Intellectual Property Law (R.A. No. 8293 a.k.a.
date or priority date of the application claiming
Intellectual Property Code of the Philippines)
A. The Law on Patents
i. Definition of Patent – It is a grant issued by the
government through the Intellectual Property Office
of the Philippines (IP Philippines). It is an exclusive
right granted for a product, process or an
improvement of a product or process which is new,
inventive and useful. This exclusive right gives the
inventor the right to exclude others from making,
using, or selling the product of his invention during
the life of the patent.
ii. Mode of Creation of right – It must be registered
with IPO to be protected by law (Created by
Registration with IPO).
iii. Terms of Patent – A patent has a term of protection
of twenty (20) years providing an inventor significant
commercial gain. In return, the patent owner must
share the full description of the invention. This
information is made available to the public in the
form of the Intellectual Property Official Gazette and
can be utilized as basis for future research and will in
turn promote innovation and development.
iv. Requisites of Patentable Inventions
1. It must be a technical solution to a problem in
any field of human activity. It may be, or may
relate to, a product, or process, or an
improvement of any of the foregoing.
2. (Novelty) It must be new. An invention shall not
be considered new if it forms part of a prior art.
Prior art shall consist of:
a. Everything which has been made available to
the public anywhere in the world, before the
filing date or the priority date of the
application claiming the invention; and
b. The whole contents of an application for a
patent, utility model, or industrial design
registration, published in accordance with
this Act, filed or effective in the Philippines,
with a filing or priority date that is earlier
than the filing or priority date of the
application: Provided, That the application
which has validly claimed the filing date of
an earlier application under Section 31 of
this Act, shall be prior art with effect as of
the filing date of such earlier application:
Provided further, That the applicant or the
inventor identified in both applications are
not one and the same. (Sec. 9, R.A. No. 165a)
3. (Inventive Step) It must involve an 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 at the time of the filling
the invention.
4. (Industrial Applicability) It must be industrially
applicable. An invention that can be produced
and used in any industry shall be industrially
applicable.
v. Non-Patentable Inventions.
1. Discoveries, scientific theories and mathematical
methods;
2. Schemes, rules and methods of performing
mental acts, playing games or doing business,
and programs for computers;
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;
4. Plant varieties or animal breeds or essentially
biological process for the production of plants or
animals. This provision shall not apply to micro-
organisms and non-biological and microbiological
processes. 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
5. Aesthetic creations; and
6. Anything which is contrary to public order or
morality.
vi. First to File Rule - If two (2) or more persons have
made the invention separately and independently of
each other, the right to the patent shall belong to the
person who filed an application for such invention, or
where two or more applications are filed for the
same invention, to the applicant who has the earliest
filing date or, the earliest priority date.
vii. Right of Priority - An application for patent filed by
any person who has previously applied for the same
invention in another country which by treaty,
convention, or law affords similar privileges to
Filipino citizens, shall be considered as filed as of the
date of filing the foreign application: Provided, That:
(a) the local application expressly claims priority; (b)
it is filed within twelve (12) months from the date
the earliest foreign application was filed; and (c) a
certified copy of the foreign application together
with an English translation is filed within six (6)
months from the date of filing in the Philippines.
viii. Right to a Patent - The right to a patent belongs to
the inventor, his heirs, or assigns. When two (2) or
more persons have jointly made an invention, the
right to a patent shall belong to them jointly.
ix. Inventions Created Pursuant to a Commission - The
person who commissions the work shall own the
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 patent, unless otherwise provided in the contract. In
case the employee made the invention in the course
of his employment contract, the patent shall belong
to:
1. 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.
2. The employer, if the invention is the result of the
performance of his regularly-assigned duties,
unless there is an agreement, express or implied,
to the contrary.
x. Tests of Patent Infringement
1. Literal Infringement – In using literal infringement
as a test, resort must be had, in the first instance,
to the words of the claim. If accused matter
clearly falls within the claim, infringement is made
out and that is the end of it. To determine
whether the particular item falls within the literal
meaning of the patent claims, the court must
juxtapose the claims of the patent and the
accused product within the overall context of the
claims and specifications, to determine whether
there is exact identity of all material elements.
2. Doctrine of equivalent infringement – It provides
that infringement also takes place when a device
appropriates a prior invention by incorporating its
innovative concept an, although with some
modification and change, performs substantially
the same function in substantially the same way
to achieve substantially the same result. It
requires satisfaction of the function-means-and-
result test.
