UST Golden Notes - Intellectual Property Law

UST GOLDEN NOTES 2011
INTELLECTUAL PROPERTY LAWS C. TECHNOLOGY TRANSFER ARRANGEMENTS
I. INTELLECTUAL PROPERTY RIGHTS IN GENERAL Q: What is a technology transfer arrangement?
A. INTELLECTUAL PROPERTY RIGHTS

0 Contracts or arrangements involving the
transfer of systematic knowledge for the
࿿࿿࿿_犔欅 ࿿࿿࿿࿿࿿࿿࿿࿿࿿`검❱ ࿿࿿࿿࿿࿿࿿࿿࿿࿿ manufacture of a product, the application of the
࣬
a࿿࿿࿿࿿࿿࿿࿿࿿࿿࿿ b봖 ᥘ ࿿࿿࿿࿿࿿࿿࿿࿿࿿ c process, or rendering a service including
翤乤 ࿿࿿࿿࿿࿿࿿࿿࿿࿿d뢄 ซ ࿿࿿࿿࿿࿿࿿࿿࿿࿿ e盰噙 management contracts, and transfer, assignment
࿿࿿࿿࿿࿿࿿࿿࿿࿿f⮌搡 ࿿࿿࿿࿿࿿࿿࿿࿿࿿g匌尗 ࿿࿿࿿࿿࿿࿿࿿࿿࿿ or licensing of all forms of intellectual property
rights, including licensing of computer software
h╦ᦥ ࿿࿿࿿࿿࿿࿿࿿࿿࿿ i i㍚ ࿿࿿࿿࿿࿿࿿࿿࿿࿿j筼⡧࿿࿿࿿࿿࿿࿿࿿࿿࿿
k韀㞍 ࿿࿿࿿࿿࿿࿿࿿࿿࿿l䙼ᶑ࿿࿿࿿࿿࿿࿿࿿࿿࿿m㊺ㅠ except computer software developed for mass
࿿࿿࿿࿿࿿࿿84q뱦ǝ࿿࿿࿿࿿࿿࿿࿿࿿࿿r What are market. (Sec. 4.2, IPC)
covered by intellectual property rights?
0 What is undisclosed information?
A:
0 Copyright and Related Rights 0 It is an information which:
1 Mark (trade, service and collective)
2 Geographic indications 0 Is a secret in the sense that it is not, as a
3 Industrial designs body or in precise configuration and
4 Patents assembly of components, generally
5 Layout designs (Topographies) of known among, or readily accessible to
Integrated Circuits persons within the circles that normally
0 Protection of Undisclosed Information. deal with the kind of information in
(Sec. 4.1, Intellectual Property Code question.
[IPC])
1 Has commercial value because it is a
B. DIFFERENCES BETWEEN COPYRIGHTS secret
TRADEMARKS AND PATENT
2 Has been subjected to reasonable steps
under the circumstances, by the person
0 What are the distinctions among trademark,
patent and copyright? lawfully in control of the information, to
keep it a secret. (Article 39, TRIPS
Agreement)
A:
INTELLECTUAL DEFINITION
PROPERTIES 1 What is the nature of undisclosed
Any visible sign capable of information/trade secret?
distinguishing the goods
Trademark (trademark) or services (service 0 Those trade secrets are of a privileged nature.
mark) of an enterprise and shall The protection of industrial property encourages
include a stamped or marked investments in new ideas and inventions and
container of goods. stimulates creative efforts for the satisfaction of
The name or designation human needs. It speeds up transfer of technology
Tradename identifying or distinguishing an and industrialization, and thereby bring about
enterprise. social and economic progress. Verily, the
Literary and artistic works which protection of industrial secrets is inextricably
are original intellectual creations linked to the advancement of our economy and
Copyright in the literary and artistic domain fosters healthy competition in trade. (Air
protected from the moment of Philippines Corporation v. Pennswell, Inc., G.R. No.
their creation. 172835, Dec. 13, 2007)
Any technical solution of a
problem in any field of human II. PATENTS
Patentable activity which is new, involves an
Inventions inventive step and is industrially 0.0 What is a patent?
applicable. (Kho v. CA, G.R. No.
115758, Mar. 11, 2002). 0 A statutory grant which confers to an inventor
or his legal successor, in return for the disclosure
Q: What is a geographic indication? of the invention to the public, the right for a
0 It’s an indication which identifies a good as

