INTELLECTUAL PROPERTY

What is 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:
1.

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
2. Extends to 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 any
intellectual property right is otherwise entitled by this act (Sec 3, IPC).
What is National Treatment?
Each member of the WTOs agreement on Trade-Related Aspects of International Property Rights
(TRIPS) shall accord to nationals of the other members no less favorable than that it accords to its
own national with regard to the protection of intellectual property (Art 3, TRIPS)
What is Most-Favored-Nation treatment?
With regard to the protection of intellectual property, any advantage, favour, privilege or
immunity granted by a member to the nationals of any other country shall be accorded
immediately and unconditionally to all nationals of all other members of WTOs TRIPS (Art 4,
TRIPS).
Where must intellectual properties be registered?
Copyrighted works are deposited with the National Library and the Supreme Court. However,
IPO, through the Bureau of Copyright, exercises original jurisdiction over disputes relating to the
terms of a license involving the authors rights. Registration of other intellectual properties is with
the IPO (Sec 9A, IPC).
What are the functions of the Director General and Deputies Director General
under the IP amendments?
1.

Exercise exclusive appellate jurisdiction over all decisions rendered by the

Director of Legal Affairs, the Director of Patents, the Director of Trademarks, the Director
of Copyright and Other Related Rights, and the Director of the Documentation,
Information and Technology Transfer Bureau. The decisions of the Director General in
the exercise of his appellate jurisdiction in respect of the decisions of the Director of
Patents, the Director of Trademarks and the Director of Copyright and Other Related
Rights shall be appealable to the Court of Appeals in accordance with the Rules of Court;
and those in respect of the decisions of the Director of the Documentation, Information
and Technology Transfer Bureau shall be appealable to the Secretary of Trade and
Industry;

2. Undertake enforcement functions supported by concerned agencies such as the

Philippine National Police, the National Bureau of Investigation, the Bureau of Customs,
the Optical Media Board, and the local government units, among others.

3. Conduct visits during reasonable hours to establishments and businesses engaging in

activities violating intellectual property rights and provisions of this Act based on report,
information or complaint received by the office.
4. Such other functions in furtherance of protecting IP rights and objectives of this Act.
What are the functions of the Bureau of Copyright and other related rights?
The Bureau of Copyright and Other Related Rights shall have the following functions:
1.

Exercise 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;

2. Accept, review and decide on applications for the accreditation of collective management
organizations or similar entities;
3. Conduct studies and researches in the field of copyright and related rights; and
4. Provide other copyright and related rights service and charge reasonable fees

COPYRIGHT
What is copyright?
Copyright is right over literary and artistic works, which are original intellectual creations in the
literary and artistic domain protected from the moment of creation.
Who owns copyright over letters and other private communications in writing?
The person to whom they are addressed and delivered owns copyright. However, they cannot be
published or disseminated without the consent of the writer or his heirs (Art 723, NCC).
When rights over copyrights are conferred?
Rights over copyrights are conferred from the moment of creation (Sec 172.1, IPC). The work is
deemed created if something original is expressed in a fixed manner.
Who owns the copyright?
1.

One creator the creator, his heirs or assigns owns the copyright

2. Joint creation co-authors shall be the original owners of the copyright and in the
absence of agreement, the rights shall be governed by the rules on co-ownership.
a.

Exception: work of joint authorship consists of parts that can be used separately
and the author of each part can be identified, the author of each part shall be the
original owner of the copyright in the part that he has created.

3. Commissioned work the person commissioning owns the work. Ownership of copyright
remains with the creator, unless there is a written stipulation to the contrary.
4. Audio-visual work the producer for purposes of exhibition. For all other purposes, the
producer, the author of the scenario, composer, film director, photographic director and
the author of the work are the owners.
5.

Employees work during course of employment employer, if the result of regular

functions or duties but the employee owns it if it is not part of his duties.

Who owns copyright over pseudonymous and anonymous works?