B. The Law on Trademarks, Services Marks and Trade
Names
i. Definition of Terms
1. “Trademark” – It means any visible sign capable
of distinguishing the goods of an enterprise and
shall include a stamped or marked container of
goods
2. “Service mark” – It means any visible sign
capable of distinguishing goods of an enterprise
and shall include a stamped or marked container
of services
3. “Collective mark” – means 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.
4. “Trade name” means the name or designation
identifying or distinguishing an enterprise.
ii. Mode of Creation of right – Trademark, service mark
and collective mark must be registered with IPO to
be protected by law while trade name need not be
registered to be protected. (Created by Registration)
iii. Non-registrable marks – a mark cannot be registered
if it:
1. 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;
2. 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;
3. Consists of a name, portrait or signature
identifying a particular living individual
except by his written consent, or the name,
signature, or portrait of a deceased President
of the Philippines, during the life of his
widow, if any, except by written consent of
the widow;
4. Is identical with a registered mark belonging
to a different proprietor or a mark with an
earlier filing or priority date, in respect of: (i)
The same goods or services, or (ii) Closely
related goods or services, or (iii) If it nearly
resembles such a mark as to be likely to
deceive or cause confusion;
5. 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;
6. 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
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 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;
7. Is likely to mislead the public, particularly as
to the nature, quality, characteristics or
geographical origin of the goods or services;
8. Consists exclusively of signs that are generic
for the goods or services that they seek to
identify;
9. 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;
10. 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;
11. 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;
12. Consists of color alone, unless defined by a
given form; or Is contrary to public order or
morality.
iv. Term of Trademark and Service Mark – it has a term
of 10 years but subject to unlimited times of
renewal. Therefore, it has indefinite life.
v. Tests of Trademark Infringement
1. Dominancy test – if focuses on the similarity of
the main, prevalent or essential features of the
competing trademarks that might cause
confusion. Infringement takes place when the
competing trademark contains the essential
features of another. Imitation or an effort to
imitate is unnecessary. The question is whether
the use of the marks is likely to cause confusion
or deceive purchasers.
2. Holistic test – It considers the entirety of the
marks, including labels and packaging, in
determining confusing similarity. The focus is not
only on the predominant words but also on the
other features appearing on the labels.
vi. Difference between Trademark Infringement and
Unfair Competition
1. Trademark Infringement means any person who
shall use, without the consent of the registrant,
any reproduction, counterfeit, copy or colorable
imitation of any registered mark or trade-name
in connection with the sale, offering for sale, or
advertising of any goods, business or services
on or in connection with which such use is likely
to cause confusion or mistake or to deceive
purchasers or others as to the source or origin
of such goods or services, or identity of such
business; or reproduce, counterfeit, copy or
colorably imitate any such mark or trade-name
and apply such reproduction, counterfeit, copy,
or colorable imitation to labels, signs, prints,
packages, wrappers, receptacles or
advertisements intended to be used upon or in
connection with such goods, business or
services, shall be liable to a civil action by the
registrant for any or all of the remedies herein
provided. (1) the validity of plaintiff’s mark; (2)
the plaintiff’s ownership of the mark; and (3)
the use of the mark or its colorable imitation by
the alleged infringer results in likelihood of
confusion.
2. Unfair competition has been defined as the
passing off (or palming off) or attempting to
pass off upon the public of the goods or
business of one person as the goods or business
of another with the ends and probable effect of
deceiving the public. The essential elements of
unfair competition are (1) confusing similarity in
the general appearance of the goods; and (2)
intent to deceive the public and defraud a
competitor. Jurisprudence also formulated the
following true test of unfair competition:
whether the acts of the defendant have the
intent of deceiving or are calculated to deceive
the ordinary buyer making his purchases under
the ordinary conditions of the particular trader
to which the controversy relates. One of the
essential requisites in an action to restrain
unfair competition is proof of fraud; the intent
to deceive, actual or probable must be shown
before the right to recover can exist.
3. Note: there can be trademark infringement
without unfair competition such as when the
infringer discloses on the labels containing the
mark that he manufactures the goods, thus
preventing the public from being deceived that
the goods originate from the trademark owner.
In this case, no issue of confusion arises
because the same manufactured products are
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 sold; only the ownership of the trademarks is at
issue.