originating in the territory, where a given quality,
reputation or other characteristic of the good is
essentially attributable to its geographical origin.
(Art. 22, Trade‐Related Aspects of Intellectual
Property Rights)
MERCANTILE LAW TEAM:
204 ADVISER: ATTY. AMADO E. TAYAG ; SUBJECT HEAD: EARL M. LOUIE MASACAYAN;
ASST. SUBJECT HEADS: KIMVERLY A. ONG & JOANNA MAY D.G. PEÑADA; MEMBERS: MA. ELISA JONALYN A. BARQUEZ, ANGELI R.
CARPIO, ANTONETTE T. COMIA, ALBAN ROBERT LORENZO F. DE ALBAN, JOEBEN T. DE JESUS, CHRIS JARK ACE M. MAÑO, ANNA MARIE P.
OBIETA, RUBY ANNE B. PASCUA, FLOR ANGELA T. SABAUPAN, GIAN FRANCES NICOLE C. VILCHES
INTELLECTUAL PROPERTY LAW
limited period of time to exclude others from 0 What is meant by “made available to the
making, using, selling or importing the invention public” and what are its effects?
within the territory of the country that grants the
patent. 0 To be “made available to the public” means at
least one member of the public has been able to
A. PATENTABLE INVENTIONS access knowledge of the invention without any
restriction on passing that knowledge on to
Q: What are the patentable inventions? others.
0 Any technical solution of a problem in any field GR: When a work has already been made
of human activity which is new, involves an available to the public, it shall be non‐
inventive step and is industrially applicable. It may patentable for absence of novelty.
be, or may relate to, a product, or process, or an
improvement of any of the foregoing. (Sec. 21) XPN: Non‐prejudicial disclosure – the
disclosure of information contained in the
0 What are the conditions for patentability? application during the 12‐month period before
the filing date or the priority date of the
0 NIA application if such disclosure was made by:
0 Novelty – An invention shall not be
considered new if it forms part of a prior 5888 The inventor;
art. (Sec. 23, IPC)
5889 A patent office and the
1 Involves an inventive step – if, having information was contained:
regard to prior art, it is not obvious to a 5888 In another application filed by
person skilled in the art at the time of the inventor and should have not
the filing date or priority date of the have been disclosed by the office,
application claiming the invention. or
5889 In an application filed without
2 Industrially Applicable – An invention the knowledge or consent of the
that can be produced and used in any inventor by a third party which
industry, shall be industrially applicable obtained the information directly
(Sec. 27, IPC). or indirectly from the inventor;
Q: What is prior art? 5890 A third party which obtained

the information directly or indirectly from
A: the inventor. (Sec. 25, IPC)
0 Everything which has been made
available to the public anywhere in the 0.0 Who has the burden of proving want of
world, before the filing date or the novelty of an invention?
priority date of the application claiming
the invention 0.0 The burden of proving want of novelty is
on him who avers it and the burden is a heavy one
1 The whole contents of a published which is met only by clear and satisfactory proof
application, filed or effective in the which overcomes every reasonable doubt.
Philippines, with a filing or priority date (Manzano v. CA, G.R. No. 113388. Sept. 5, 1997)
that is earlier than the filing or priority
date of the application. Provided, that 0What is inventive step?
the application which has validly
claimed the filing date of an earlier A:
application under Section 31 of the IPC, GR: An invention involves an inventive step if,
there shall be a prior art with effect as having regard to prior art, it is not obvious to a
of the filing date of such earlier person skilled in the art at the time of the
application: Provided further, that the filing date or priority date of the application
applicant or the inventor identified in claiming the invention. (Sec. 26, IPC)
both applications are not one and the
same. (Sec. 24, IPC) XPN: In the case of drugs and medicines, there is
no inventive step if the invention results from
the mere discovery of a new form or new
property of a known substance which does not
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ACADEMICS CHAIR: LESTER JAY ALAN E. FLORES II C. L U NIVERSITYOF S ANTO T OMAS
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VICE CHAIRS FOR ACADEMICS: KAREN JOY G. SABUGO & JOHN HENRY C. MENDOZA FacultaddeDere
ICE HAIR FOR DMINISTRATION AND INANCE EANELLE EE
choCivil
VICE CHAIRS FOR LAY‐OUT AND DESIGN: EARL LOUIE M. MASACAYAN & THEENA C. MARTINEZ
result in the enhancement of the known some or all of the interconnections of

