goods (confusion of business)
Idem Sonans Rule: Aural effects of the words and letters
contained in the marks are also considered in determining
the issue of confusing similarity.

- If there’s no intention to use it in commerce, there’s no

infringement.
- mere unauthorized use of a contained bearing a registered
trademark is infringement
- Walang badfaith as long as ginamit mo in commerce yon
mark, guilty ka na.
- Use of identical of similar mark for non-identical, dissimilar
or non-related goods, no infringement. Exception:
internationally well-known marks or dilution of mark.
- The commission of the following acts by any person,
without the consent of the owner of the registered mark:

155.1. Use in commerce any reproduction, counterfeit, copy, or colorable

imitation of a registered mark or the same container or a dominant
feature thereof in connection with the sale, offering for sale, distribution,
advertising of any goods or services

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155.2. Reproduce, counterfeit, copy or colorably imitate a registered mark

or a dominant feature thereof and apply such reproduction, counterfeit,
copy or colorable imitation to labels, signs, prints, packages, wrappers, - since the law used deception here, there is a presence of
receptacles or advertisements intended to be used in commerce upon or in bad faith. Bad faith is required.
connection with the sale, offering for sale, distribution, or advertising of
goods or services on or in connection with which such use is likely to cause
confusion, or to cause mistake, or to deceive, Trademark Infringement vs Unfair Competition
Prior registration is a Registration of the
Counterfeit Goods prerequisite for the action trademark is not necessary
- any goods without authorization a trademark which is Fraudulent intent is not Fraudulent intent is essential
identical to the trademark validly registered which cannot be necessary
distinguished in its essential aspects Unauthorized use of a Passing off of one’s goods for
trademark the goods of another
Colorable Imitations
- close or ingenious imitation Trademark dilution
- products are not related - Lessening the capacity of a famous mark to identify and
distinguish goods and services, regardless of the presence or
Trademark Fair Use absence of:
Sec. 148: Registration of the mark shall not confer on the a. Competition between the owner of the famous mark and
registered owner the right to preclude third parties from using other parties; or
bona fide their names, addresses, pseudonyms, a b. likelihood of confusion, mistake or deception.
geographical name, or exact indication concerning the kind,
Subject to the principles of equity, the owner of a famous
quality, quantity, destination, value, place of origin, or time of
mark is entitled to an injunction against another person’s
production or of supply, of their goods or services: Provided,
commercial use in commerce of a mark or trade name, if such
that such use is confined to the purposes of mere
use begins after the mark has become famous and causes
identification or information and cannot mislead the public as
dilution of the distinctive quality of the mark.
to the source of the goods or services.

Tradename Infringement Rights of a trademark owner

a. Right to exclusive use of the mark in connection with one’s
Sec. 165.3 in relation to 153 to 156, IPC.
own goods or services resulting in likelihood of confusion.
- Only difference: registration is not a requirement for
b. Right to prevent others from use of an identical mark for
ownership of a tradename.
the same, similar or related goods or services.
- What is required is that the trade name is previously used in
trade or commerce in the PH.
ELEMENTS:
a. Ownership of a tradename
b. The tradename is reproduced, counterfeited, copied, or
colorably imitated by the infringer
c. Use in connection with the sale, offering for sale or
advertising of any goods, business or services, or those that
are related thereo.
d. No consent by the tradename owner
e. Likelihood of confusion.

Legal Remedies – Unfair Competition

- Important: you have established in the minds of the public
or market, you have a goodwill, this in itself can be the basis
of Cost of Action of any violation, it is not required to have a False Designation of origin, false description or representation
registered mark. - use of words, false, misleading representation, as long as it
will create a likelihood confusion, mistake, association,
- Any person who shall employ deception or any other means connection, one can be liable for false designation of origin,
contrary to good faith by which he shall pass off the goods false description or representation.
manufactured by him or in which he deals, or his business, or
services for those of the one having established such goodwill, Remedies and Jurisdiction
or who shall commit any acts calculated to produce and said a. Administrative actions – IPO-BLA, Concurrent with RTC-
result, shall be guilty of unfair competition. SCCs
b. Civil Actions, RTC-SCC concurrent with IPO-BLA
ELEMENTS: c. Criminal Action, exclusive with RTC-SCC: 2-5 years
a. Confusing similarity in the general appearance of the goods; imprisonment, P50,000 – P200,000 in fine.
b. Intent to deceive the public and defraud a competitor.

True Test of Unfair competition: whether the acts of the

a. Actions, and Damages and Injunction for Infringement
defendant have the intent of deceiving or are calculated to - Sec. 156.1: Recover damages from any person either:
deceive the ordinary buyer making his purchases under the reasonable profit which the complaining party would have
ordinary conditions of the particular trade to which the made, had the defendant not infringed his rights, or the profit
controversy relates. which the defendant actually made out of the infringement, or
in the event such measure of damages cannot be readily
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ascertained with reasonable certainty, then the court may

- Confined to literary and artistic works which are original
award as damages a reasonable percentage based upon the
intellectual creations in the literary and artistic domain
amount of gross sales of the defendant or the value of the
protected from the moment of their creation
services in connection with which the mark or trade name was
- Extended to the creator should ensure his attainment of
used.. (Read 156.1 – onwards)
some form of personal satisfaction and economic reward
- He must be the original creator of the work: entitled to the
b.Power of Court to Order Infringing Material Destroyed right. He must not be directly copying or evasively imitating
a. disposed of outside the channels of commerce in such a the work of another. (Original intellectual creations in the
manner as to avoid any harm caused to the right holder, or literary and artistic domain protected from the moment of
destroyed their creation)
- The Court now allows the donations of the counterfeit goods
as long as it won’t return to the market. Basic Principles
a. Protected from the moment of creation
c. Damages; Requirement of Notice b. Deposit and notice in national library of the Philippines
- For damages, the acts have been committed with knowledge. - Within 3 weeks from first public dissemination of
performance by authority, by authority of the owner of the
d. Limitation to Actions for Infringement original work, for the purpose of completing the records of the
1. No effect against any person who in good faith before the National Library and the SC Library be registered and
filing date or the priority date was using the mark for the deposited with it. 2 complete copies or reproduction.
purposes of his business or enterprise - This will be the best evidence of original work, but this is
2. Engaged solely in the business of printing the mark or only highly advisable
other infringing materials for others is an innocent infringer. - No formalities required (automatic protection). It must be
Entitled claim is injunction against future printing an artistic or literary work (Expression vs. Functional or
3. contained in or is part of paid advertisement in a Technical Work [pag dito, patent]), and original (personal
newspaper, magazine, or other similar periodical or in an involvement or creativity).
electronic communication, the remedies of the owner of the
right infringed limited to an injunction against the Unprotected Subject Matter
presentation of such advertising matter in future issues. Section 175:
Applicable only to innocent infringers. a. Any idea, procedure, system, method or operation,
4. Injunctive relief shall not be available to the owner of the concept, principle, discovery or mere data as such, even if
right infringed with respect to: newspaper, magazine or other they are expressed, explained, illustrated or embodied in a
similar periodical or an electronic communication. (like news work;
of the day) - u have an idea, the idea is something cannot be exclusively
owned nor protected by copyright. If idea is already
CASE: Juan vs Juan expressed, the expression becomes copyrightable (example is
- Copyright should be confused with trademark. painting, nakikita mo na, di na siya idea)
- The mark Lavandera Ko, used by Fernando and Robert, is
used as a tradename or service name since the business b. News of the day and other miscellaneous facts having the
involved consists of rendering laundry services. The song, character of mere items of press information; or
Lavandera Ko, composed by Suarez, is protected by - Because anybody can write about a certain incident or news,
copyright, not trademark. but once already written it is copyrightable.