C. The Law on Copyright vi.
i. Definition of Copyright – It is the legal protection
extended to the owner of the rights in an original
work.
ii. Definition of “Original Work” – It refers to every
production in the literary, scientific and artistic
domain. Among the literary and artistic works
enumerated in the IP Code includes books and other
writings, musical works, films, paintings and other
works, and computer programs.
iii. Mode of creation of right - Works are protected by
the sole fact of their creation, irrespective of their
mode or form of expression, as well as of their
content, quality and purpose. Thus, it does not
matter if, in the eyes of some critics, a certain
work has little artistic value. So long as it has been
independently created and has a minimum of
creativity, the same enjoys copyright protection.
(From the moment of Creation without a need for
registration)
vii.
iv. Term of copyright – In general, the term of
protection of copyright for original and derivative
works is the life of the author plus fifty (50) years
after his death. The Code specifies the terms of
protection for the different types of works. In
calculating the terms of protection, the term of
protection subsequent to the death of the author
shall run from the date of his death or if publication,
but such terms shall always be deemed to begin on
the first day of January of the year following the
event which gave rise to them (i.e. death,
publication, making).
v. Two rights under Copyright
1. Economic rights which enable the creator to
obtain remuneration from the exploitation of his
viii.
works by third parties.
a. Reproduction
b. Transformation
c. First public distribution
d. Rental
e. Public display
f. Public performance
g. Other communication to the public of the
work
2. Moral rights which make it possible for the
creator to undertake measures to maintain and
protect the personal connection between himself
and the work.
a. Right of attribution
b. Right of alteration
c. Right of integrity (to object to any prejudicial
distortion)
d. Right to restrain use of his name
Ownership of copyright
1. Generally, the natural person who created the
literary and artistic work owns the copyright to
the same.
2. For work created during or in the course of
employment (works for hire):
a. Employee – if the work is not part of his
regular duties, even if he used the time
facilities, and materials of the employer;
b. Employer – if the work is the result of the
performance of his regularly assigned duties,
unless there is an express or implied
agreement to the contrary.
3. For commissioned works: the person who
commissioned the work owns the work but the
copyright thereto remains with the creator, unless
there is written agreement to the contrary.
4. For audiovisual works: the producer, the author of
the scenario, the composer of the music, the film
director, and the author of the work so adapted.
Infringement of Copyright – It consists in infringing
any right secured or protected under the Code. It
may also consist in aiding or abetting such
infringement. The law also provides for the liability of
a person who at the time when copyright subsists in
a work has in his possession an article which he
knows, or ought to know, to be an infringing copy of
the work for the purpose of:
1. Selling or letting for hire, or by way of trade
offering or exposing for sale or hire, the article;
2. Distributing the article for the purpose of trade, or
for any other purpose to an extent that will
prejudice the rights of the copyright owner in the
work; or
3. Trade exhibit of the article in public.
Works that can be protected by Copyrights
(Copyrightable Works)
1. Books, pamphlets, articles and other
writings;
2. Periodicals and newspapers;
3. Lectures, sermons, addresses, dissertations
prepared for oral delivery, whether or not
reduced in writing or other material form;
4. Letters;
5. Dramatic or dramatico-musical compositions;
choreographic works or entertainment in
dumb shows;
6. Musical compositions, with or without
words;
7. Works of drawing, painting, architecture,
sculpture, engraving, lithography or other
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 works of art; models or designs for works of
art;
8. Original ornamental designs or models for
articles of manufacture, whether or not
registrable as an industrial design, and other
works of applied art;
9. Illustrations, maps, plans, sketches, charts
and three-dimensional works relative to
geography, topography, architecture or
science;
10. Drawings or plastic works of a scientific or
technical character;
11. Photographic works including works
produced by a process analogous to
photography; lantern slides;
12. Audiovisual works and cinematographic
works and works produced by a process
analogous to cinematography or any process
for making audio-visual recordings;
13. Pictorial illustrations and advertisements;
14. Computer programs; and other literary,
scholarly, scientific and artistic works.
ix. Works that are not protected by Copyrights (Non-
copyrightable Works)
1. any idea, procedure, system, method or
operation, concept, principle, discovery or
mere data as such, even if they are expressed,
explained, illustrated or embodied in a work;
2. news of the day and other miscellaneous facts
having the character of mere items of press
information; or
3. any official text of a legislative, administrative
or legal nature, as well as any official
translation thereof

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