INTELLECTUAL PROPERTY LAW

Republic Act No. 8293 [An Act Prescribing the Intellectual Property Code and Establishing the
Intellectual Property Office, Providing for Its Powers and Functions, and for Other Purposes]
otherwise known as the Intellectual Property Code of the Philippines.

State policy declaration:

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. It shall protect and secure the
exclusive rights of scientists, inventors, artists and other gifted citizens to their intellectual
property and creations, particularly when beneficial to the people, for such periods as provided in
this Act.

The use of intellectual property bears a social function. To this end, the State shall promote the
diffusion of knowledge and information for the promotion of national development and progress
and the common good.

It is also the policy of the State to streamline administrative procedures of registering patents,
trademarks and copyright, to liberalize the registration on the transfer of technology, and to
enhance the enforcement of intellectual property rights in the Philippines.

Effect on international conventions and on principle of reciprocity:

Any person who is a national or who is domiciled or has a real and effective industrial
establishment in a country which 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 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 right is
otherwise entitled by this Act.
Laws repealed:

Republic Act No. 8293 repealed all Acts and parts of Acts inconsistent therewith, more
particularly:

1. Republic Act No. 165, as amended [An Act Creating a Patent Office, Prescribing its Powers
and Duties, Regulating the Issuance of Patents, and Appropriating Funds Therefor];

2. Republic Act No. 166, as amended[An Act to Provide for the Registration and Protection of
Trademarks, Trade-Names, and Service-Marks, Defining Unfair Competition and False Marking
and Providing Remedies Against the Same, and for Other Purposes].

3. Presidential Decree No. 49 [Decree on the Protection of Intellectual Property];

4. Presidential Decree No. 285, as amended [Decree on the Protection of Intellectual Property];

5. Articles 188 and 189 of the Revised Penal Code of the Philippines.

Intellectual property rights under the I. P. Code:

The intellectual property rights under the Intellectual Property Code are as follows:

1. Copyright and related rights;

2. Trademarks and service marks;
3. Geographic indications;
4. Industrial designs;
5. Patents;
6. Layout designs [topographies] of integrated circuits; and
7. Protection of undisclosed information.

Government Agencies: The agency of the government in charge of the implementation of the
Intellectual Property Code is the Intellectual Property Office which replaced the Bureau of
Patents, Trademarks and Technology Transfer. It is divided into six [6] Bureaus, namely:
 [1] Bureau of Patents;
[2] Bureau of Trademarks;
[3] Bureau of Legal Affairs;
[4] Documentation, Information and Technology Transfer Bureau;
[5] Management Information System and EDP Bureau; and
[6] Administrative, Financial and Personnel Services Bureau.

Functions of the Intellectual Property Office:

The Intellectual Property Office is mandated under the law to:

1. Examine applications for the grant of letters patent for inventions and register utility models
and industrial designs;

2. Examine applications for the registration of marks, geographic indication and integrated
circuits;

3. Register technology transfer arrangements and settle disputes involving technology transfer
payments covered by the provisions of Part II, Chapter IX on Voluntary Licensing and develop
and implement strategies to promote and facilitate technology transfer;

4. Promote the use of patent information as a tool for technology development;

5. Publish regularly in its own publication the patents, marks, utility models and industrial
designs, issued and approved, and the technology transfer arrangements registered;

6. Administratively adjudicate contested proceedings affecting intellectual property rights;

and

7. Coordinate with other government agencies and the private sector efforts to formulate and
implement plans and policies to strengthen the protection of intellectual property rights in the
country.
Significant features of the law:

1. A shift was made from the "first-to-invent system" under R. A. 165 [old law] to
"first-to-file system" under the new law.

2. In the case of inventions, the period of the grant was increased from 17 years
from grant under the old law to 20 years from date of filing under the new law.

3. In the case of utility models, the previous grant of 5 years plus renewals of 5 years
each under the old law was changed to 7 years without renewal under the new law.

4. In the case of industrial designs, the previous grant of 5 years plus renewals of 5
years each was maintained.

5. Under the old law, there was no opposition proceedings and the examination is
mandatory; under the new law, the examination is made only upon request [possibly with
or without examination].

6. Under the old law, publication is made after the grant; under the new law,
publication is effected after 18 months from filing date or priority date.

7. Under the old law, the penalties for repetition of infringement are: PhP10,000
and/or 5 years of imprisonment and the offense prescribes in 2 years; under the present
law, the penalties range from PhP100,000 to PhP300,000 and/or 6 months to 3 years of
imprisonment and the offense prescribes in 3 years.