CASE: Citigroup Inc vs Citystate Savings Bank c. any official text of a legislative, administrative or legal in
- Petitioner’s marks can be described as consisting of the nature, as well as any official translation thereof.
prefix “Citi” added to other words. Applying the dominancy
test, this Court sees that the prevalent feature of Section 176
respondent’s mark, the golden lion’s head device, is not a. Works of the Government
present at all in any of petitioner’s marks. The only similar - Government can own copyright if the same is donated, sold
feature between respondent’s mark and petitioner’s collection or assigned to the government office.
of marks is the word “City” in the former, and the “Citi” prefix - If you’re going to exploit government work for profit, you
found in the latter. This Court agrees with the findings of the must ask the consent of the involved office/agency. But if the
CA that this similarity alone is not enough to create a works of government is a result of public deliberation or
likelihood of confusion. public character in nature, no prior approval is needed.
- The author of speeches, lectures, sermons, addresses, and
dissertations shall have the exclusive right of making a
Copyright collection of his works.
General Principle - Not because a certain copyrightable work is incorporated in
- It is a purely statutory right, the rights are limited to what the work of government mean is no longer protected by
the statute confers. copyright.
- It can only cover the works falling within the statutory
enumeration or description Copyright as distinct from Material Object
- Refers to finished works it does not extend to idea, GR: Copyright is distinct from the property in the material
procedure, process, system, method of operation, concept, object subject to it. The transfer or assignment of the
principle, or discover, regardless of the form in which it is copyright shall not itself constitute a transfer of the material
described, explained, illustrated, or embodied in such work. object. Nor shall a transfer or assignment of the sole copy or
of one or several copies of the work imply transfer or
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assignment of the copyright.

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Set of Rights for Copyright

XPN: Work of architecture: it include the right to control the
erection of any building which reproduces the whole or a
a. Copy or Economic Rights of the owner of the work:
177.1. Reproduction of the work or substantial portion of the work;
substantial part of the work either in its original form or in 177.2. Dramatization, translation, adaptation, abridgment, arrangement or
any form recognizably derived from the original. Provided that other transformation of the work;
the copyright in any such work shall not include the right to 177.3. The first public distribution of the original (first sale doctrine) and
control the reconstruction or rehabilitation in the same style each copy of the work by sale or other forms of transfer of ownership;
177.4. Rental of the original or a copy of an audiovisual or cinematographic
as the original of a building to which that copyright relates. work, a work embodied in a sound recording, a computer program, a
- it includes the right to control the erection of the building. compilation of data and other materials or a musical work in graphic form,
irrespective of the ownership of the original or the copy which is the subject
Original Works of the rental; (n)
177.5. Public display of the original or a copy of the work;
SEC. 172: - Not inclusive 177.6. Public performance of the work; and
SECTION 172. Literary and Artistic Works. - 172.1. Literary and artistic 177.7. Other communication to the public of the work. (Sec. 5, P.D. No. 49a)
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: Duration of Economic Rights
Literary and Artistic Works, Life of author + 50 years
(a) Books, pamphlets, articles and other writings; derivative works after his death
(b) Periodicals and newspapers;
(c) Lectures, sermons, addresses, dissertations prepared for oral delivery, Joint Authorship Life of the last surviving
whether or not reduced in writing or other material form; author + 50 years after his
(d) Letters; death
(e) Dramatic or dramatico-musical compositions; choreographic works or Anonymous or 50 years from date it is first
entertainment in dumb shows;
Pseudonymous Works lawfully published. If before
(f) Musical compositions, with or without words;
(g) Works of drawing, painting, architecture, sculpture, engraving, expiration of period, identity
lithography or other works of art; models or designs for works of art; is revealed or no longer in
(h) Original ornamental designs or models for articles of manufacture, doubt, the rule on literary
whether or not registrable as an industrial design, and other works of and joint authorship applies
applied art;
(i) Illustrations, maps, plans, sketches, charts and three-dimensional works Work of Applied Art 25 years from date of
relative to geography, topography, architecture or science; making
(j) Drawings or plastic works of a scientific or technical character; Photographic works; If Published, 50 years from
(k) Photographic works including works produced by a process analogous to Audiovisual publication
photography; lantern slides;
(l) Audiovisual works and cinematographic works and works produced by a
Unpublished – 50 years from
process analogous to cinematography or any process for making audio- making
visual recordings; Performance not 50 years from end of the
(m) Pictorial illustrations and advertisements; incorporated in recordings year in which performance
(n) Computer programs; and took place
- Usually asked in the Bar
- This is not patentable, but protected by copyright Sound recordings and 50 years from end of the
- Software applications or computer acts performances year in which recording took
place
(o) Other literary, scholarly, scientific and artistic works.
- Counting starts from date of death or publication but the
172.2. Works are protected by the sole fact of their creation, irrespective of term begins from January 1 following the event.
their mode or form of expression, as well as of their content, quality and
purpose. (Sec. 2, P.D. No. 49a)
Exhaustion of Rights
- Only the expression of an idea is protected by copyright, not the idea itself. a. National Exhaustion
- Functional components of useful articles, no matter how artistically b. Regional Exhaustion
designed, have generally been denied copyright protection unless they are c. International Exhaustion
separable from the useful article.
- RE-READ PEARL AND DEAN VS SHOEMART
CASE: Kirtsaeng vs john wiley & sons, inc
- Copyright also protects Derivative works - The first sale doctrine: notwithstanding the provisions of
- This will be protected as new work as long as it will not each 106(3) the section that grants the owner exclusive
affect the force of any subsisting copyright upon the original distribution rights, the owner of a particular copy or
works employed or any part thereof, or be construed to imply phonorecord lawfully made under this tittle is entitled, without
any right to use of the original works, or to secure or extend the authority of the copyright owner, to sell or otherwise
copyright in such original works dispose of the possession of that copy or phono record.
- SC: Exhausted na yon right nila John Wiley because it is
(Sec. 173): already made in the public.
(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. (Sec. 2, (P) and (Q), P.D.
No. 49)

- Compilation of Data must be of original work to be

copyrightable.

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mechanical or electrical reproduction in accordance with the

reasonable and customary standards or requirements of the
medium in which the work is to be used, shall not be deemed
to contravene the author’s rights secured by this chapter. Nor
shall complete destruction of a work unconditionally transferred
by the author be deemed to violate such rights.
- Editing is needed for necessity

Subsequent Transfer
- this right shall exist during the lifetime of the author for
50 years after his death: droit de suite

