COMMERCIAL LAW Law on Intellectual Property

2009 BAR OPERATIONS

Technology Transfer Arrangements
-contracts or agreements involving the transfer of
systematic knowledge for the manufacture of a
product, the application of a process, or rendering of
a service including management contracts; and the
transfer, assignment or licensing of all forms of
intellectual property rights, including licensing of
computer software except computer software
developed for mass market. (Sec. 4)

INTELLECTUAL PROPERY CODE

(R.A. No. 8293, effective January 1, 1998)
INTELLECTUAL PROPERY
-those property rights which results from
the physical manifestation of an original thought.
(Ballantines Law Dictionary)
COVERAGE
Intellectual property rights consists of:
a) Copyrights and related rights;
b) Trademarks and service marks;
c) Geographic indications;
d) Industrial designs;
e) Patents;
f) Layout-designs (Topographies) of Integrated
Circuits; and
g) Protection of Undisclosed Information. (Sec. 4)

PRESCRIPTIVE PERIOD OF ACTIONS FOR

DAMAGES UNDER THE IPC
No damages may be recovered after four (4) years
from the time the cause of action arose (Sec. 226)
JURISDICTION OVER DISPUTES UNDER IPC
A. Original Jurisdiction
1) Director General (IPO)
-has original jurisdiction to resolve disputes
relating to the terms of a license involving
the authors right to public performance or
other communication of his work.

STATE POLICY IN RESPECT OF INTELLECTUAL

PROPERTY RIGHTS (IPR)
There is a declaration of State Policy that, among
others, the State recognizes that an effective
intellectual and industrial property system is vital to
the development of domestic and creative activity,
facilitates transfer of technology, attracts foreign
investments and ensures market access for our
products, hence it shall protect and secure exclusive
rights of scientists, inventors, artists, and other gifted
citizens to their intellectual property and creations.
(Sec. 2)

2) Bureau of Legal Affairs

has jurisdiction over the ff:
i.
Opposition to applications for
registration of marks;
ii.
Cancellation of trademarks;
iii.
Cancellation of patents, utility
models and industrial designs;
iv.
Petition for compulsory licensing of
patents;
v.
Administrative
Complaints
for
violations of laws involving IPR
where the total damages claimed is
not less than P200,000.00

INTERNATIONAL
CONVENTION
AND
RECIPROTICY
Any person who is a national or who is domiciled or
has a real and effective industrial establishment in a
country which
1) is a party to any convention, treaty, or
agreement relating to intellectual property rights
or the repression of unfair competition to which
the Philippines is also a party, or
2) extends reciprocal rights to nationals of the
Philippines by law, shall be entitled to benefits to
the extent necessary to give effect to any
provision of such convention, treaty, or
reciprocal law, in addition to the rights to which
any owner of an intellectual property rights is
otherwise provided by law. (Sec. 3)

3) Documentation,
Information
and
Technology Transfer Bureau
has jurisdiction to settle disputes involving
technology transfer payments
B. Appellate Jurisdiction
1) Director General
-over all decisions rendered by the ff:
Director of Legal Affairs
Director of Patents
Director of Trademarks
Director of the Documentation,
Information
and
Technology
Transfer

REVERSE RECIPROCITY OF FOREIGN LAWS

Sec. 231 making enforceable on nationals of a
foreign state all conditions, restrictions, limitations,
diminutions, requirements or penalties that may be
imposed by such foreign state on a Filipino national
seeking intellectual property protection.