Unless the author is undisputable known, the published shall be presumed to be the
representative of the author (Sec 178 and 179, IPC).
Duration of copyright
1.

literary artistic works and derivative works during the lifetime of the creator and for 50
years after his death.

2. Joint creation the economic rights shall be protected during the life of the last surviving
authors and for 50 years after the death of the last surviving author.
3. Anonymous or pseudonymous work till the end of 50 years following the date of their
first publication. The 50 year duration commences from January 1 following the date of
publication.
4. Work of applied art 25 years from the date of making
5.

Photographic works 50 years from the publication of the work, or from making if
unpublished.

6. Broadcast 20 years from the date of broadcast.

Who has exclusive right to make a collection of speeches, lectures, sermons,

addresses and dissertations?
The author of speeches, lectures, sermons, addresses and dissertations shall have the exclusive
right of making a collection of his works (Sec 176.2, IPC).
Can a format of a television game show be a subject of a copyright?
No. It is not subject to a copyright. 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, are unprotected works (Art 10 (1), TRIPS; Joaquin v Drilon, 1999).
Is news of the day subject to copyright?
No. news of the day and other miscellaneous facts having the character of mere itmes of press
information are unprotected works (Sec 175, IPC).
What are the economic rights of the author?

To carry out, authorize, or prevent the following acts:

1. reproduction of the work or substantial portion of the work
2. dramatization, translation, adaption, abridgment, arrangement or other transformation
of the work
3. first public distribution of the original and each copy of the work
4. rental of the original or a copy of an audio visual or cinematographic work
5. Public display of the original or a copy of the work
6. Public performance of the work
7. Other communication to the public of the work (Sec 177, IPC)
What are the moral rights of the author?
1.

Require that the authorship of the works be attributed to him, in a prominent way on the
copies, and with the public use of the work
2. Make any alterations of his work prior to, or to withhold it from publication
3. Object to any distortion, mutilation or other modification of, or other derogatory action in
relation to, his work which would be prejudicial to his honor or reputation
4. Retrain the use of his name with respect of any work not of his own creation or in a
distorted version of his work (Sec 193, IPC)
What are the rights of the publisher?
1. The right to publish granted by the author, his heirs, or assigns
2. The publisher shall have a copyright consisting merely of the right of reproduction of the
typographical arrangement of the published edition of the work (Sec 173, IPC)
3. If submitted to newspaper, magazine and the like, the right to publish once materials sent
by a writer, a photographer, an artist to a periodical or newspaper publisher, but such
writer or artist retains his copyright on the piece (Sec 180.3, IPC)
When is fair use of a copyrighted work not infringement?
Fair use of copyrighted work for criticism, comment, news reporting, teaching, including multiple
copies for classroom use, scholarship, research and similar purposes is not an infringement of
copyright (Sec 185, IPC).
What are the factors to consider to determine whether use is fair or not?
1.
2.
3.
4.

Purpose and the character of the use

Nature of the copyrighted work
Amount and substantiality of the portions used
Effect of the use upon the potential market of the copyrighted work

What is decompilation?
Decompilation is the reproduction of the code and translation of the forms of a computer
program to achieve the interoperability of an independently created computer program with other
programs (IPL as amended).
When may decompilation considered fair use?
Decompilation may constitute fair use to the extent that such decompilation is done for the
purpose of obtaining the information necessary to achieve interoperability.
Is authorization from the author necessary for the importation of a copy of a
copyrighted work for personal purpose?