efficacy of that substance. (Sec. 26.2, as an integrated circuit, or such a three‐
amended by R.A. 9502) dimensional disposition prepared for an
integrated circuit intended for
Q: What is the test of non‐obviousness? manufacture. Registration is valid for 10
years without renewal counted from
ĀĀĀĀĀĀĀĀĀĀȀऀऀĀȀĀ⸀ĀᜀĀᜀĀᜀĀᜀĀᜀĀĀĀĀĀĀĀĀĀ⮌̀̀ĀȀȀ date of commencement of protection.
㨀ĀĀĀĀĀᜀĀᜀĀᜀĀᜀ0 If any person
possessing ordinary skill in the art was able to 0 Utility model – A name given to
draw the inferences and he constructs that the inventions in the mechanical field
supposed inventor drew from prior art, then the
latter did not really invent. 5888 When does an invention qualify as a
utility model?
Q: Who is considered a person of ordinary skill?
0 If it is new and industrially applicable. A model
5888 A person who is presumed to: of implement or tools of any industrial product
:768 Be an ordinary practitioner aware of even if not possessed of the quality of invention
what was common general knowledge but which is of practical utility. (Sec. 109.1, IPC)
in the art at the relevant date.
:769 Have knowledge of all references that 0.14848 What is the term of a utility model?
are sufficiently related to one another
and to the pertinent art and to have 0 7 years from date of filing of the application
knowledge of all arts reasonably (Sec. 109.3, IPC).
pertinent to the particular problems
with which the inventor was involved. 0.0 NON‐PATENTABLE INVENTIONS
:770 Have had at his disposal the normal
means and capacity for routine work 0.1 What are not patentable inventions?
and experimentation. (Rules and
Regulations on Inventions, Rule 207) 0 PAD‐SCAD
5889 What are other forms of patentable 0 Discoveries, scientific theories and
inventions? mathematical methods
A: 1 In the case of Drugs and medicines,

5888 Industrial design – Any composition of mere discovery of a new form or new
lines or colors or any three‐dimensional property of a known substance which
form, whether or not associated with does not result in the enhancement of
lines or colors. Provided that such the efficacy of that substance
composition or form gives a special
appearance to and can serve as pattern 2 Schemes, rules and methods of
for an industrial product or handicraft. performing mental acts, playing games
(Sec. 112, IPC) or doing business, and programs for
computers
Note: Generally speaking, an industrial design is the
ornamental or aesthetic aspect of a useful article. 3 Methods for treatment of the human or
(Vicente Amador, Intellectual Property Animal body
Fundamentals, 2007)
4 Plant varieties or animal breeds or
essentially biological process for the
0 Integrated circuit – A product, in its final production of plants or animals. This
form, or an intermediate form, in which provision shall not apply to micro‐
the elements, at least one of which is an organisms and non‐biological and
active elements and some of all of the microbiological processes
interconnections are integrally formed
in and or on a piece of material, and in 5 Aesthetic creations
which is intended to perform an
electronic function.
1 Layout design/topography – The three

dimensional disposition, however
expressed, of the elements, at least one
of which is an active element, and of

768.0 Anything which is Contrary to public to the patent shall belong to the person
order or morality. (Sec. 22, IPC as who filed an application for such
amended by R.A. 9502) invention, or
0 Where two or more applications are
0 Are computer programs patentable? filed for the same invention, to the
applicant whi has the earliest filing date.
A: (Sec. 29, IPC)
GR: Computer programs are not patentable
but are copyrightable. 0 Cheche invented a device that can convert
rainwater into automobile fuel. She asked
XPN: They can be patentable if they are part Macon, a lawyer, to assist in getting her
of a process (e.g. business process with a step invention patented. Macon suggested that they
involving the use of a computer program). form a corporation with other friends and have
the corporation apply for the patent, 80% of the
C. OWNERSHIP OF A PATENT shares of stock thereof to be subscribed by
Cheche and 5% by Macon. The corporation was
Q: Who is entitled to a patent? formed and the patent application was filed.
However, Cheche died 3 months later of a heart
A: attack. Franco, the estranged husband of Cheche,
5888 Inventor, his heirs, or assigns. contested the application of the corporation and
filed his own patent application as the sole
5889 Joint invention – Jointly by the surviving heir of Cheche. Decide the issue with
inventors. (Sec. 28, IPC) reasons.
5890 2 or more persons invented 0 The estranged husband of Cheche cannot

separately and independently of each successfully contest the application. The right over
other – To the person who filed an inventions accrue from the moment of creation
application; and as a right it can lawfully be assigned. Once the
title thereto is vested in the transferee, the latter
5891 2 or more applications are filed – has the right to apply for its registration. The
the applicant who has the earliest filing estranged husband of Cheche, if not disqualified
date or, the earliest priority date. First to inherit, merely would succeed to the interest of
to file rule. (Sec. 29, IPC) Cheche. (1990 Bar Question)
5892 Inventions created pursuant to a 0 Who may apply for a patent?