2) Court of Appeals
-over decisions of the Director General in
the exercise of his appellate jurisdiction over
the decisions of the:
Director of Legal Affairs
Director of Patents
Director of Trademarks

Reciprocal application is not automatic rather, the

Philippines. may apply to the foreign national those
restrictions that his country imposes on Filipino
applicants

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3) Secretary of Trade and Industry
over decisions of the Director General on
the exercise of his appellate jurisdiction of
the Director of Documentation, Information
and Technology Transfer; AND
over decisions of the Director General in the
exercise of his original jurisdiction relating to
the terms of license involving the authors
right.

requirements of patent application

rules.
iii.
the filing date of the prior art is
earlier
3) Inventiveness/Inventive Step
-an invention involves an inventive step if,
having regard to prior art, it is not obvious to a
person skilled in the art of the time of the filing date
or priority date of the application claiming the
invention. (Sec. 26)

ADMINISTRATIVE PENALTIES IMPOSED FOR

VIOLATIONS OF LAWS INVOLVING IPR

4) Industrial Applicability
-an invention that can be produced and used
in any industry. (Sec. 27)

The Director for Legal Affairs may impose the ff:

a) Issuance of a cease and desist order (CDO);
b) Acceptance of voluntary assurance compliance
(VAC) or voluntary assurance of discontinuance
(VAD);
c) Condemnation or seizure of products subject of
the offense;
d) Forfeiture of properties used in the commission
of the offense;
e) Imposition of administrative fines;
f) Cancellation of permit, license, authority or
registration;
g) Withholding of permit, license, authority or
registration;
h) Assessment of damages;
i) Censure;
j) Analogous penalties or sanctions (Sec. 10.2 [b])

NON-PATENTABLE INVENTIONS
The following shall be excluded from patent
protection:
a)
Discoveries,
Scientific
Theories
and
Mathematical Methods;
b)
Schemes, rules and methods of performing
mental acts, playing games or doing business,
and programs for computer;
c)
Methods for treatment of the human or animal
body by surgery or therapy and diagnostic
methods practiced on the human or animal
body;
d)
Plant varieties or animal breeds of essentially
biological process for the production of plants
or animals;
e)
Aesthetic creations;
f)
Anything which is contrary to public order or
morality (Sec. 22)

LAW ON PATENTS
PATENT an exclusive right acquired over an
invention, to sell, use, and make the same whether
for commerce or industry.

RIGHT TO A PATENT
The right to a patent belongs:
a) to the inventor, his heirs, or assigns
b) when 2 or more persons have made the
invention separately and independently to
them jointly
c) if two (2) or more persons have made the
invention separately and independently of each
other to the person who filed an application for
such invention (FIRST TO FILE RULE)
d) where 2 or more applications are filed for the
same invention to the applicant who has the
earliest filing date or the earliest priority date
(FIRST TO FILE RULE) (Sec. 29)
e) in case of inventions created pursuant to a
commission to the person who commissions
the work UNLESS agreed otherwise.
f) in case an employee made the invention in the
course of his employment, the patent shall
belong to:
the employee if invention not part of his
regular duties even if he uses the time,
facilities and materials of the employer; OR
the employer if the invention is the result
of the performance of his regularly assigned
duties unless agreed otherwise.

PATENTABLE INVENTIONS
-any technical solution of a problem in any
field of human activity which is NEW, involves an
INVENTIVE
STEP and
is
INDUSTRIALLY
APPLICABLE shall be patentable. The patentable
invention may be, or may relate to, a product, or
process, or an improvement of any of the foregoing.
(Sec. 21)
Requirements:
1) Technical solution of a problem in any field
of human activity
2) Novelty that which does not form part of a
prior art consists of:
a) that which has been made available to the
public anywhere in the world before the filing
date or the priority date of the application
b) that which forms part of an application
whether for patent, utility or industrial
design, effective in the Philippines, provided
that:
i.
the inventors or applicants are not
the same
ii.
the contents of the application are
published in accordance with the
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g) Grant of the patent (Sec. 50), or refusal of the
examiner to grant the patent (Sec. 51); in the
latter case, the refusal may be appealed to the
Director of the Bureau of Patents;
h) Publication of the grant of patent in the IPO
Gazette (Sec. 52)

RIGHTS ACQUIRED BY THE PATENTEE

The patentee acquires the following rights
under his patent
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 for sale, selling or importing that
product;
b) Where the subject matter of a patent is a
process, to restrain, prevent or prohibit any
unauthorized person or entity from using the
process, and from manufacturing, dealing in,
using or offering for sale, or importing any
product obtained directly or indirectly from such
process;
c) to assign, or transfer by succession the patent,
and to conclude licensing contracts for the same
(Sec. 71)