- Sale or Lease of Work. - In every sale or lease of an original

work of painting or sculpture or of the original manuscript of a
writer or composer, subsequent to the first disposition thereof
- Reproduction: can refer to one or two copies, temporary or by the author, the author or his heirs shall have an inalienable
permanent, in whole in or in part. right to participate in the gross proceeds of the sale or lease
to the extent of five percent (5%). This right shall exist during
B. Moral Rights the lifetime of the author and for fifty (50) years after his
SECTION 193. Scope of Moral Rights. - The author of a work shall, death.
independently of the economic rights in - Exception: not apply to prints, etchings, engravings, works
Section 177 or the grant of an assignment or license with respect to such of applied art, or works of similar kind wherein the author
right, have the right:
primarily derives gain from the proceeds of reproductions.
193.1. To require that the authorship of the works be attributed to him, in
particular, the right that his name, as far as practicable, be indicated in a Ownership and Presumption of Ownership
prominent way on the copies, and in connection with the public use of his
work; 1. Original and artistic works, copyright shall belong to the
193.2. To make any alterations of his work prior to, or to withhold it from author of the work;
publication; 2. Works of joint authorship, the co-authors shall be the
193.3. To object to any distortion, mutilation or other modification of, or original owners of the copyright and in the absence of
other derogatory action in relation to, his work which would be prejudicial to
agreement, their rights shall be governed by the rules on co-
his honor or reputation; and
193.4. To restrain the use of his name with respect to any work not of his ownership. If, however, a work of joint authorship consists of
own creation or in a distorted version of his work. (Sec. 34, P.D. No. 49) parts that can be used separately and the author of each part
can be identified, the author of each part shall be the original
- Right of Attribution; right to be recognize. Refer to the owner of the copyright in the part that he has created;
author when used.
- This is also right of integrity. This is a link between the 3. Works created by an author during and in course of his
author and the work employment, the copyright shall belong to:
a. if the creation is not part of his regular duties even
Waiver of Moral Rights if the employee uses the time, facilities and materials of the
SECTION 195. Waiver of Moral Rights. - An author may waive his rights employer – the employee owns.
mentioned in Section 193 by a written instrument, but no such waiver shall b. If work is the result of his regular duties, it
be valid where its effects is to permit another: belongs to the employer unless there’s a stipulation.
195.1. To use the name of the author, or the title of his work, or otherwise
to make use of his reputation with respect to any version or adaptation of
his work which, because of alterations therein, would substantially tend to 4. Work commissioned by a person other than an employer of
injure the literary or artistic reputation of another author; or the author and pays for it and the work is made in pursuance
195.2. To use the name of the author with respect to a work he did not of the commission, the person who so commissioned the work
create. (Sec. 36, P.D. No. 49) shall have ownership of the work, but the copyright shall
remain with the creator, unless there’s a written stipulation to
- Breach of Contract: an author cannot be compelled to perform the contrary.
his contract to create a work or for the publication of his work
already in existence. However, he may be held liable for 5. Audiovisual work, the copyright shall belong to the
damages for breach of such contract. producer, the author of the scenario, the composer of the
- An example is when you commissioned someone to write a music, the film director, and the author of the work so
book for you, and the writer refused to publish or withheld the adapted. However, subject to contrary or other stipulations
book after its completion, the person who asked for the among the creators, the producer shall exercise the copyright
commission can ask for damage he CANNOT ask for specific to an extent required for the exhibition of the work in any
performance. manner, except for the right to collect performing license fees
for the performance of musical compositions, with or without
- When an author contributes to a collective work, his right to words, which are incorporated into the work; and
have his contribution attributed to him is deemed waived
unless he expressly reserves it. 6. In respect of letters, the copyright shall belong to the
- Editing, Arranging and Adaptation of Work. - In the absence writer subject to the provisions of Article 723 of the Civil
of a contrary stipulation at the time an author licenses or Code. (Sec. 6, P.D. No. 49a)
permits another to use his work, the necessary editing, - Art. 723 of the Civil Code
arranging or adaptation of such work, for publication, - 1987 Constitution, Art. 3, Sec. 3
broadcast, use in a motion picture, dramatization, or - Letter belongs to the recipient, the copyright belongs to the

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write of the letter.

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Anonymous and Pseudonym Works SECTION 208. Scope of Right. - Subject to the provisions of Section 212,
– publishers shall be deemed to represent the authors of the producers of sound recordings shall enjoy the following exclusive rights:
articles unless the writer is identified. 208.1. The right to authorize the direct or indirect reproduction of their
sound recordings, in any manner or form; the placing of these reproductions
Presumption of Ownership in the market and the right of rental or lending;

1. Natural person whose name is indicated on a work in the 208.2. The right to authorize the first public distribution of the original and
usual manner, in the absence of proof, be presumed to be copies of their sound recordings through sale or rental or other forms of
author of the work. transferring ownership; and
2. Person or body corporate whose name appears on a audio-
208.3. The right to authorize the commercial rental to the public of the
visual work in the usual manner shall, in the absence of proof original and copies of their sound recordings, even after distribution by them
to the contrary be presumed to be the maker of said work. by or pursuant to authorization by the producer. (Sec. 46, P.D. No. 49a)

SECTION 209. Communication to the Public. - If a sound recording published

Neighboring or Related Rights for commercial purposes, or a reproduction of such sound recording, is used
- They are not the creator but they are the person/people directly for broadcasting or for other communication to the public, or is
responsible for recording and/or broadcasting publicly performed with the intention of making and enhancing profit, a
single equitable remuneration for the performer or performers, and the
1. Performers’ Rights producer of the sound recording shall be paid by the user to both the
Sec. 203: right to authorizing: performers and the producer, who, in the absence of any agreement shall
a. The broadcasting and other communications to the public of their share equally. (Sec. 47, P.D. No. 49a)
performances; and
b. Fixation of their unfixed performances SECTION 210. Limitation of Right. - Sections 184 and 185 shall apply
mutatis mutandis to the producer of sound recordings. (Sec. 48, P.D. No.
03.2. The right of authorizing the direct or indirect reproduction of their 49a)
performances fixed in sound recordings, in any manner or form;

203.3. Subject to the provisions of Section 206, the right of authorizing the 3. Broadcasting Organizations
first public distribution of the original and copies of their performance fixed - They only have economic rights
in the sound recording through sale or rental or other forms of transfer of SECTION 211. Scope of Right. - Subject to the provisions of Section 212,
ownership; broadcasting organizations shall enjoy the exclusive right to carry out,
authorize or prevent any of the following acts:
203.4. The right of authorizing the commercial rental to the public of the
original and copies of their performances fixed in sound recordings, even 211.1. The rebroadcasting of their broadcasts;
after distribution of them by, or pursuant to the authorization by the
performer; and 211.2. The recording in any manner, including the making of films or the
use of video tape, of their broadcasts for the purpose of communication to
203.5. The right of authorizing the making available to the public of their the public of television broadcasts of the same; and
performances fixed in sound recordings, by wire or wireless means, in such
a way that members of the public may access them from a place and time 211.3. The use of such records for fresh transmissions or for fresh
individually chosen by them. (Sec. 42, P.D. No. 49a) recording. (Sec. 52, P.D. No. 49)

SECTION 204. Moral Rights of Performers. - 204.1. Independently of a

performer’s economic rights, the performer, shall, as regards his live aural
CASE: ABS-CBN Broadcasting corporation vs ph multimedia
performances or performances fixed in sound recordings, have the right to system
claim to be identified as the performer of his performances, except where
- Retransmission is not rebroadcasting
the omission is dictated by the manner of the use of the performance, and
to object to any distortion, mutilation or other modification of his - Rebroadcasting is the simultaneous broadcasting by one
performances that would be prejudicial to his reputation. broadcasting organization of the broadcast of another
broadcasting organization.
204.2. The rights granted to a performer in accordance with Subsection
203.1 shall be maintained and exercised fifty (50) years after his death, by
his heirs, and in default of heirs, the government, where protection is
claimed. (Sec. 43, P.D. No. 49)

SECTION 205. Limitation on Right. - 205.1. Subject to the provisions of

Section 206, once the performer has authorized the broadcasting or fixation
of his performance, the provisions of Sections 203 shall have no further
application.

205.2. The provisions of Section 184 and Section 185 shall apply mutatis
mutandis to performers. (n)

SECTION 206. Additional Remuneration for Subsequent Communications or

Broadcasts. - Unless otherwise provided in the contract, in every
communication to the public or broadcast of a performance subsequent to
the first communication or broadcast thereof by the broadcasting
organization, the performer shall be entitled to an additional remuneration
equivalent to at least five percent (5%) of the original compensation he or
she received for the first communication or broadcast. (n)

SECTION 207. Contract Terms. - Nothing in this Chapter shall be construed

to deprive performers of the right to agree by contracts on terms and
conditions more favorable for them in respect of any use of their
performance. (n)

2. Producers of Sound Recordings

- They only have economic rights
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(j) Public display of the original or a copy of the work not made by means of
a film, slide, television image or otherwise on screen or by means of any
other device or process: Provided, That either the work has been published,
or, that the original or the copy displayed has been sold, given away or
otherwise transferred to another person by the author or his successor in
title; and

(k) Any use made of a work for the purpose of any judicial proceedings or
for the giving of professional advice by a legal practitioner.