commission – Person who commissions
the work, unless otherwise provided in 23 Any person who is a national or who is
the contract. (Sec. 30.1, IPC) domiciled or has a real and effective industrial
establishment in a country which is a party to any
5893 Employee made the invention in convention, treaty or agreement relating to
the course of his employment contract: intellectual property rights or the repression of
̀̀ĀĀĀĀᜀĀᜀĀᜀĀᜀĀᜀĀᜀĀᜀĀĀĀĀĀĀȀĀ⸀Āᜀ unfair competition, to which the Philippines is also
ĀᜀĀᜀĀᜀĀᜀĀᜀĀᜀ768 The employee, a party, or extends reciprocal rights to nationals of
if the inventive activity is not a part the Philippines by law. (Sec. 3, IPC)
of his regular duties even if the
employee uses the time, facilities 23 What are the steps in the registration of a
and materials of the employer. patent?
̀̀ĀĀĀĀᜀĀᜀĀᜀĀᜀĀᜀĀᜀĀᜀĀĀĀĀĀĀȀĀ⸀Āᜀ
ĀᜀĀᜀĀᜀĀᜀĀᜀĀᜀ769 The employer, 23 The procedure for the grant of patent may be
if the invention is the result of the summarized as follows:
performance of his regularly‐ 23 Filing of the application
assigned duties, 24 Accordance of the filing date
unless there is an 25 Formality examination
agreement, express or implied, to 26 Classification and Search
the contrary. (Sec. 30.2, IPC) 27 Publication of application
28 Substantive examination
Q: What is the “first to file” rule? 29 Grant of Patent
30 Publication upon grant
A:
0 If two (2) or more persons have made
the invention separately and
independently of each other, the right
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0 Issuance of certificate (Salao, Essentials 23 What are the conditions in availing of priority
of Intellectual Property Law: a date?
Guidebook on Republic Act No. 8293
and Related Laws., 2008) A:
23 The local application expressly claims
0 How is disclosure made? priority;
0 The application shall disclose the invention in a 24 It is filed within 12 months from the
manner sufficiently clear and complete for it to be date the earliest foreign application was
carried out by a person skilled in the art. filed; and
0 What is a claim? 25 A certified copy of the foreign

application together with an English
0 Defines the matter for which protection is translation is filed within 6 months from
sought. Each claim shall be clear and concise, and the date of filing in the Philippines. (Sec.
shall be supported by the description. 31, IPC)
0 What is an abstract? 5888 Leonard and Marvin applied for Letters

Patent claiming the right of priority granted to
0 A concise summary of the disclosure of the foreign applicants. Receipt of petitioners’
invention as contained in the description, claims application was acknowledged by respondent
and merely serves as technical information. Director on March 6, 1954. Their Application for
Letters Patent in the US for the same invention
Q: What is unity of invention? indicated that the application in the US was filed
on March 16, 1953. They were advised that the
0 The application shall relate to one invention "Specification" they had submitted was
only or to a group of inventions forming a single "incomplete" and that responsive action should
general inventive concept. (Sec. 38.1) If several be filed with them four months from date of
independent inventions which do not form a mailing, which was August 5, 1959. On July 3,
single general inventive concept are claimed in 1962, petitioners submitted two complete copies
one application, the application must be of the Specification. Director of patents held that
restricted to a single invention. (Sec. 38.2, IPC) petitioners' application may not be treated as
filed. Is the director correct?
0 What is the concept of divisional applications?
0.0Yes, it is imperative that the application be
0 Divisional applications come into play when complete in order that it may be accepted. It is
two or more inventions are claimed in a single essential to the validity of Letters Patent that the
application but are of such a nature that a single specifications be full, definite, and specific. The
patent may not be issued for them. The applicant, purpose of requiring a definite and accurate
is thus required to “divide”, that is, to limit the description of the process is to apprise the public
claims to whichever invention he may elect, of what the patentee claims as his invention, to
whereas those inventions not elected may be inform the Courts as to what they are called upon
made the subject of separate applications which to construe, and to convey to competing
are called “divisional applications”. (Smith‐Kline manufacturers and dealers information of exactly
Beckman Corp. v. CA, GR No. 126627, Aug. what they are bound to avoid. To be entitled to
14,2003) the filing date of the patent application, an
invention disclosed in a previously filed
Q: What is priority date? application must be described within the instant
application in such a manner as to enable one
23 An application for patent filed by any person skilled in the art to use the same for a legally
who has previously applied for the same adequate utility. (Boothe v. Director of Patents,
invention in another country which by treaty, G.R. No. L‐24919, Jan. 28, 1980)
convention, or law affords similar privileges to
Filipino citizens, shall be considered as filed as of 0 What are the rights conferred by a patent
the date of filing the foreign application. (Sec. 31, application after the first publication?
IPC)
0 The applicant shall have all the rights of a
patentee against any person who, without his