TERM OF A PATENT, UTILITY MODEL,

INDUSTRIAL DESIGN
a) Patent 20 yrs from the filing date of
application, without renewal
b) Utility model 7 yrs, w/out renewal
c) Industrial design 5 yrs, renewable twice
UTILITY MODELS
-models of implement or tools of any
industrial product even if not possessed of the
quality of invention but which is of practical utility
INDUSTRIAL DESIGN
-any composition of lines or colors or any
three-dimensional form, whether or not associated
with lines or colors provided that such composition
or form gives a special appearance to and can serve
as pattern for an industrial product or handicraft.

CONTENTS OF PATENT APPLICATION

A patent application shall contain:
1) a request for the grant of patent;
2) a description of the invention;
-the disclosure of the invention must be in a
manner sufficiently clear and complete for it to
be carried out by a skilled in the art.
3) Drawings necessary for the understanding of the
invention;
4) One or more claims
5) An abstract (Sec. 32)

CANCELLATION OF PATENTS
Who may file?
any person
IPO motu proprio

Application must contain relevant information as to

the identity of the person (no anonymous person)

Grounds:
a) That the patent is invalid (Sec. 81);
b) That what is claimed as the invention is not new
or patentable;
c) That the patent does not disclose the invention
in a manner sufficiently clear and complete for it
to be carried out by any person skilled in the art;
or
d) That the patent is contrary to public order or
morality. (Sec. 61)
e) failure to make payments of annual fees or dues

If the applicant is not the inventor; he must show

proof of authority to seek application for registration
UNITY OF INVENTION
-every application for patent registration
must contain an application over a simple invention
or several inventions but must form part of a single
general inventive concept
PROCEDURE FOR THE GRANT OF PARENT
a) According a filing date to the application (Sec.
41);
b) Examination of compliance by applicant with the
formal requirements specified in Sec. 32, i.e.,
contents of application (Sec. 42);
c) Classification of application and search for prior
art (Sec. 43)
d) Publication of patent application in the IPO
Gazette (Sec. 44);
e) Inspection of the application documents by any
interested party and written observations by any
third party concerning the patentability of the
invention (Secs. 44.2 and 47);
f) Written request by the applicant, within 6 months
from the date of publication of his patent
application, for the substantive examination by
the IPO of his application. (Sec 48);

Where to file?
BLA if in violation of IPC (administrative)
RTC otherwise
INFRINGEMENT
-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. (Sec. 76)
TEST OF PATENT INFRINGEMENT
1) Literal Infringement resort is had to the
words of the claim.
2) Doctrine of Equivalents if two devices do the
same work in substantially the same way, the
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same result, and produce substantially the same
result, they are the same even though they differ
in name, form, or shape.

-Under RA 8293, the rights in a mark shall

be acquired through registration made validly in
accordance with its provisions. (Sec. 122)
-This proposition of law, however, may not
be converted for it is not true that where there is no
registration, there is no protection.
Acquisition through use
-Whether or not a registered trademark is
employed, when a person has identified in
the mind of the public the goods he
manufactures or deals in his business or
services from those of others, such a person
has a property right in the goodwill of said
goods or services which will be protected in
the same manner as other property rights
(Sec. 168.1)

REMEDIES IN CASE OF INFRINGEMENT

A) File civil case for the following purposes:
1) To recover from the infringer such damages
as the court may award considering the
circumstances of the case provided it shall
not exceed 3 times the amount of the actual
damages sustained plus attorneys fees and
other expenses of litigation;
2) To secure an injunction for the protection of
his rights;
3) To receive a reasonable royalty, if the
damages are inadequate or cannot be
readily
ascertained
with
reasonable
certainty;
4) To have the infringing goods, materials and
implements predominantly used in the
infringement disposed of outside the
channels of commerce, or destroyed without
compensation;
5) To hold the contributory infringer jointly and
severally liable with the infringer.