No. 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.
When is there infringement of copyrighted work?
There is infringement when there is piracy or substantial reproduction. If so much is taken that
the value of the original work is substantially diminished or the laborers of the original author are
substantially and to an injurious extent appropriated by another (Habana v. Robles, 1999).
How does a person infringe a copyright belonging to another?
1. Directly commits an infringement
2. Benefits from the infringing activity of another person who commits an infringement if the
person benefiting has been given notice of the infringing activity and has the right and ability
to control the activities of the other person
3. With knowledge of infringing activity, induces, causes or materially contributes to the
infringing conduct of another (Sec 216 as amended by RA 10372).
What are the remedies of a person whose rights were infringed by another?
1. Injunction to prevent infringement
2. Action for damages which should be filed within 4 years. Damages are assessed on the
basis of the proof alleged by the plaintiff of ales made by the defendant of the infringing
work minus whatever costs the defendant may be able to prove and appreciate by the
court.
3. Criminal case. The infringer also exposes himself to criminal liability wherein the law
prescribes penalties of imprisonment and fines, including subsidiary imprisonment in
case of insolvency (Se 218).
Can Filipinos returning from abroad bring home copies of legitimate copyrighted
works?
Yes. The amendments to the IP code have removed the original limitation of 3 copies when
bringing legitimately acquired copies of copyrighted material into the country. Only the
importation of pirated or infringed material is illegal. As long as they were legally purchased, you
can bring as many copied you want, subject to Customs regulations (Sec 190.1, RA 8293; Sec 14,
RA 10272).
Is jailbreaking or rooting phone or device illegal?
Jailbreaking or rooting by themselves are not illegal. However, downloading pirated material, or
committing infringement with a jailbroken phone increases the penalty and damages imposed
on the person found guilty of infringement.
Jailbreaking [for iOS] and rooting [for android] are examples of decompilation, the
process of removing the vendor-imposed limitations of tablets, mobile devices and other
electronic gadgets. Though not illegal, decompilation may be in violation of your
operating systems terms of user, and therefore may void your warranty.
Is the reproduction of copyrighted material for personal purposes punishable by
this law?
No. infringement in this context refers to the economic rights of the copyright owner. Thus, if a
person transfers music from a lawfully acquired CD into a computer and downloads it to a
portable device for personal use, he does not commit infringement. But if he makes multiple
copies of the CD to sell, then infringement occurs.
Are mall owners liable for infringement activities of their tenants?

Mall owners are not automatically penalized for the infringing acts of their tenants. When a mall
owner or lessor finds out about an infringement activity, her or she must give notice to the tenant,
then he or she will be afforded time to act upon this knowledge. As stated above, the law requires
that one must have both proven knowledge of the infringement, and the ability to control the
activities of the infringing person, to be held liable. The mall owner must also have benefitted
from the infringement.
Is it illegal for the intellectual property office to visit businesses to conduct searches
based on reports, information and complaints?
The IPO may visit establishments based on reports and complaints; this in itself is constitutional.
However, if the IPO intends to perform a search and seizure, it must comply with constitutional
requirements, such as having a search warrant. A warrant would not be required, however, if the
IPO is accompanied by the Bureau of Customs or the Optical Media Board two agencies that can
perform a search and seizure on their own right without a warrant (per RA 1937 and 9239,
respectively).

TRADEMARKS
What is a trademark?
A trademark is any visible sign capable of distinguishing the goods (trademark) or services
(service mark) of an enterprise and shall include a stamped or marked container of goods. In
relation thereto, a trade name means the name or designation identifying or distinguishing an
enterprise.
What is a collective mark?
A collective mark is any visible sign designated as such in the application fro 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.
Is there a need to register trade names to file for infringement suit?
No. There is no need to register trade names in order to secure protection for them (Sec 165.2 (a),
IPC).
How are marks acquired?
1.

The rights in a mark shall be acquired through registration with the Intellectual Property
Office or IPO (Sec 122, IPC).
2. When the law states the right is acquired from the time of registration, it is actually
referring to the filing date of application.
Can one file actions for infringement, unfair competition and false designation of
origin without registration of trademark?
Registration is necessary before one can file an action for infringement. But it is not necessary in
filing an action for unfair competition and false designation of origin (Sec 168.2, 169, IPC).
When is there unfair competition?
There is unfair competition when:
1. There is passing off a product format of another