authorization, exercised any of the rights 0 What if the ground/s for cancellation relate to
conferred under Section 71 in relation to the some of the claims or parts of the claim only?
invention claimed in the published patent
application, as if a patent had been granted for 0 Cancellation may be effected to such extent
that invention, provided that the said person had: only. (Sec. 61.2, IPC)
0 Actual knowledge that the invention
that he was using was the subject 0 What are the grounds for cancellation of a
matter of a published application; or utility model?
1 Received written notice that the
invention was the subject matter of a A:
published application being identified in 0.0 The invention does not qualify for
the said notice by its serial number registration as a utility model
0.1 That the description and the claims do
Note: That the action may not be filed until after the not comply with the prescribed
grant of a patent on the published application and requirements
within four (4) years from the commission of the acts
0.2 Any drawing which is necessary for the
complained of (Sec. 46, IPC).
understanding of the invention has not
been furnished
0 When shall the patent take effect?
0.3 That the owner of the utility model
registration is not the inventor or his
0 A patent shall take effect on the date of the
successor in title. (Sec. 109.4, IPC)
publication of the grant of the patent in the IPO
Gazette. (Sec. 50.3, IPC)
0 What are the grounds for cancellation of an
industrial design?
0 What is the duration of a patent, utility model
and industrial design?
A:
0 The subject matter of the industrial
A:
design is not registrable;
0.0.0 Patent – 20 years from date of
1 The subject matter is not new; or
filing of application without renewal.
2 The subject matter of the industrial
(Sec. 54, IPC)
design extends beyond the content of
the application as originally filed (Sec.
0.0.1 Utility Model – 7 years from the 120IPC).
filing date of the application without
renewal. (Sec. 109.3, IPC)
0 REMEDY OF THE TRUE AND ACTUAL OWNER
0.0.2 Industrial Design – 5 years from
3 What are the remedies of persons not having
the filing date of the application,
the right to a patent?
renewable for not more than two (2)
consecutive periods of five (5) years
ᜀĀᜀĀᜀĀᜀĀᜀĀᜀĀᜀĀᜀĀĀĀĀĀĀȀĀ⸀ĀᜀĀᜀĀᜀĀᜀĀᜀ
each. (Sec. 118.2, IPC)
ĀᜀĀᜀ768 If a person other than the
applicant is declared by final court order or
0 GROUNDS FOR CANCELATION OF A PATENT
decision as having the right to a patent, he may
within 3 months after such decision has become
0 What are the grounds for the cancellation of
final:
patents?
768.0 Prosecute the application as his own
0 NDCI
768.1 File a new patent application
0 The invention is Not new or patentable;
768.2 Request the application to be
1 The patent does not Disclose the
refused; or
invention in a manner sufficiently clear
768.3 Seek cancellation of the patent.
and complete for it to be carried out by
any person skilled in the art; or
0 What is the remedy of a true inventor?
2 Contrary to public order or morality.
(Sec. 61.1, IPC)
0 He may only ask the court to substitute him as a
3 Patent is found Invalid in an action for
infringement (Sec. 82, IPC) patentee or to cancel the patent and ask for
damages when the application of the false
inventor is granted. He may not the IPO of
processing the false application.
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F. RIGHTS CONFERED BY A PATENT act includes testing, using, making