RIGHTS CONFERRED
-the owner of a registered mark shall have
the exclusive right to prevent all third parties not
having the owners consent from using in the course
of trade identical or similar signs or containers for
goods or services which are identical or similar to
those in respect of which the trademark is registered
where such use would result in a likelihood of
confusion. (Sec. 147)

B) File criminal case within 3 years from date of

commission of the crime for repetition of
infringement (Sec. 84)

DURATION
-the certificate of registration of a trademark
shall be ten (10) years from the filing date of
application provided the registrant shall file a
declaration of actual use within a year from the 5 th
anniversary of registration date (Sec. 145)
-renewable for another 10 yrs. (Sec. 146)

LAW ON TRADEMARKS
TRADEMARK anything which is adopted and
used to identify the source of origin of goods, and
which is capable of distinguishing them from goods
emanating from a competitor

NON-REGISTRABLE TRADEMARKS, TRADE

NAMES AND SERVICE MARK
A mark cannot be registered if it:
a) Consists of immoral, deceptive or
scandalous matter, or matter which may disparage
or falsely suggest a connection with persons, living
or dead, institutions, beliefs, or national symbols, or
bring them into contempt or disrepute;
b) Consists of the flag or coat of arms or
other insignia of the Philippines or any of its political
subdivisions, or of any foreign nation, or any
simulation thereof;
c) Consists of a name, portrait or
signature identifying a particular living individual
except by his written consent, or the name,
signature, or portrait of a deceased President of the
Philippines, during the life of his widow, if any,
except by written consent of the window;
d) Is identical with a registered mark
belonging to a different proprietor or a mark with an
earlier filing or priority date, in respect of:
(i)
The same gods or services, or
(ii)
Closely related goods or services, or
(iii)
If it nearly resembles such a mark
as to be likely to deceive or cause confusion;
e) Is identical with, or confusingly similar
to, or constitutes a translation of a mark which is

SERVICE MARK distinguishes the services of an

enterprise from the service of other enterprises. It
performs for services what a trademark does for
goods.
COLLECTIVE MARK - any visible sign designated
as such in the application for registration and
capable of distinguishing the origin or any other
common characteristic, including the quality of
goods and services of different enterprises which
use the sign under the control of the registered
owner of the collective mark (Sec. 121.2)
TRADE NAMES the person (whether natural or
juridical) who does business and produces the
goods or the services is designated by a trade
name.
-Under the law, there is no need to register
trade names in order to secure protection for them.
TRADE DRESS involves the total image of a
product, including such features as size, shape,
color or color combinations, texture, and/or graphics.
HOW MARKS ARE ACQUIRED
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considered by the competent authority of the
Philippines to be well-known internationally and in
the Philippines, whether or not it is registered here,
as being already the mark of a person other than the
applicant for registration, and used for identical or
similar goods or services: provided, that in
determining whether a mark is well-known, account
shall be taken of the knowledge of the relevant
sector of the public, rather than of the public at large,
including knowledge in the Philippines which has
been obtained as a result of the promotion of the
mark;
f) Is identical with, or confusingly similar
to, or constitutes a translation of a mark considered
well-known in accordance with the preceding
paragraph, which is registered in the Philippines with
respect to goods or services which are not similar to
those with respect to which registration is applied
for: provided, that use of the mark in relation to those
goods or services would indicate a connection
between those goods or services, and the owner of
the registered trademark: Provided further that the
interests of the owner of the registered mark are
likely to be damaged by such use;
g) Is likely to mislead the public,
particularly as to the nature, quality, characteristics
or geographical origin of the goods or services;
h) Consists exclusively of signs that are
generic for the goods or services that they seek to
identify;
i)
Consists exclusively of signs or of
indications that have become customary or usual to
designate the goods or services in everyday
language or in a bonafide and established trade
practice;
j)
Consists exclusively of signs or
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
(Sec. 123)