(i) The reproduction or distribution of published articles or materials in a

specialized format exclusively for the use of the bind, visually and reading-
impaired persons: Provided, that such copies and distribution shall be made
on a nonprofit basis and shall indicate the copyright owner and the date of
the original publication.

Term of Moral Rights 184.2. The provisions of this section shall be interpreted in such a way as to
allow the work to be used in a manner which does not conflict with the
- Shall last during the lifetime of the author normal exploitation of the work and does not unreasonably prejudice the
right holder’s legitimate interests.

Limitations (memorize) Plagiarism

Sec. 184
184.1. Notwithstanding the provisions of Chapter V, the following acts shall - Theft of another person’s language, thoughts, or ideas. To
not constitute infringement of copyright: plagiarize, is to take from another and pass them off as one’s
(a) The recitation or performance of a work, once it has been lawfully made own. The passing off of the work of another as one’s own is
accessible to the public, if done privately and free of charge or if made
strictly for a charitable or religious institution or society; (Sec. 10(1), P.D.
thus an indispensable element of plagiarism.
No. 49) - This presupposes intent and a deliberate, conscious effort to
steal another’s work and pass it off as one’s own.
(b) The making of quotations from a published work if they are compatible
with fair use and only to the extent justified for the purpose, including SECTION 185. Fair Use of a Copyrighted Work. - 185.1. The fair use of a
quotations from newspaper articles and periodicals in the form of press copyrighted work for criticism, comment, news reporting, teaching including
summaries: Provided, That the source and the name of the author, if multiple copies for classroom use, scholarship, research, and similar
appearing on the work, are mentioned; (Sec. 11, third par., P.D. No. 49) purposes is not an infringement of copyright. Decompilation, which is
understood here to be the reproduction of the code and translation of the
(c) The reproduction or communication to the public by mass media of forms of the computer program to achieve the inter-operability of an
articles on current political, social, economic, scientific or religious topic, independently created computer program with other programs may also
lectures, addresses and other works of the same nature, which are delivered constitute fair use.
in public if such use is for information purposes and has not been expressly
reserved: Provided, That the source is clearly indicated; (Sec. 11, P.D. No.
49) In determining whether the use made of a work in any
particular case is fair use, the factors to be considered shall
(d) The reproduction and communication to the public of literary, scientific include:
or artistic works as part of reports of current events by means of (a) The purpose and character of the use, including
photography, cinematography or broadcasting to the extent necessary for
the purpose; (Sec. 12, P.D. No. 49) whether such use is of a commercial nature or is for non-
profit educational purposes;
(e) The inclusion of a work in a publication, broadcast, or other (b) The nature of the copyrighted work;
communication to the public, sound recording or film, if such inclusion is (c) The amount and substantiality of the portion used in
made by way of illustration for teaching purposes and is compatible with fair
use: Provided, That the source and the name of the author, if appearing in
relation to the copyrighted work as a whole; and
the work, are mentioned; (d) The effect of the use upon the potential market for or
value of the copyrighted work.
CASE: Rappler vs andres bautista
- The SC recognized the right of Rappler to live stream the Fair Use: privilege to use the copyright material in a
2015 Philippine Presidential debate covered by broadcasting reasonable manner without the consent of the copyright
companies subject to certain clarifications owner or as a copying the theme or ideas rather than their
- Broadcasting cannot alter, must broadcast as is. expression. No question of fair or unfair use arises however, if
no copying is proved to begin with. This is inconsonance with
(f) The recording made in schools, universities, or educational institutions of the principle that there can be no infringement if there was no
a work included in a broadcast for the use of such schools, universities or copying. It is only where some form of copying has been
educational institutions: Provided, That such recording must be deleted shown that it becomes necessary to determine whether it has
within a reasonable period after they were first broadcast: Provided, further,
That such recording may not be made from audiovisual works which are been carried to an “unfair”, that is, illegal, extent.
part of the general cinema repertoire of feature films except for brief
excerpts of the work; CASE: ABS – CBN Corp vs Gozon (read the case digest in the PPT)
(g) The making of ephemeral recordings by a broadcasting organization by - Infringement under the IPC is malum prohibitum. Copyright
means of its own facilities and for use in its own broadcast; is a statutory creation
- GR: acts punished under a special law are malum
(h) The use made of a work by or under the direction or control of the
Government, by the National Library or by educational, scientific or
prohibitum. Malice or criminal intent is completely immaterial
professional institutions where such use is in the public interest and is - Good faith, lack of knowledge of the copyright, or lack of
compatible with fair use; intent to infringe is not a defense against copyright
infringement. Copyright, however, is subject to the rules of
(i) The public performance or the communication to the public of a work, in
fair use and will be judged on a case-to-case basis.
a place where no admission fee is charged in respect of such public
performance or communication, by a club or institution for charitable or
educational purpose only, whose aim is not profit making, subject to 185.2. The fact that a work is unpublished shall not by itself
such other limitations as may be provided in the Regulations; (n)
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bar a finding of fair use if such finding is made upon

consideration of all the above factors.

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the authors, performers or producers of sound recordings

Copyright Infringement concerned or permitted by law.
a. Directly commits infringement
b. Benefits from the infringing activity of another person who Rights Management Information
commits an infringement if the person benefitting has been - information which identifies the work, sound recording or
given notice of the infringing activity and has the right and performance; the author of the work, producer of the sound
ability to control the activities of the other person recording or performer of the performance; the owner of any
c. With knowledge of infringing activity, induces, causes or right in the work, sound recording or performance; or
materially contributes to the infringing conduct of another. information about the terms and conditions of the use of the
work, sound recording or performance; and any number or
ELEMENTS: code that represent such information, when any of these
a. Ownership of a valid copyright. (Affidavit Evidence) items is attached to a copy of the work, sound recording or
b. Exercise of any of the exclusive right in section 177 fixation of performance or appears in conjunction with the
c. Without the Consent of the copyright owner; unless: Fair communication to the public of a work, sound recording or
Use. performance.

CASE: Sanrio Company ltd vs lim Affidavit Evidence

- there is no infringement. - This will create presumption on the ownership of the work.
- Petitioner failed to prove that respondent knew that the
merchandise he sold was counterfeit.
- Evidence on record showed that respondent bought his Patents
merchandise from legitimate sources, as shown by official General Principle/Purpose
receipts from authorized resellers - Primary Purpose: for the advancement of the arts and
sciences. The function of a patent is to add to the sum of
CASE: Habana vs robles useful knowledge and one of the purposes of the patent
- Copying alone is not prohibited, the copying must produce system is to encourage dissemination of information
an injurious effect. concerning discoveries and inventions.