or selling the invention including
Q: What are the rights conferred by a patent? any data related thereto, solely for
purposes reasonably related to the
A: development and submission of
768 Subject matter is a product – Right to information and issuance of
restrain, prohibit and prevent any approvals by government
unauthorized person or entity from regulatory agencies required under
making, using, offering for sale, selling any law of the Philippines or of
or importing the product. another country that regulates the
manufacture, construction, use or
769 Subject matter is a process – Right to sale of any product.(Sec. 72.4, IPC)
restrain prohibit and prevent any
unauthorized person or entity from 0 Where the act consists of the
manufacturing, dealing in, using, preparation for individual cases, in
offering for sale, selling or importing any a pharmacy or by a medical
product obtained directly or indirectly professional, of a medicine in
from such process (Sec. 71, IPC). accordance with a medical
prescription. (Sec. 72.5, IPC)
770 Right to assign the patent, to transfer by
succession, and to conclude licensing 1 Where the invention is used in any
contracts. (Sec. 71.2, IPC) ship, vessel, aircraft, or land vehicle
of any other country entering the
3 LIMITATION OF PATENT RIGHTS territory of the
Philippines temporarily or
0 What are the exceptions to the rights accidentally. (Sec. 72.5, IPC)
conferred by a patent?
0 Prior user – Person other than the
A: applicant, who in good faith, started
0 In general using the invention in the Philippines, or
undertaken serious preparations to use
0 GR: If put on the market in the the same, before the filing date or
Philippines by the owner of the priority date of the application shall
product, or with his express have the right to continue the use
consent. thereof, but this right shall only be
transferred or assigned further with his
XPN: Drugs and medicines ‐ enterprise or business. (Sec. 73, IPC)
introduced in the Philippines or .
anywhere else in the world by the 0 Use by Government – A government
patent owner, or by any party agency or third person authorized by
authorized to use the invention the government may exploit invention
(Sec. 72.1, as amended by R.A. even without agreement of a patent
9502) owner where:
1 Where the act is done privately and 0 Public interest, as determined by

on a non‐commercial scale or for a the appropriate agency of the
non‐commercial purpose. (Sec. government, so requires; or
72.2, IPC) 1 A judicial or administrative body
has determined that the manner of
2 Exclusively for experimental use of exploitation by owner of patent is
the invention for scientific anti‐competitive. (Sec. 74, IPC)
purposes or educational purposes
(experimental use provision). (Sec. 1 Reverse reciprocity of foreign law – Any
72.3, IPC) condition, restriction, limitation,
diminution, requirement, penalty or any
3 Bolar Provision ‐ In the case of similar burden imposed by the law of a
drugs and medicines, where the foreign country on a Philippine national
seeking protection of intellectual