e) The list of the goods or services for which the

registration is sought. (Sec. 127.1)
No filing date shall be accorded until the required fee
is paid (Sec. 127.2)
PROCEDURE FOR REGISTRATION
a) Examination to determine whether the
application satisfies the requirements for the
grant of a filing date.
b) Examination to determine whether the
application meets the requirements of Sec. 124
and the mark is registrable under Sec. 123.
c) Denial of the application or amendment thereof
or publication of the application;
d) Opposition to the application; notice; hearing;
decision by examiner; appeal to the Director of
Bureau of Trademarks; appeal to the IPO
Director General; appeal to the CA;
e) Issuance of Certificate of registration
f)
Publication in the IPO Gazette of the fact of
registration
CANCELLATION OF TRADEMARK OR
TRADENAME
Who may file?
any person who believes that he is and
will be damaged by the registration of a
mark
Where to file?
BLA
Grounds:
a) Mark becomes generic for goods for which it is
registered;
b) Abandonment of the mark;
c) Registration obtained fraudulently or contrary to
provisions of RA 8293;
d) Mark used by, or with permission, or, registrant;
e) Failure to use the mark within the Philippines for
3 uninterrupted years or longer.
EFFECTS OF NON-USE
may be excused if caused by circumstances arising
independently of the will of the trademark owner,
such as military coup, or political changes that
impede commerce
Registration is an administrative act declaratory
of a pre-existing right that does not, of itself,
perfect a trademark, for what does is actual use
Non-use is a ground for removing a mark from
the register

FILING DATE OF AN APPLICATION

-The filing date of an application shall be the
date on which the office received the following
indications and elements in English or Filipino:
a) An express or implicit indication that the
registration of a mark is sought;
b) Indications sufficient to contact the applicant or
his representative, if any;
c) Indications sufficient to contact the applicant or
his representative, if any;
d) A reproduction of the mark where registration is
sought; and

DOCTRINE OF SECONDARY MEANING

-While a generic, indicative or descriptive
mark will, as a general rule, be denied registration,
there is a circumstance that will allow it to be
registered. Under the doctrine of secondary
meaning, when a mark has become distinctive of the
applicants gods in commerce and, in the mind of the

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public, indicates a single source of consumers, it
may be registered.

d) Ask for injunction (156.4)

e) Have the infringing goods disposed of outside
the channels of commerce (Sec. 157.1)
f) Have the infringing goods destroyed (Sec.
157.1)
g) File criminal action (Sec. 170);
h) Administrative Sanctions

WHAT CONSTITUTES AN INFRINGEMENT

-Under RA 8293, any person shall, without
the consent of the owner of the registered mark:
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 any goods
or services including other preparatory
steps necessary to carry out the sale of
any goods or services on or in
connection with which such use is likely
to cause confusion, or to cause mistake,
or to deceive; or
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, receptacles,
or advertisements intended to be used
in commerce upon or in 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, shall be liable for
infringement. (Sec. 155)

UNFAIR COMPETITION
-any person who shall employ deception or
any other means contrary to good faith by which he
shall pass off the goods manufactured by him or in
which he deals, or his business, or services for those
of the one having established such goodwill, or who
shall commit any acts calculated to produce said
result, shall be guilty of unfair competition.
How Committed
a) Making ones goods appear as the goods of
another;
b) Use of artifice or device to induce the false belief
that ones goods are those of another;
c) False statements in the course of trade; or
d) Any act contrary to good faith calculated to
discredit anothers goods
TEST OF UNFAIR COMPETITION
-The test is whether certain goods have
been clothed with an appearance likely to deceive
the ordinary purchaser exercising ordinary care.
REMEDIES AGAINST UNFAIR COMPETITION
a) Damages which may either be:
reasonable profit which would have realized,
or
actual profits collected by the defendant, or
a certain percentage over the gross sales of
defendant in case of the measure of
damages cannot be readily ascertained;
b) Damages may be doubled in cases where actual
intent to mislead the public or to defraud the
complaint is shown;
c) Impounding of sales invoices and other
documents evidencing sales;
d) Injunction
e) Destruction of goods found to be infringing, and
all paraphernalia.