Fair Use Exceptions (Possible Qs) 3 fold purpose

- Fair use for criticism, comment, news reporting, teaching 1. Seeks to foster reward and invention
including limited multiple number of copies for classroom use, 2. Promotes disclosures of inventions to simulate further
scholarship, research and similar purposes innovations and to permit the public to practice the invention
once the patent expires; and
FACTORS TO BE CONSIDERED IN DETERMING FAIR USE 3. The stringent requirements for patent protection seek to
a. Purpose and character of the use ensure that ideas in the public domain remain there for the
b. Nature of the copyrighted work free use of the public.
c. Amount & substantiality of the portion used in relation to
the copyrighted work as a while; and - After the expiration of protection, the patent can be used by
d. Effect of the use upon the potential market for or value of others or individuals to improve it.
the copyrighted work. - Exclusive rights are limited

Who is liable for infringement?

a. directly commits an infringement
Principles to Apply:
1. Territorial – registered in the jurisdiction to be protected;
b. Benefits from the activity if the person has been given
patents are only valid in the country or region in which they
notice of the infringing activity and has the right and ability to
have been granted
control the activities of other person;
c. With knowledge of infringing activity, induces, causes or
materially contributes to the infringing conduct of another 2. Exclusive – right to exclude others from making, using,
selling, offering for sale or importing products or process. This
Q: Is hacking a copyright infringement? is a monopoly but no obligation to commercialize invention.
A: if you copy the contents, you area liable for copyright
infringement. 3. Disclosure – the need for publication and disclosure. It
must be sufficient so that it can be carried out by the person
skilled in the art.
Remedies for Infringement
Read Section 216 4. Limited rights – rights granted are subject to limitations
a. Injunction 5. Conditional – compliance with criteria and conditions both
b. Pay damages prior to and subsequent to grant
c. Delivery for impounding or destruction, it will also be done
despite the event of acquittal in a criminal case. 6. First to file rule – priority in right is the first
person/applicant who filed an application subject to principle
Technological Measure of bad faith.
- Any technology, device or component that, in the normal
course of its operation, restricts acts in respect of a work, Patentable Inventions
performance or sound recording, which are not authorized by - Any technical solution of a problem in any field of human
activity which is new, involves an inventive step and is
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industrially applicable shall be patentable. It may be, or

may

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relate to, a product, or process, or an improvement of any 1. Ordinary practitioner (fictional person)
of the forgoing (Sec. 21, IPC)

1. Product
2. Process
3. Improvement

- Invention is not equivalent to

patent; What is an invention?

- A product, a process, or an improvement.

Elements of Patentable Invention

a. New
– novel, no prior art, or disclosure
- an invention shall not be considered new if it forms part of a
prior art.
- Novelty is not something which can be proved or
established; only its absence can be proved. Prior disclosure
must not be confidential or restricted.

I. Prior Art is: everything which has been made available to

the public anywhere in the world;

- the whole contents of an application for a patent, utility

model or industrial design registration: Published in
accordance with the IP Code (18 months from filing date or
priority date, mandatory publication), filed or effective in the
PH, with filing or priority date earlier than the application.

Mandatory Publication
- the application shall be published in the IPO Gazette
together with a search document established by or on behalf
of the Office citing any documents that reflect prior act.

- After publication, any interested party may inspect the

application documents filed with the Office.

Purpose: for public welfare, social justice, balancing of

interest.

CASE: Structural Rubber Products Co vs Park Rubber Co.

- How much information from prior art is sufficient?
- The defense of lack of novelty can only be established by a
single prior art reference which discloses each and every
element of the claimed invention.

RULE: If you publish your invention in a journal, demonstrate,

sell or discuss your invention in public before you file a patent
application, you cannot get a patent. BUT, you have a grace
period: Non – Prejudicial Disclosure:

1. Disclosure by the inventor or maker or one with the right to

the patent. (must be filed within 1 year from the time of
disclosure)
2. Disclosure by the Designer (Industrial Design) – must be
filed within 6 months from the time of disclosure.

b.Inventive Step
– not obvious
- 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.

Person skilled in the Art

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a. Has access and understanding of all the prior art (this will be protected under copyright law)
b. Aware of common general knowledge in the
specific art
c. Observes developments in the related technical filed

2. Could be a team
3. Need not to have inventive ability

- For drugs and medicines, there is no inventive step. If the

invention results from the mere discovery of:
a. A new form or property of a known substance if it does
not enhance the efficacy of the substance;
b. Any new property or new use for a known substance; or
c. the mere use of a known process unless such process
results in a new product that employs at least one new
reactant.

The Graham Test

a. Scope and content of the prior art
b. Difference between the prior art and the claims at issue
c. Level of ordinary skill in the pertinent art

Secondary Considerations
a. Commercial success
b. Long felt need
c. Failure of others

c. Industrially Applicable
- useful, beneficial and practicable.
- If the invention can be produced and used in any industry.

Non – Patentable Invention

22.1. Discoveries, scientific theories and mathematical methods, and in
the case of drugs and medicines, the mere discovery of a new form or
new property of a known substance which does not result in the
enhancement of the known efficacy of that substance, or the mere
discovery of any new property or new use for a known substance, or the
mere use of a known process unless such known process results in a new
product that employs at least one new reactant.

For the purpose of this clause, salts, esters, ethers, polymorphs,

metabolites, pure form, particle size, isomers, mixtures of isomers,
complexes, combinations, and other derivatives of a known substance
shall be considered to be the same substance, unless they differ
significantly in properties with regard to efficacy;

22.2. Schemes, rules and methods of performing mental acts, playing

games or doing business, and programs for computers;

22.3. Methods for treatment of the human or animal body by surgery or

therapy and diagnostic methods practiced on the human or animal body.
This provision shall not apply to products and composition for use in any
of these methods;

22.4. Plant varieties or animal breeds or essentially biological process for

the production of plants or animals. This provision shall not apply to
microorganisms and non-biological and microbiological processes.

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:

22.5. Aesthetic creations; and

22.6. Anything which is contrary to public order or morality.

IN SHORT:
a. Discoveries
b. Scientific theories
c. Mathematical methods
d. Schemes, rules and methods of performing mental acts,
playing games, doing business, and program for computers

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e. Methods for treatment of the human or animal body by

surgery or therapy and diagnostic methods practiced on the Disclosures and Claims
human and animal body. - Application must contain claims determining the scope of
f. Plant varieties or animal breeds or essentially biological the protection.
processes for the production of plants and animals. - Must conclude with a claim, pointing out and distinctly
g. Aesthetic creations; and claiming the part, improvement or combination which the
h. Those contrary to public order or morality. applicant regards as his invention.
- Must be clear and concise and fully supported by the
Non – Patentable Drugs and Medicine description.
- Third basic requirement is important since the claims are
1. New form or new property of a known substance which
the basis of interpretation of patent protection
does not result in the enhancement of the known efficacy of
- It is from the claims that third parties are able to known
that substance;
what they may do and what they may not do. It may not be
2. New property or new use for a known substance
significantly broader or different from that which has been
3. The mere use of a known process unless such known
described.
process results in a new product that employs at least one
- The claims are the center of the heart of any granted patent
new reactant.
because they define the protection which is the purpose of the
patent, that is to say, they define clearly the scope of the
Right to a Patent exclusive right provided by the patent.
SECTION 28. Right to a Patent. - The right to a patent belongs to the - Disclosure and Description: application shall disclose 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. (Sec.
invention in a manner sufficiently clear and complete for it to
10, R.A. No. 165a) be carried out by the person skilled in the art.
- Application shall contain 1 or more claims which shall define
SECTION 30. Inventions Created Pursuant to a Commission. - 30.1. The the matter for which protection is sought. Each claim shall be
person who commissions the work shall own the patent, unless otherwise
provided in the contract.
clear and concise, and shall be supported by the description