Significant changes in the trademark law:

The significant changes in the trademark law under the old law [R. A. No. 166] and the
present law are as follows:

1. Under the former, the element of use before filing a local application is a
requirement although this is not required when the application is based on foreign
 registration; while under the latter, the element of use has been eliminated as a
requirement for application.

2. Under the former, the term granted is 20 years renewable for 20-year periods;
while under the latter, the term is for 10 years, renewable for 10-year periods.

3. Under the former, the affidavit of use or non-use is required on the 5th, 10th and
15th anniversaries; while under the latter, proof of use within 3 years from the filing of
the application is required and the affidavit of use should be filed within 1 year from the
5th anniversary.

4. Under the former, a Supplemental Register is required to be maintained; while

under the latter, it is no longer required.

5. Under the former law, penalties for infringement, unfair competition, false
designation of origin and false description or representation range from fine of PhP500 to
PhP2,000 and/or 6 months to 3 years and 4 months of imprisonment; while under the
latter law, the penalties range from fine of PhP50,000 to PhP200,000 and/or 2 to 5 years
of imprisonment.

Significant changes in the copyright law:

It is now required that after the first public dissemination of performance by authority of the
copyright owner of certain specified work, there shall, for the purpose of completing the records
of the National Library and the Supreme Court library, within three (3) weeks, be registered and
deposited with it, by personal delivery or by registered mail, two (2) complete copies or
reproductions of the work in such form as the directors of said libraries may prescribe. The
scheme of penalties for infringement has also been changed. From the previous fine of Php200
to Php2,000 and/or imprisonment of 1 year, the current range of penalties are as follows:

 For first offenders - fine of PhP50,000 to PhP150,000 and/or imprisonment of 1 to 3

years
  For second offenders - fine of PhP150,000 to PhP500,000 and/or imprisonment of 3 to 6
years
 For third and subsequent offenders - fine of PhP500,000 to PhP1.5 Million and/or
imprisonment of 6 to 9 years.
 In case of insolvency, the offender shall furthermore suffer subsidiary imprisonment.

What is a patent?
A statutory grant which confers to an inventor or his legal successor, in return for the disclosure
of the invention to the public, the right for a limited period of time to exclude others from
making, using, selling or importing the invention within the territory of the country that grants
the patent.

What are the 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. It may be, or may relate to, a product, or process, or
an improvement of any of the foregoing. (Sec. 21)

Who may apply for a patent?

Any person who is a national or who is domiciled or has a real and effective industrial
establishment in a country which 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 extends reciprocal rights to nationals of the Philippines by law. (Sec. 3, IPC)

What are the steps in the registration of a patent?

The procedure for the grant of patent may be summarized as follows:
1. Filing of the application
2. Accordance of the filing date
3. Formality examination
4. Classification and Search
5. Publication of application
6. Substantive examination
7. Grant of Patent
8. Publication upon grant

Who is a parallel importer?

One which imports, distributes, and sells genuine products in the market, independently of an
exclusive distributorship or agency agreement with the manufacturer.

What constitutes infringement of patent?

1. Making, using, offering for sale, selling or importing a patented product or a product
obtained directly or indirectly from a patented process; or
2. Use of a patented process without authorization of the owner of the patent

What is voluntary licensing?

The grant by the patent owner to a third person of the right to exploit a patented invention.

What are the rights of a licensor in voluntary licensing?

In the absence of any provision to the contrary in the technology transfer arrangement, the grant
of a license shall not prevent the licensor from granting further licenses to third person nor from
exploiting the subject matter of the technology transfer arrangement himself (Sec. 89, IPC).

What is the effect if the assignment was not recorded in the IPO?

A deed of assignment affecting title shall be void as against any subsequent purchaser or
mortgagee for valuable consideration and without notice unless, it is so recorded in the Office,
within three (3) months from the date of said instrument, or prior to the subsequent purchase or
mortgage. Even without recordal, the instruments are binding upon the parties.

What is a trademark and how does it differ from a trade name?

Any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an
enterprise. A trade name is a name or designation identifying or distinguishing an enterprise.
How are trade names acquired?
Trade names or business names are acquired through adoption and use. Registration is not
required. (Sec. 165, IPC)

What is colorable imitation?

Such a close or ingenious imitation as to be calculated to deceive ordinary persons, or such a
resemblance to the original as to deceive an ordinary purchaser giving such attention as a
purchaser usually gives, as to cause him to purchase the one supposing it to be the other.