2. Giving goods the appearance of goods of another

Is prior use in the Philippines required before registration?
No. prior use is not required. However, there must be actual use after registration.
The registrant shall file a declaration of actual use of the mark with evidence to that effect
within 3 years from the filing date of application otherwise it may be cancelled (Sec 142.2
and 151(c), IPC). The registrant is required to file a declaration of actual use and evidence
to that effect, or shall show valid reasons for non-use within 1 year from the 5 th
anniversary date of registration (Sec 145, IPC).
What is the evidentiary value of a certificate of registration?
A certificate of registration of a mark shall be prima facie evidence of the validity of the
registration, the registrants ownership of the mark, and of the registrants exclusive right to use
the same (Sec 138, IPC).
This means that registrants right may be questioned by a person who has a better right,
including a prior actual user. This also includes persons with internationally known
marks.
What is the doctrine of secondary meaning?
A generic or descriptive mark may later acquire the characteristic of distinctiveness and can later
be registered if it acquires a meaning which is different from its ordinary connotation. For this to
happen, there must be exclusive and continuous use for a period of at least 5 years (Sec 123.2,
IPL).
What is the duration of trademark?
The duration is 10 years subject to indefinite renewal for period of 10 years each.
What are the elements of trademark infringement?
1.

The trademark is registered in the IP office. But in the case of infringement of trade
name, the same need not be registered
2. The trademark or trade name is reproduced, counterfeited, copied or colorably imitated
by the infringer
3. It is used in connection with the sale, offering for sale or advertising of any goods,
business or services; or it is applied to labels, signs, prints, packages, wrappers,
receptacles or advertisements intended to be used upon or in connection with such goods,
business or services
4. The use or application of the infringing mark or trade mark is likely to cause confusion or
mistake or to deceive purchasers or others as to the goods or services themselves or as to
the source or origin of such goods or services or the identity of such business
5. It is without consent of the trademark or trade name owner of the assignee thereof
(Prosource International v Horphag).
What are the two types of confusion?
1. confusion of goods
2. confusion of business
What is dominancy test?

Dominancy test focuses on the similarity of the prevalent features of the competing
trademarks which might cause confusion or deception, and thus infringement. If the competing
trademark contains the main, essential or dominant features or another, and confusion or
deception is likely to result, infringement takes place. It is embodied in Sec 155 of the IPL and is
therefore the controlling test.
What is holistic test?
Holistic test requires that the entirety of the marks in question be considered in resolving
confusing similarity. The discerning eye of the observer must focus not only on the predominant
words but also on the other features appearing in both labels in order that he may draw his
conclusion whether one is confusingly similar to the other (Mighty corp v Ej Gallo).
What is aural effect/ Idem Sonans Rule?
in dominancy test, what are taken into account are signs, color, design, peculiar shape or name, or
some special, easily remembered earmarks of the brand that readily attracts and catches the
attention of the ordinary consumers (Dermaline v Myra Pharmaceuticals, 2010).
What is unfair competition?
It involves employing deception or any other means contrary to good faith by which a person
passes off his goods or business or services for those of one who has already established goodwill
thereto (Sec 168.2, IPL).
What is the test of unfair competition?
The test is 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 (Superior Commercial Enterprises v Kinan Enterprises,
2010).
What is the difference between infringement of trademark and unfair competition?
Infringement of trademark
Unauthorized use of a trademark
It is not necessary to establish fraudulent intent
Registration of trademark is necessary
Covered by IPC

Unfair competition
Passing off of ones goods as those of another
and giving ones goods the appearance of that
of another.
Fraudulent intent must be established
Registration of trademark is not necessary
Broader than infringement as it includes cases
covered not only by IPC but also by art 27 of
the Civil Code (Del Monte v CA, 181 SCRA 410).

What are inter partes cases?

Inter partes cases are contested cases filed before the IP Office.
Interpartes trademark cases include:
1. opposition against the registration of a mark published for opposition
2. Petition to cancel the registration of a mark
Interpartes Patent cases:
1. petition to cancel an invention patent, utility model registration, industrial design
registration or any claim or parts of a claim
2. petition for compulsory licensing

PATENTS
What are patentable inventions?
Patentable inventions refer to any technical solution of a problem in any field of human activity
which is new, involves an inventive step and is industrially applicable.
What are the requisites of patentability?
1. Technical solution of a problem in any field of human activity
2. It must be a novel invention
3. Industrially applicable
What does novel mean?
That it does not form part of prior art (Sec 23, ICP)
What is prior art?
1.