TEST OF TRADEMARK INFRINGEMENT

1) Dominancy Test consists in seeking out the
main, essential or dominant features of a mark.
2) Holistic Test takes stock of the other features
of a mark, taking into consideration the entirety
of the marks.
DIFFERENTIATED FROM UNFAIR COMPETITION
1) Cause of action: in infringement, the cause of
action is the unauthorized use of a registered
trademark; in unfair competition, it is the passing
off of ones goods as those of another merchant.
2) Fraudulent intent is not necessary in
infringement, but necessary in UC.
3) Registration of trademarks: in infringement, it is
a pre-requisite; in UC, it is not required.
4) Class of goods involved: in infringement, the
goods must be of similar class; in UC, the goods
need not be of the same class.

LAW ON COPYRIGHT
COPYRIGHT system of legal protection an author
enjoys in the form of expression of ideas

Infringement is a form of unfair competition

BASIC PRINCIPLES
Works are protected by the sole fact of their
creation, irrespective of their mode or form of
expression, as well as their content, quality or
purpose (Sec. 172.2)

REMEDIES
AVAILABLE
IN
CASE
OF
INFRINGEMENT OF A REGISTERED MARK
a) Sue for damages (Sec. 156.1);
b) Have the infringing goods impounded (Sec.
156.2);
c) Ask for double damages (Sec. 156.3)
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Protection extends only to the expression of the
idea, not to the idea itself or to any procedure,
system, method or operation, concept or principle,
discovery or mere data.

k) Photographic
works
including
works
produced by a process analogous to
photography; lantern slides
l) Audiovisual works and cinematographic or
any process for making audio-visual
recordings
m) Pictorial illustrations and advertisements
n) Computer programs
o) Other literary, scholarly, scientific and artistic
works (Sec. 172)

CREATION OF A WORK
A copyright work is created when the two (2)
requirements are met:
1) Originality does not mean novelty or
ingenuity, neither uniqueness nor creativity. It
simply means that the work owes its origin to
the author
2) Expression there must be fixation To be
fixed, a work must be embodied in a medium
sufficiently:
permanent; or
stable
to permit it to be perceived, reproduced, or otherwise
communicated for a period of more than transitory
duration.
-if it is not required that the medium be
visible as long as there is a possibility of retrieval,
then there is fixation
-it is fixation that defines the time from when
copyright subsists. Before fixation, there can be no
infringement.

B. Derivative Works the following derivative

works shall also be protected:
a)
Dramatizations,
translations,
adaptations,
abridgments,
arrangements,
and
other
alterations of literary works
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. 173)
WORKS NOT PROTECTED
-The following works are not protected:
1) Any idea, procedure, system, method or
operation, concept, principle, discovery or mere
data as such, even if expressed, explained,
illustrated, or embodied in a work;
2) News of the day and other facts having the
character of mere items of press information;
3) Any official text of a legislative, administrative or
legal nature, as well as any official translation
thereof. (Sec. 175)
4) Any work of the Government of the Philippines.
(Sec. 176)
-however, prior approval of the government
agency or office wherein the work is created shall be
necessary for exploitation of such work for profit.
Such agency or office, may, among other things,
impose as a condition the payment of royalties
5) Pleadings;
6) Decisions of courts and tribunals.
-This pertains to the original decisions not to
the SCRA published in volumes since these are
protected under derivative works.

WORKS PROTECTED BY COPYRIGHT

A. Original Work - Literary and artistic works are
original intellectual creations in the literary and
artistic domain protected from the moment of
their creation, irrespective of their mode or form
of expression, as well as of their content, quality
and purpose, and shall include in particular:
a) Books, pamphlets, articles and other
writings
b) Periodicals and newspapers
c) Lectures, sermons, addresses, dissertations
prepared for oral delivery, whether or not
reduced in writing or other material form
d) Letters
e) Dramatic
or
dramatico-musical
compositions; choreographic works or
entertainment in dumb shows
f) Musical compositions, with or without words
g) Works of drawing, painting, architecture,
sculpture, engraving, lithography or other
works of art; models or designs for works of
art
h) Original ornamental designs or models for
articles of manufacture, whether or not
registrable as an industrial design, and other
works of applied art.
i) Illustrations, maps, plans, sketches, charts
and three-dimensional works relative to
geography, topography, architecture or
science
j) Drawings or plastic works of a scientific or
technical character

