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Intellectual Property Law (R.A. No.

8293
a.k.a. 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 Rights - It must be registered with IPO to be protected by law
(Created by Registration with IPO)

III. Term 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. (Sec. 23, IP CODE)

a. Prior art shall consist of:

i. 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

ii. 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
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 filing date or priority date of the application
claiming the invention.

4. (Industrial Applicability) It must be industrially applicable. An invention


which can be produced and used in any industry shall be industrially
applicable.

V. Non-Patentable Inventions. The following shall be excluded from patent


protections:

1. Discoveries, scientific theories and mathematical method;

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 compositions 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
microorganisms and non-biological and microbiological processes. Provision
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 same 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 (Sec. 29, IP CODE).

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 of 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 (Sec. 31, IP CODE).
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 (Sec. 28, IP CODE).

IX. Inventions Created Pursuant to a Commission. The person who commissions


the work shall own the patent, unless otherwise provided in the contract. (Sec. 30.1,
IP CODE)

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

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

b. The employer, if the invention is the result of the performance of his


regularly-assigned duties, unless there is an agreement, express or
implied, to the contrary.

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 Equivalents Infringement - It provides that infringement


also takes place when a device appropriates a prior invention by
incorporating its innovative concept and, albeit 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.

The Law on Trademarks, Service Marks and Trade Names

Definition of Terms

1. Trademark- 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- means any visible sign capable of distinguishing the services of an
enterprise and shall include a stamped or marked container of goods.
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.

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)

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: cd
i. The same goods or services,
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
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
13. Is contrary to public order or morality.

Term of Trademark and Service Mark- It has a term of 10 years but subject to unlimited terms
of renewal. Therefore, it has indefinite life.

Test of Trademark Infringement

1. Dominancy Test- It 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.

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
trademark or tradename 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 identify of such business; or reproduce, counterfeit,
copy or colorably imitate any such mark or tradename and apply such reproduction,
counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers,
receptacles or advertisements intended to be used in commerce 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.

To establish trademark infringement, the following elements must be proven:


1. the validity of plaintiff’s mark;
2. the plaintiff’s ownership of the mark; and
3. the use 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 end and probable effect of deceiving the public. The
essential elements of unfair competition are: confusing similarity in the general
appearance of the goods; and 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 trade
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 sold; only the ownership of the trademarks is at issue.

C. The Law on Copyright

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 include 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 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)
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 term of protection, the term of protection subsequent to the death
of the author shall run from the date of his death or of 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 enables the creator to obtain remuneration from
the exploitation of his 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 him 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

vi. 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 a
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.

vii. 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

viii. 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 works of art; models or designs for works of art;
8. Original ornamental designs or models or articles of manufacture,
whether or not registrable as an industrial design, and other works of
applied artl
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 o 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.