That which has been made available to the public anywhere in the world before the filing
date or the priority date application
2. That which forms part of an application whether for patent, utility model or industrial
designed, effective in the Philippines, provided, that the inventor or applicants are not the
same and the contents of the application are published in accordance with the
requirements of patent application rules and the filing date of prior art is earlier (Sec 24,
IPC).
What is 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 (Sec 26, IPC).
Who is a person skilled in the art?
A person skilled in the art is presumed to be an ordinary practitioner aware of what was common
general knowledge in the art of relevant date.
What does industrial applicability mean?
An invention has industrial applicability if it can be produced and used in any industry (Sec 27,
IPC).
Who is the person entitled to right to patent?
The right to a patent belongs to the inventor, his heirs or assigns.
When two or more persons have jointly made an invention, the right to a patent shall belong to
them jointly.
If two or more persons have made the invention separately and independently of each other, the
right to the patent shall belong to the person who first filed an application for such invention (Sec,
IPC).

What is the effect of prejudicial disclosure?

Whatever right one has to the invention covered by the patent arises alone from the application
date. Thus, if the inventor voluntarily discloses it, such as by offering for sale, the world is free to
copy and use it with impunity. Ideas, once disclosed to the public without the protection of a valid
patent, are subject to appropriation without significant restrain (Pearl & Dean v Shoemart, Inc.)
What is the term of a patent?
Term of a patent is 20 years from the date of application (Sec 54, IPC).
What are the steps in determining the presence of infringement of patent?
1. Determine if there is literal infringement. If there is literal infringement, the defendant is
liable.
2. If there is literal infringement, then the doctrine of equivalents should be applied.
What is literal infringement?
There is infringement of patent under this test if one makes, uses or sells an item that contains all
the elements of the patent claim.
What is the doctrine of equivalents?
The rule stating that an infringement also takes place when a device appropriates a prior
invention by incorporating its innovative concept and, although with some modification and
change, performs substantially the same function in substantially the same way to achieve
substantially the same result (Smith Kline and Beckman Corp. v. CA, 409 SCRA 33).
What is compulsory licensing?
Compulsory licensing is a license issued by the director general of the IP Office to exploit a
patented invention without the permission of the patent holder, either by manufacture or through
parallel importation (Sec 4, RA no 9502).
In whose favor should compulsory licensing be granted?
Compusolry license should be granted to any person who has shown his capability to exploit the
invention.
When cannot compulsory licensing be applied?
Before the expiration of a period of 4 years from the date of filing of application or 3 years from
the date of patent whichever period expires last.
What is the requirement to obtain a license on reasonable commercial terms?
The compulsory license will only be granted after the petitioner has made efforts to obtain
authorization from the patent owner on reasonable commercial terms and conditions but such
efforts have been successful within a reasonable period of time (Sec 95.1, IPL as amended by RA
9502).
When is effort to obtain authorization not required?
1.

Where the petition for compulsory license seeks to remedy a practice determined after
judicial or administrative process to be anti-competitive.
2. In situations of national emergency or other circumstances of extreme urgency

3. In case of public non-commercial use

4. In cases where the demand for the patented drugs and medicines in the Philippines is not
being met an adequate extent and on reasonable terms, as determined by the Secretary of
Department of Health (Sec 95.2, IPL as amended by RA 9502).
What is technology transfer arrangements?
It refers to contract 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 4.2, IPC). It is in the nature of voluntary license contract.
What is the concept of divisional applications?
The concept of divisional applications proffered by petitioner, it comes into play when two or
more inventions are claimed in a single application but are of such a nature that a single patent
may not be issued for them. The applicant thus is required to divide, that is, to limit the claims
to whichever invention he may elect, whereas those inventions not elected may be made the
subject of separate applications which are called divisional applications. (Smith Kline Beckham
Corp v CA, 2003)