RIGHTS OF AN AUTHOR
Author a natural person who has created the
work.
A. Economic Rights (Sec. 177)
1) Right to reproduce;
2) Right to create derivative works;
3) Right to first public distribution or first sale;
4) Right to rent out the original or a cop of an
audiovisual or cinematographic work;
5) Right to public performance;
6) Right to other communication of the work to
the public.
B. Moral Rights (Sec. 193)
1) Right of attribution or paternity right;
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2) Right of alteration or non-publication;
3) Right to preservation of integrity
4) Right not to be identified with work of others
or with distorted work.
Term of moral right
-lifetime of the author and 50 years after his
death
Waiver of moral right
1) by a written instrument (Sec. 195)
2) by contribution to a collective work
unless expressly reserved (Sec. 196)

b. the assignment be filed with the National

Library upon payment of the prescribed fee.
(Sec. 182)
DURATION OF COPYRIGHT
Literary artistic works and derivative works
of a SINGLE CREATOR - lifetime of the creator
and for 50 years after his death
Joint creation lifetime of last surviving cocreator and for 50 years after his death.
Anonymous or a work under a pseudonym
not identifiable with the true name of the
creator 50 years after the date of their first
publication.

PRINCIPLE OF AUTOMATIC PROTECTION

Under the Berne Convention, the enjoyment
and exercise of copyright, including moral rights,
shall not be the subject of any formality.

Except where, before the expiration of said

period, the author's identity is revealed or is no
longer in doubt, the rule for single and joint
creation shall apply

OWNERSHIP OF COPYRIGHT
1. Single creator copyright belongs to the author
of the work, his heirs or assigns.
2. Joint creation copyright belongs to the coauthors jointly as co-owners. But if the work
consists of identifiable parts, the author of each
part owns the part that he has created.
3. Employees creation copyright belongs to the
employee if the creation is not part of his regular
duties even if he uses the time, facilities and
materials of the employer; otherwise it belongs
to the employer
4. Commissioned work the work belongs to the
person commissioning but the copyright remains
with the creator unless there is a written
stipulation to the contrary.
5. Cinematographic works the producer has
copyright for purposes of exhibition; for all other
purposes, the producer, the author of the
scenario, the composer, the film director, the
author of the work are the creators.
6. Anonymous and pseudonymous works the
publishers shall be deemed the representative of
the author unless:
a. the contrary appears
b. the pseudonyms or adopted name leaves no
doubt as to the authors identity or
c. if the author discloses his identity (Sec.
179).
7. Collective works the contributor is deemed to
have waived his right unless he expressly
reserves it. (Sec. 196)
Collective work a work created by two or
more persons at the initiative and under the
direction of another with the understanding that
it will be disclosed by the latter under his own
name and that the contributions of natural
persons will not be identified. (Sec. 171.2)
8. In case of transfers, the transferee shall own
one or more or all the economic rights
transferred provided:
a. the assignment, if inter vivos, be in writing
(Sec. 180.2)

Photographic works 50 years from the

publication of the work, or from making the same
term is given to audiovisual works produced by
photography or analogous processes.
Work of Applied Art 25 years from the date of
making
Newspaper Article lifetime of the author and
50 years after his death
A pure news report will no longer find protection
under he new law, BUT a column or published
comment will

The work of performers not incorporated in

RECORDING, PRODUCTS OF SOUND IMAGE
RECORDINGS, and BROADCASTS, are
protected for periods of 50 years, 50 years, and
20 years, respectively, counted from the end of
the year of performance, recording, or
broadcasts, respectively.