What is the effect of use of Indications by third parties for purposes other than those for
which the mark is used?
Registration of the mark shall not confer on the registered owner the right to preclude third
parties from using bona fide their names, addresses, pseudonyms, a geographical name, or exact
indications concerning the kind, quality, quantity, destination, value, place of origin, or time of
production or of supply, of their goods or services.

What is trademark infringement?

The use without consent of the trademark owner of any a) reproduction, b) counterfeit, c) copy or
d) colorable imitation of any registered mark 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 identity of such business; or reproduce, counterfeit, copy or
colorably imitate any such mark or tradename and apply such reproduction, counterfeit, copy or
colorable limitation to labels, signs, prints, packages, wrappers, receptacles or advertisements
intended to be used upon or in connection with such goods, business or services.

What are the salient features of the Paris convention of trademarks?

1. National Treatment Principle – foreign nationals are to be given the same treatment in
each of the member countries as that country makes available in its own citizens.
 2. Right of Priority – any person who has duly filed registration for trademark shall enjoy a
right of priority of 6 months (Rule 203, Trademark Rules)

3. Protection against Unfair Competition

4. Protection of Tradenames – protected in all countries without obligation of filing or

registration.

5. Protection of Well‐Known Marks

Is the law on unfair competition broader than the law on trademark?

Yes. For the latter (trademark infringement) is more limited but it recognizes a more exclusive
right derived from the trademark adoption and registration by the person whose goods or
business is first associated with it. Hence, even if one fails to establish his exclusive property
right to a trademark, he may still obtain relief on the ground of his competitor’s unfairness or
fraud. Conduct constitutes unfair competition if the effect is to pass off on the public the goods
of one man as the goods of another.

What is the doctrine of secondary meaning?

This doctrine is to the effect that a word or phrase originally incapable of exclusive appropriation
with reference to an article on the market, because it is geographical or otherwise descriptive,
may nevertheless be used exclusively by one producer with reference to his article so long as in
that trade and to that branch of the purchasing public, the word or phrase has come to mean that
the article was his product. (G. and C. Merriam Co. v. Saalfield, 198 F. 369, 373, cited in Ang v.
Teodoro, G.R. No. L‐48226, Dec. 14, 1942)

What is a collective mark?

A "collective mark" or ―collective trade‐name" is a mark or trade‐name used by the members of
a cooperative, an association or other collective group or organization.
What is copyright?
A right over literary and artistic works which are original intellectual creations in the literary and
artistic domain protected from the moment of creation.

What are the elements of copyrightability?

1. Originality – Must have been created by the author’s own skill, labor, and judgment without
directly copying or evasively imitating the work of another. (Ching Kian Chuan v. CA, G.R.
No. 130360, Aug. 15, 2001)

2. Expression – Must be embodied in a medium sufficiently permanent or stable to permit it to

be perceived, reproduced or communicated for a period more than a transitory duration.

What is the presumption of authorship?

The natural person whose name is indicated on a work in the usual manner as the author shall, in
the absence of proof to the contrary, presumed to be the author of the work. This is applicable
even if the name is a pseudonym, where the pseudonym leaves no doubt as to identity of the
author. (Sec. 219.1, IPC) The person or body corporate, whose name appears on the audio‐visual
work in the usual manner shall, in the absence of proof to the contrary, be presumed to be the
maker of said work.

What are the general limitations on copyright?

The following acts shall not constitute infringement of copyright:

1) Performance of a work, once it has been lawfully made accessible to the public, if done
privately and free of charge or for a charitable or religious institution or society.

2) The making of quotations from a published work if they are compatible with fair use and
only to the extent justified for the purpose.

3) Communication to the public by mass media of articles on current political, social, economic,
scientific or religious topic, lectures, addresses and other works of the same nature
4) As part of reports of current events (e.g. music played or tunes on the occasion of a sporting
event and such tunes were picked up during a new coverage of the event).

5) For teaching purposes, provided that the source and of the name of the author, if appearing in
the work, are mentioned.

6) Recording made in educational institutions of a work included in a broadcast for the use of
such educational institutions, provided that such recording must be deleted within a
reasonable period after they were first broadcast.

7) The making of ephemeral recordings by a broadcasting organization by means of its own

facilities and for use in its own broadcast.

8) 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 professional institutions where such use is in
the public interest and is compatible with fair use.

9) The public performance of a work, in a place where no admission fee is charged.

10) 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 (e.g.
Public display using posters mounted on walls and display boards).