30.2. In case the employee made the invention in the course of his
employment contract, the patent shall belong to: Term of Patent
- 20 years from the filing date of the application
(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.
Rights Conferred by a Patent
(b) The employer, if the invention is the result of the performance of his SECTION 71. Rights Conferred by Patent. - 71.1. A patent shall confer on its
regularly-assigned duties, unless there is an agreement, express or implied, owner the following exclusive rights:
to the contrary. (n)
(a) Where the subject matter of a patent is a product, to restrain, prohibit
and prevent any unauthorized person or entity from making, using, offering
First to File Rule for sale, selling or importing that product;
- Subject to the principle of good faith
SECTION 29. First to File Rule. - If two (2) or more persons have made the (b) Where the subject matter of a patent is a process, to restrain, prevent
invention separately and independently of each other, the right to the or prohibit any unauthorized person or entity from using the process, and
patent shall belong to the person who filed an application for such invention, from manufacturing, dealing in, using, selling or offering for sale, or
or where two or more applications are filed for the same invention, to the importing any product obtained directly or indirectly from such process.
applicant who has the earliest filing date or, the earliest priority date. (3rd
sentence, Sec. 10, R.A. No. 165a) 71.2. Patent owners shall also have the right to assign, or transfer by
succession the patent, and to conclude licensing contracts for the same.
(Sec. 37, R.A. No. 165a)
Priority Date
- foreign filing Rights Conferred after publication of application, but before
SECTION 31. Right of Priority. - An application for patent filed by any person
who has previously applied for the same invention in another country which grant of Patent
by treaty, convention, or law affords similar privileges to Filipino citizens, SECTION 46. Rights Conferred by a Patent Application After Publication. -
shall be considered as filed as of the date of filing the foreign application: The applicant shall have all the rights of a patentee under Section 76
Provided, That: (a) the local application expressly claims priority; (b) it is against any person who, without his authorization, exercised any of the
filed within twelve (12) months from the date the earliest foreign application rights conferred under Section 71 of this Act in relation to the invention
was filed; and (c) a certified copy of the foreign application together with an claimed in the published patent application, as if a patent had been granted
English translation is filed within six (6) months from the date of filing in the for that invention: Provided, That the said person had:
Philippines. (Sec. 15, R.A. No. 165a)
46.1. Actual knowledge that the invention that he was using was the subject
Three Main Areas of Activity in the Grant of Patents matter of a published application; or

1. Examination as to form or formality examination; 46.2. Received written notice that the invention that he was using was the
2. Classification, search and first publication; and subject matter of a published application being identified in the said notice
3. Examination as to substance or substantive examination by its serial number: Provided, That the action may not be filed until after
the grant of a patent on the published application and within four (4) years
from the commission of the acts complained of. (n)
Parts of a Letters Patent
a. Abstract - Except you cannot import the product, unless you are
b. Description: title, background, summary, detailed already issued a certificate.
description - The action may not be filed until after the grant of a patent
c. Claims on the published application and within 4 years from the
d. Drawings: if applicable commission of the acts complained of.

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Legal Remedies 1. Owner of a patent has no right to prevent third parties

from making, using, offering for sale, selling or importing a
Test of Patent Infringement patented product in the following circumstances:
The making, using, offering for sale, selling or importing a
patented product or a product obtained directly or indirectly a. Using a patented product after it has been put on the
from a patented process, or the use of a patented process market in the Philippines by the owner of the product, or with
without the authorization of the patentee his express consent.

a. Literal Infringement Except: drugs or medicines. We apply international

- Exists if an accused device falls directly within the scope of exhaustion. Right to import the drugs and medicines under
properly interpreted claims. (Ex. Patent Claims) this provision shall be available to any government agency or
any private third party
b.Doctrine of Equivalents
b. Done privately and on a non-commercial scale or for a non-
– Functions – Means - Results Test: If two devices do the
commercial purpose (wag mo na pakelaman, wala ka naman
same work in substantially the same way and accomplish
kikitain)
substantially the same result, they are the same, even though
they differ in name, form or shape.
c. Exclusively for the purpose of experiments
d. In cases of drugs and medicines, where the act solely for
Grounds for Cancellation of Patents purposes reasonably related to the development and
SECTION 61. Cancellation of Patents. - 61.1. Any interested person may,
submission of information and issuance of approvals by
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: government regulatory agencies.
e. Act consists of the preparation for individual case
(a) That what is claimed as the invention is not new or patentable; (pharmacy or medical professional)
f. Used in any ship, vessel, aircraft, or land vehicle of any
(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;
other country entering the territory.
or
Parallel Importation
(c) That the patent is contrary to public order or morality.
- unauthorized importation of a patented drug or medicine,
61.2. Where the grounds for cancellation relate to some of the claims or and drugs or medicines obtained from a patented process.
parts of the claim, cancellation may be effected to such extent only. (Secs.
28 and 29, R.A. No. 165a) General Rule: Under Sec. 71 (a) and (b) IPC, the patentee of
SECTION 82. Patent Found Invalid May be Cancelled. - In an action for
drugs and medicines has the exclusive right to prevent any
infringement, if the court shall find the patent or any claim to be invalid, it unauthorized person from importing a patented product or
shall cancel the same, and the Director of Legal Affairs upon receipt of the one that is obtained from a patented process.
final judgment of cancellation by the court, shall record that fact in the
register of the Office and shall publish a notice to that effect in the IPO
Gazette. (Sec. 46, R.A. No. 165a)
Except: Cheaper Medicines Act, patent owner can no
long prevent an unauthorized person from using that product
once it has been introduced in the PH or anywhere in the
Remedies of the True and Actual Inventor against Patent world by the patent owner, or any authorized person to use
the invention. Any government agency or any private third
Application by Persons not having the right to a Patent party may also import such products.
SECTION 67. Patent Application by Persons Not Having the Right to a Patent.
- 67.1. If a person referred to in Section 29 other than the applicant, is 2. Where the act is done privately and on a non-commercial
declared by final court order or decision as having the right to the patent, scale or for a non-commercial purpose. Provided, that it does
such person may, within three (3) months after the decision has become not significantly prejudice the economic interest of the owner
final:
of the patent;
(a) Prosecute the application as his own application in place of the applicant;
(b) File a new patent application in respect of the same invention; 3. Where the act consists of making or using exclusively for
(c) Request that the application be refused; or experimental use of the invention for scientific purposes or
(d) Seek cancellation of the patent, if one has already been issued.
educational purposes and such other activities directly related
67.2. The provisions of Subsection 38.2 shall apply mutatis mutandis to a to such scientific or educational experimental use.
new application filed under Subsection 67.1(b). (n)
4. BOLAR EXCEPTION/PROVISION: in the case of drugs and
Remedies of the True and Actual Inventor: medicines, where the act includes testing, using, making or
- If a person, who was deprived of the patent without his selling the invention including any data related thereto, solely
consent or through fraud is declared by final court order or for purposes reasonable related to the development and
decision to be the true and actual inventor, the court shall submission of information and issuance of approvals by
order for his substitution as patentee, or at the option of the government regulatory agencies required under the laws of
true inventor, cancel the patent, and award actual and other the PH or of another country that regulates the manufacture,
damages in his favor if warranted by the circumstances. construction, use or sale of any product. The date submitted
by the original patent holder may be protected from unfair
commercial use in Art. 39.3 of the TRIPS Agreement.
Limitations on right to patent
(as amended by cheaper medicines act) 5. Where the act consist of the preparation for individual
cases, in pharmacy or by a medical professional, of a

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medicine

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in accordance with a medical prescription or acts concerning determination of the President of the Philippines for the purpose of
determining the need for such use or other exploitation, which shall be
the medicine so prepared.
immediately executory.

6. 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.

Prior User in Good Faith

SECTION 73. Prior User. - 73.1. 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.

73.2. 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.
40, R.A. No. 165a)

- From the filing of patent application until the first publication, the
invention is covered by trade secret.

Use by Government (possible question)

- 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;
or

(c) In the case of drugs and medicines, there is a national emergency or

other circumstance of extreme urgency requiring the use of the invention;
or

(d) In the case of drugs and medicines, there is public non-commercial use
of the patent by the patentee, without satisfactory reason; or

(e) In the case of drugs and medicines, the demand for the patented article
in the Philippines is not being met to an adequate extent and on reasonable
terms, as determined by the Secretary of the Department of Health.