The term of protection shall be counted from

the first day of January of the year following the
death or of last publication (Sec. 214)
LIMITATIONS TO THE RIGHTS ON COPYRIGHT
1) Private performance, private and personal
use applicable only when a work has been
lawfully made accessible to the public.
Personal Use
-making a single reproduction, adaptation,
arrangement or other transformation of anothers
work exclusively for ones own individual use in
such cases as personal research, learning or
amusement
Private Use
-making a reproduction, adaptation or other
transformation of it, in a single person as in the
case of personal use but also for a common
purpose by a specific circle of persons only.
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2) Fair Use of a Copyrighted Work
Fair Use - A privilege in persons other than
the owner of the copyright to use the
copyrighted material in a reasonable manner
without its consent, notwithstanding the
monopoly granted to the owner by the copyright.
-the doctrine of fair use is meant to balance
the monopolies enjoyed by the copyright owner
with interests of the public and of society.

7) IMPORTATION FOR PERSONAL PURPOSES

-The importation of a copy of a work by an
individual for his personal purposes shall be
permitted without the authorization of the author
of, or other owner of copyright in, the work under
the following circumstances:
a) Copies of the work are not available in the
Philippines and:
i.
not more than one copy at one time
is imported for strict individual use;
ii.
importation is by authority and for
the use of Philippine Government;
or
iii.
Religious, charitable, or educational
society imported not more than 3
copies per title provided they are not
for sale.
b) Copies form part of libraries and personal
baggage belonging to persons or families
arriving from foreign countries and are not
intended for sale: Provided, that such copies
do not exceed three (3). (Sec. 190)

CRITERIA TO DETERMINE WHETHER USE IS

FAIR OR NOT:
a) Purpose and the character of the use
b) Nature of the copyrighted work
c) Amount and substantially of the portions used
d) Effect of the use upon the potential market of the
copyrighted work (Sec. 185)
THE FAIR-USES OF PROTECTED MATERIAL
ARE:
a) Criticizing, commenting, and news reporting;
b) Using for instructional purposes including
producing multiple copies of classroom use, for
scholarship, research and similar purposes
(Sec. 185)

REMEDIES IN CASE OF INFRINGEMENT:

1) Injunction to prevent infringement
2) Damages assessed on the basis of the proof
alleged by the plaintiff of sales made by the
defendant of the infringing work minus whatever
costs the defendant may be able to prove and
appreciated by the court.
3) Delivery under oath of all implements employed
in the production of the infringing products
themselves and the infringing items, for
impounding or destruction as the court may
order.
4) Payment of moral and exemplary damages in
the discretion of court.
5) Criminal Action

3) WORKING OF ARCHITECTURE (Sec. 186)

-include the right to control the erection of
any building which reproduces the whole or a
substantial part of the work either in its original or in
any form recognizably derived from the original;
Provided, that the copyright in any such work shall
not include the right to control the reconstruction, or
rehabilitation in the same style as the original of a
building to which that copyright relates
4) REPRODUCTION OF PUBLISHED WORK
-exclusively for research and private study
5) REPROGRAPHIC
REPRODUCTION
BY
LIBRARIES
-any library or archive whose activities are not
for profit may, without the authorization of the
author of copyright owner, make a single copy of
the work by reprographic reproduction.

DIFFERENCE BETWEEN COPYRIGHT, PATENT

AND TRADEMARK
1) Subject Matter of the Right:
Copyright literary, scientific or artistic work;
Patent new, useful, and industrially applicable
inventions;
Trademark goods manufactured or produced

6) REPRODUCTION
OF
COMPUTER
PROGRAMS
-allowed on the ff. conditions:
a) only one copy is made;
b) lawful owner made the copy;
c) purpose of which the reproduction is made
is legal like:
use to which the program is made and
for which it was purchased demand the
reproduction of a copy; or
the reproduction of a copy is necessary
to guarantee against loss or destruction
(Sec. 189.1)

2) Where Right Registered:

Copyright National Library
Patent and Trademark IPO
3) Duration of Right:
Patent 20 years from filing or priority date
Trademark 10 years
Copyright Generally up to 50 years after the
death of the author.
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