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

What is copyright infringement?

It is the doing by any person, without the consent of the owner of the copyright, of anything the sole right
to do which is conferred by statute on the owner of the copyright. The act of lifting from another’s book
substantial portions of discussions and examples and the failure to acknowledge the same is an
infringement of copyright.

What are special considerations involving copyright?

In some research agreements, copyrightable intellectual property, which may take various forms,
is treated differently than patentable intellectual property.

Definitions relevant to issues of copyright in research agreements:

―Author‖ means the person, using his or her own independent efforts, who creates an original
work by translating an idea into a fixed, tangible expression that is entitled to copyright
protection.

―Derivative Work‖ means any work substantially based on one or more preexisting works, such
as revisions, annotations, elaborations, translations, or modifications, which as a whole
represent an original work of authorship. A work is derivative if it would be considered
infringing on the original copyright it the material or pre-existing work from which it was
derived has been taken without the consent of the original copyright holder.

―Employer‖ means the hiring party who had the right to control the manner and means of the
author/employee’s work. Copyright protection will be afforded the employer by statute for
works made by its author/employee in the regular course of business.

―Fair Use‖ means the use of a copyrighted work for purposes such as criticism, comment, news
reporting, teaching, scholarship or research that do not infringe the copyright after consideration
of the following factors: (1) the purpose and character of the use. including whether the use is
of a commercial nature or is for nonprofit educational purposes; (2) the nature of the
copyrighted work; (3) the relative amount and substantiality of the use compared to the whole
copyrighted work; and (4) the effect of the use on the marketability or value of the copyrighted
work.
 ―Improvements‖ on a preexisting work, by their very nature, tend to be derivative works. If the
work is a software program, improvements may take the following general forms: (1) error
corrections—such as ―maintenance‖ or ―bug‖ corrections; (2) additional features—
―enhancements;‖ or (3) a substantial rewrite of the program having new features, yet retaining
―portability‖ from the original program.

―Originality‖ means that the work is independently created and not copied from other works.
Originality of a derivative work means any variation of an original work which is sufficient to
render the derivative work distinguishable from its prior work in any meaningful manner.

―Owner‖ means the person entitled to a claim of copyright. This person must be either the
author or have succeeded to the right of the author (e.g., employer).

―Work Made for Hire” means a work prepared by an employee within the scope of his or her
employment or a certain work specially ordered or commissioned, and so designated in writing.

What does substantial reproduction mean?

It is not necessarily required that the entire copyrighted work, or even a large portion of it, be
copied. If so much is taken that the value of the original work is substantially diminished, there is
an infringement of copyright and to an injurious extent, the work is appropriated. It is no defense
that the pirate did not know whether or not he was infringing any copyright; he at least knew that
what he was copying was not his, and he copied at his peril. In cases of infringement, copying
alone is not what is prohibited. The copying must produce an ―injurious effect‖.

What is plagiarism?
A: It is the practice of claiming or implying original authorship of (or incorporating material
from) someone else’s written or creative work, in whole or in part, into one’s own without
adequate acknowledgment.
What is affidavit evidence?

A: An affidavit made before the notary public in actions for infringement, reciting the facts required to be
stated under the IPC.

CONCLUSION

Intellectual property is important for a person or company to safeguard. Without proper

safeguards in place, one company’s ideas can be replicated by another company and used for
their profit. Some legal issues can arise from IP, but as long a company is on top of the
paperwork and has an attorney they can prevent most of the issues or fight them if necessary.
Having precautions in place can also help a company keep their trade secrets safe. With the use
of a non-disclosure agreement with a non-compete clause can help a company keep their secret
intact for their company to use when it is needed. While contracts are put into place to ensure a
business will do what is required, a contract breach is possible. The violation can be resolved
with employee input as well as mediation to ensure proper resolution for the breach. Using some
of the techniques will prevent a company’s IP from getting into the wrong hands.

Sources:
1. https://www.coursehero.com/file/p58mtqs/Conclusion-Intellectual-property-is-important-
for-a-person-or-company-to/

2. https://www.nap.edu/read/10009/chapter/9

3. http://businesscasestudies.co.uk/intellectual-property-office/intellectual-property-rights-
and-entrepreneurship/conclusion.html
Intellectual Property
Law Term Paper

Submitted to: Atty. Rodolfo Rabaja

Submitted by: Christine Aev T. Olasa
Alternative Dispute
Resolution
Term Paper

Submitted to: Atty. Rodolfo Rabaja

Submitted by: Christine Aev T. Olasa