74.2. Unless otherwise provided herein, the use by the Government, or third
person authorized by the Government shall be subject, where applicable, to
the following provisions:

(a) In situations of national emergency or other circumstances of extreme

urgency as provided under Section 74.1(c), the right holder shall be notified
as soon as reasonably practicable;

(b) In the case of public non-commercial use of the patent by the patentee,
without satisfactory reason, as provided under Section 74.1 (d), the right
holder shall be informed promptly: Provided, That, the Government or third
person authorized by the Government, without making a patent search,
knows or has demonstrable ground to know that a valid patent is or will be
used by or for the Government;

(c) If the demand for the patented article in the Philippines is not being met
to an adequate extent and on reasonable terms as provided under Section
74.1 (e), the right holder shall be informed promptly;

(d) The scope and duration of such use shall be limited to the purpose for
which it was authorized;

(e) Such use shall be non-exclusive;

(f) The right holder shall be paid adequate remuneration in the

circumstances of each case, taking into account the economic value of the
authorization; and

(g) The existence of a national emergency or other circumstances of

extreme urgency, referred to under Section 74.1 (c), shall be subject to the

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No. 165a)
74.3. All cases arising from the implementation of this provision shall be - This is not applicable in trademarks. Patent and Copyright
cognizable by courts with appropriate jurisdiction provided by law. meron.

No court, except the Supreme Court of the Philippines, shall issue any
temporary restraining order or preliminary injunction or such other
provisional remedies that will prevent its immediate execution.

74.4. The Intellectual Property Office (IPO), in consultation with the

appropriate government agencies, shall issue the appropriate
implementing rules and regulations for the use or exploitation of patented
inventions as contemplated in this section within one hundred twenty
(120) days after the effectivity of this law.

Legal Remedies
Extent of Protection
- The extent of protection conferred by the patent shall be
determined by the claims, which are to be interpreted in
the light of the description and drawings.
- For the purpose of determining the extent of protection
conferred by the patent, due account shall be taken of elements
which are equivalent (doctrine of equivalent) to the
elements expressed in the claims so that claim shall be
considered to cover not only all the elements as expressed
therein, but also equivalents.

CASE: Smith Kline Beckman vs CA

- When the language of its claims is clear and distinct, the
patentee is bound thereby and may not claim anything
beyond them. And so are the courts bound which may not
add or detract from the claims matters not expressed or
necessarily implied, nor may they enlarge the patent beyond
the scope of that which the inventor claimed and the patent
office allowed, even if the patentee may have been entitled
to something more than the words it had chosen would
include.

Civil Action for Infringement

SECTION 76. Civil Action for Infringement. - 76.1. The making, using,
offering for sale, selling, or importing a patented product or a product
obtained directly or indirectly from a patented process, or the use of a
patented process without the authorization of the patentee constitutes
patent infringement: Provided, That, this shall not apply to instances
covered by Sections 72.1 and 72.4 (Limitations of Patent Rights); Section
74 (Use of Invention by Government); Section 93.6 (Compulsory
Licensing); and Section 93-A (Procedures on Issuance of a Special
Compulsory License under the TRIPS Agreement) of this Code.

76.2. Any patentee, or anyone possessing any right, title or interest in and
to the patented invention, whose rights have been infringed, may bring a
civil action before a court of competent jurisdiction, to recover from the
infringer such damages sustained thereby, plus attorney’s fees and other
expenses of litigation, and to secure an injunction for the protection of his
rights.

76.3. If the damages are inadequate or cannot be readily ascertained with

reasonable certainty, the court may award by way of damages a sum
equivalent to reasonable royalty.

76.4. The court may, according to the circumstances of the case, award
damages in a sum above the amount found as actual damages sustained:
Provided, That the award does not exceed three (3) times the amount of
such actual damages.

76.5. The court may, in its discretion, order that the infringing goods,
materials and implements predominantly used in the infringement be
disposed of outside the channels of commerce or destroyed, without
compensation.

76.6. Anyone who actively induces the infringement of a patent or

provides the infringer with a component of a patented product or of a
product produced because of a patented process knowing it to be
especially adopted for infringing the patented invention and not suitable
for substantial non-infringing use shall be liable as a contributory infringer
and shall be jointly and severally liable with the infringer. (Sec. 42, R.A.

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exclusive technology transfer agreement;

Notice Requirement for Damages
SECTION 80. Damages; Requirement of Notice. - Damages cannot be
recovered for acts of infringement committed before the infringer had
known, or had reasonable grounds to know of the patent. It is presumed
that the infringer had known of the patent if on the patented product, or on
the container or package in which the article is supplied to the public, or on
the advertising material relating to the patented product or process, are
placed the words “Philippine Patent” with the number of the patent. (Sec.
44, R.A. No. 165a)

Criminal Liability for repeat infringer

- There must be a judgment for a prior act, then the
accused repeated by the act.
- Even if you are not a repeat infringer, but you connived with
the repeat infringer you will be charged.

SECTION 84. Criminal Action for Repetition of Infringement. - If

infringement is repeated by the infringer or by anyone in connivance with
him after finality of the judgment of the court against the infringer, the
offenders shall, without prejudice to the institution of a civil action for
damages, be criminally liable therefor and, upon conviction, shall suffer
imprisonment for the period of not less than six (6) months but not more
than three (3) years and/or a fine of not less than One hundred thousand
pesos (P100,000) but not more than Three hundred thousand pesos
(P300,000), at the discretion of the court. The criminal action herein
provided shall prescribe in three (3) years from date of the commission of
the crime. (Sec. 48, R.A. No. 165a)

Unfair Competition Involving Patents

CASE: Savage et. Al. vs judge taypin
- There is no mention of any crime of unfair competition
involving design patents in the controlling provisions of unfair
competition under the IPC.
- It is unclear whether the crime exists, and if there is
ambiguity, the statue must be strictly construe against the
State and liberally in favor of the accused. This is because
penal statutes cannot be enlarged or extended by
intendment, implication or any equitable consideration.

Prescriptive Period for Civil Action

- no damages can be recovered more than 4 years before the
institution of the action for infringement

Prescriptive Period for Criminal Action

- Prescribed in 3 years from date of the commission of the
crime.

Technology Transfer Agreements

- No prohibited clauses that are deemed prima facie to have
an adverse effect on competition

Prohibited Clauses
SECTION 87. Prohibited Clauses. - Except in cases under Section 91, the
following provisions shall be deemed prima facie to have an adverse effect
on competition and trade:

87.1. Those which impose upon the licensee the obligation to acquire from a
specific source capital goods, intermediate products, raw materials, and
other technologies, or of permanently employing personnel indicated by the
licensor;

87.2. Those pursuant to which the licensor reserves the right to fix the sale
or resale prices of the products manufactured on the basis of the license;

87.3. Those that contain restrictions regarding the volume and structure of
production;

87.4. Those that prohibit the use of competitive technologies in a non-

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87.5. Those that establish a full or partial purchase option in favor of the
licensor;

87.6. Those that obligate the licensee to transfer for free to the licensor
the inventions or improvements that may be obtained through the use of
the licensed technology;

87.7. Those that require payment of royalties to the owners of patents for
patents which are not used;

87.8. Those that prohibit the licensee to export the licensed product
unless justified for the protection of the legitimate interest of the licensor
such as exports to countries where exclusive licenses to manufacture and/or
distribute the licensed product(s) have already been granted;

87.9. Those which restrict the use of the technology supplied after the
expiration of the technology transfer arrangement, except in cases of
early termination of the technology transfer arrangement due to reason(s)
attributable to the licensee;

87.10. Those which require payments for patents and other industrial
property rights after their expiration, termination arrangement;

87.11. Those which require that the technology recipient shall not contest
the validity of any of the patents of the technology supplier;

87.12. 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;

87.13. 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;

87.14. Those which exempt the licensor for liability for non-fulfilment 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

87.15. Other clauses with equivalent effects. (Sec. 33-C (2), RA 165a)

Mandatory Clauses
SECTION 88. Mandatory Provisions. - The following provisions shall be
included in voluntary license contracts:

88.1. That the laws of the Philippines shall govern the interpretation of
the same and in the event of litigation, the venue shall be the proper
court in the place where the licensee has its principal office;

88.2. Continued access to improvements in techniques and processes

related to the technology shall be made available during the period of the
technology transfer arrangement;

88.3. In the event the technology transfer arrangement shall provide for
arbitration, the Procedure of Arbitration of the Arbitration Law of the
Philippines or the Arbitration Rules of the United Nations Commission on
International Trade Law (UNCITRAL) or the Rules of Conciliation and
Arbitration of the International Chamber of Commerce (ICC) shall apply
and the venue of arbitration shall be the Philippines or any neutral
country; and

88.4. The Philippine taxes on all payments relating to the technology

transfer arrangement shall be borne by the licensor. (n)

Exceptional Cases
SECTION 91. Exceptional Cases. - In exceptional or meritorious cases
where substantial benefits will accrue to the economy, such as high
technology content, increase in foreign exchange earnings, employment
generation, regional dispersal of industries and/or substitution with or use
of local raw materials, or in the case of Board of Investments, registered
companies with pioneer status, exemption from any of the above
requirements may be allowed by the Documentation, Information and
Technology Transfer Bureau after evaluation thereof on a case by case
basis.

- Non-conformance with any of the provision of Section 87

and 88, shall automatically render the technology transfer
agreement unenforceable, unless falling under the
Exceptional cases.

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Legal Implication on Failure to Comply with Section 87 and 88 grant licenses or to assign his right, title or interest or part
thereof
of the IP Code:
General Rule: the Technology Transfer Agreement shall be
rendered unenforceable
Except: TTA is registered with IPOPHL pursuant to the
provisions of Section 91 in exceptional or meritorious cases:
1. Highly technology content
2. Increase in foreign exchange earnings
3. Employment Generation
4. Regional Dispersal of Industries
5. Substitution with or use of local raw materials
6. Investment companies with pioneer status TTAs that
contain any of the prohibited clauses may be allowed and
registered where any of the exceptional or meritorious cases
are present.

Compulsory Licensing
- One of the mechanisms that address anti-competitive
behavior. Several types of compulsory licenses may be issued
under the IPC
1. Government – use and government contractor – use
compulsory license
2. 3rd party-use compulsory license
3. A special compulsory license
4. Compulsory licensing based on interdependence of
patents as determined by the Secretary of the Department of
Health.

SECTION 93. Grounds for Compulsory Licensing. - The Director General of

the Intellectual Property Office may grant a license to exploit a patented
invention, even without the agreement of the patent owner, in favor of any
person who has shown his capability to exploit the invention, under any of
the following circumstances:

93.1. National emergency or other circumstances of extreme urgency;

93.2. Where the public interest, in particular, national security, nutrition,

health or the development of other vital sectors of the national economy as
determined by the appropriate agency of the Government, so requires; or

93.3. Where a judicial or administrative body has determined that the

manner of exploitation by the owner of the patent or his licensee is anti-
competitive; or

93.4. In case of public non-commercial use of the patent by the patentee,

without satisfactory reason;

93.5. If the patented invention is not being worked in the Philippines on a

commercial scale, although capable of being worked, without satisfactory
reason: Provided, That the importation of the patented article shall
constitute working or using the patent. (Secs. 34, 34-A, 34-B, R.A. No.
165a) and

93.6. Where the demand for patented drugs and medicines is not being met
to an adequate extent and on reasonable terms, as determined by the
Secretary of the Department of Health.

Voluntary Licensing
- Sec. 85: encouragae the transfer and dissemination of
technology, prevent or control practices and conditions that
may in particular cases constitute an abuse of intellectual
property rights having an adverse effect on competition and
trade, all technology transfer arrangements shall comply with
the provisions of this Chapter.

“Technology transfer Agreement”

Assignment and Transmission of Rights

RIGHTS OF JOINT OWNERS
- Rules on co-ownership
- However, neither of the joint owners shall be entitled to
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without the consent of the other owner/s, or without

proportionally dividing the proceeds with such other owner/s.

Utility Model
- invention qualifies for registration as a utility model if its
new and industrial applicable
- In terms of elements, it does not have inventive step. Only
needs New and Practicable
- Protection is only for 7 years from date of filing

Industrial Designs
- excluded from registration:
A. Dictated essentially by technical or functional
considerations to obtain a technical result
B. Mere schemes of surface ornamentations existing
separately from the industrial product or handicraft; and
C. Contrary to public order, health, or morals.

CASE: E.I. Dupont vs IPO (possible bar Qs, including P&D)

- Dupont filed a Patent Applicant for medicine for
hypertension (Losartan). IPO responded on the inquiry that
the application was abandoned.
SC: A patent is granted to provide rights and protection to
the inventor after an invention is disclosed to the public. It
also seeks to restrain and prevent unauthorized persons
from unjustly profiting from a protected invention. However,
ideas not covered by a patent are free for the public to use
and exploit. Thus, there are procedural rules on the
application and grant of patents established to protect
against any infringement. To balance the public interest
involved, failure to comply with strict procedural rules will
result in the failure to obtain a patent. Dupont was
inexcusably negligent in the prosecution of its patent
application; there was a correlative duty on its part to be
diligent in keeping itself updated on the progress of its
Patent Application. Its failure to be informed of the
abandonment of its Patent Application was caused by its
own lack of prudence.
- A patent is a monopoly granted only for specific purposes
and objectives. Thus, its procedures must be complied with
to attain its social objective.

CASE: Phil PharmaWealth vs Pfizer

- Pfizer filed a complaint for patent infringement against
petitioner with IPO. Pfizer had patent rights over the
medicine (Sulbactam Ampicilin) which PharmaWealth
submitted bids for supply. An injunction was issued by the
IPO (for 6 months), an

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extension was denied. Pfizer filed another complaint with RTC

for patent infringement involving another patent but covering
the same medicine.

2 issues:
a. Can injunctive relief be issued based on an action of patent
infringement when the patent allegedly infringed has already
lapsed?
No. The exclusive right to monopolize the subject matter of
the patent exists only within the term of the patent. It is clear
from the above-quoted provision of law that the exclusive
right of a patentee to make, use and sell a patented product,
article or process exists only during the term of the patent.

b. Does the filing of a separate patent infringement actions

before the IPO and the RTC for different patents constitute
forum shopping?
Yes. It is clear that the ultimate objective which respondents
seek to achieve in their separate complaints is to ask for
damages for the alleged violation of their right to exclusively
sell the products and to permanently prevent or prohibit
petitioner from selling the products from other entity.

CASE: Roma Drug vs RTC

- Several imported medicines were seized, these were
manufactured by SmithKline but imported directly from
abroad, and not purchased through the local SmithKline
- This case naabutan ang RA No. 8203: Cheaper Medicines Act
- Counterfeit” – includes an “unregistered imported drug
product”
O "Unregistered imported drug product” shall refer to
unregistered imported drug product without a registered
counterpart brand in the Philippines. If the unregistered
imported drug product has a registered counterpart brand in
the Philippines, their product shall be considered counterfeit.
(IRR)

SC: SLCD's classification of "unregistered imported drugs" as

"counterfeit drugs” in conflict with Rep. Act No. 9502 which
grants private third persons the unqualified right to import or
otherwise use such drugs.

CASE: Impressions vs LexMark

- Because of the Return Program of Lexmark, in exchange for
the lawer price, customers must sign a contract agreeing to
use the cartridge only once and refrain from transferring the
cartridge to anyone but Lexmark.
- SC: Lexmark cannot raise patent right issues for it has
exhausted its patent rights in the US, as he decided to sell a
product exhaust all of its patent rights in that item regardless
of any contractual restrictions. Here in the PH, return program
is good. But no to the exhaustion issue. (wala ka ng habol sa
mga nag bebenta ng ink sa side streets).

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