property rights in that country, shall Regional exhaustion – allows the possibility
reciprocally be enforceable upon of importing into the national territory a
nationals of said country, within patented product originating from any
Philippine jurisdiction. (Sec. 231, IPC) other member state of a regional trade
agreement.
Q: Who is a parallel importer?
National exhaustion – limits the circulation of
One which imports, distributes, and sells genuine products covered by patent in one
products in the market, independently of an country to only those put on the market
exclusive distributorship or agency agreement by the patent owner or its authorized
with the manufacturer. agents in that same country. In this case,
there can be no parallel importation.
Note: Such acts of “underground sales and
marketing” of genuine goods, undermines the Modified exhaustion – all respect identical to
property rights and goodwill of the rightful exclusive the International exhaustion except for
distributor. Such goodwill is protected by the law on the allowance of the restriction of the
unfair competition. (Solid Triangle v. Sheriff, G.R. No. extent of exhaustion through explicit
144309, Nov. 23, 2001) contractual terms. (Carlos Correa,.
“Internationalization of the Patent
Q: What is the doctrine of exhaustion? System and New Technologies”.
International Law Journal, Vol. 20.
Also known as the doctrine of first sale, it provides No.3 , 2002)
that the patent holder has control of the first sale
of his invention. He has the opportunity to receive PATENT INFRINGEMENT
the full consideration for his invention from his
sale. Hence, he exhausts his rights in the future What constitutes infringement of patent?
control of his invention.
A:
It espouses that the patentee who has already Making, using, offering for sale, selling or
sold his invention and has received all the royalty importing a patented product or a
and consideration for the same will be deemed to product obtained directly or indirectly
have released the invention from his monopoly. from a patented process; or
The invention thus becomes open to the use of Use of a patented process without
the purchaser without further restriction. (Adams authorization of the owner of the patent
v. Burke, 84 U.S. 17, 1873) (Sec. 76, IPC)
How does the Doctrine Exhaustion of apply in What are the tests in patent infringement?
Philippine jurisdiction?
A:
A: Literal infringement Test – Resort must be
GR: Patent rights are Exhausted by first sale in had, in the first instance, to words of the
the Philippines (Domestic exhaustion). claim. If the accused matter clearly falls
within the claim, infringement is
XPN: Except however on drugs and medicines: committed.
first sale in any jurisdiction exhausts
(International exhaustion) (R.A. 9502). Minor modifications are sufficient to put
the item beyond literal infringement.
Q: What are the different kinds of exhaustion? (Godines v. CA, G.R. No. L‐ 97343, Sept.
13, 1993)
A:
International exhaustion – allows any party Doctrine of Equivalents – There is
to import into the national territory a infringement where a device
patented product from any other appropriates a prior invention by
country in which the product was incorporating its innovative concept
placed on the market by the patent and, although with some modification
holder or any authorized party. and change, performs substantially the
same function in substantially the same
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way to achieve substantially the same contributory infringer. It must be proven that the
result. (Ibid.) product can only be used for infringement
purposes. If it can be used for legitimate
Economic interest test – when the process‐ purposes, the action shall not prosper.
discoverer’s economic interest are
compromised, i.e., when others can What are the remedies of the owner of the
import the products that result from the patent against infringers?
process, such an act is said to be
prohibited. A:
Civil action for infringement – The owner
Does the use of a patented process by a third may bring a civil action with the
person constitute an infringement when the appropriate Regional Trial Court to
alleged infringer has substituted, in lieu of some recover from infringer the damages
unessential part of the patented process, a well‐ sustained by the former, plus attorney’s
known mechanical equivalent." fees and other litigation expenses, and
to secure an injunction for the
Yes, under the doctrine of mechanical protection of his rights.
equivalents, the patentee is protected from
colorable invasions of his patent under the guise Criminal action for infringement – If the
of substitution of some part of his invention by infringement is repeated, the infringer
some well known mechanical equivalent. It is an shall be criminally liable and upon
infringement of the patent, if the substitute conviction, shall suffer imprisonment of
performs the same function and was well known not less than six (6) months but not
at the date of the patent as a proper substitute for more than three (3) years and/or a fine
the omitted ingredient. (Gsell v. Yap‐Jue, G.R. No. not less than P100,000.00 but not more
L‐4720, Jan. 19, 1909) than P300,000.00
What is meant by “equivalent device”? Administrative remedy – Where the amount

of damages claimed is not less than
It is such as a mechanic of ordinary skill in P200,000.00, the patentee may choose
construction of similar machinery, having the to file an administrative action against
forms, specifications and machine before him, the infringer with the Bureau of Legal
could substitute in the place of the mechanism Affairs (BLA). The BLA can issue
described without the exercise of the inventive injunctions, direct infringer to pay
faculty. patentee damages, but unlike regular
courts, the BLA may not issue search
What is the “doctrine of file wrapper estoppel”? and seizure warrants or warrants of
arrest.
This doctrine balances the doctrine of
equivalents. Patentee is precluded from claiming What are the limitations to the civil/criminal
as part of patented product that which he had to action?
excise or modify in order to avoid patent office
rejection, and he may omit any additions that he A:
was compelled to add by patent office No damages can be recovered for acts of
regulations. infringement committed more than four
(4) years before the filing of the action
What is the “doctrine of contributory for infringement. (Sec. 79, IPC)
infringement”?
The criminal action prescribes in three
Aside from the infringer, anyone who actively years from the commission of the crime.
induces the infringement of a patent or provides (Sec. 84, IPC)
the infringer with a component of a patented
product or of a product produced because of a Who can file an action for infringement?
patented process knowing it to be especially
adapted for infringing the patented invention and A:
not suitable for substantial non‐infringing use is The patentee or his successors‐in‐ interest
liable jointly and severally with the infringer as a may file an action for infringement.
(Creser Precision Systems,

Inc. v. CA, G.R. No. 118708, Feb. 2, The Director of Legal Affairs may grant a
1998) license to exploit a patented invention,
even without the agreement of the
Any foreign national or juridical entity who patent owner, in favor of any person
meets the requirements of Sec. 3 and who has shown his capability to exploit
not engaged in business in the the invention (Sec. 93, IPC).
Philippines, to which a patent has been
granted or assigned, whether or not it is R.A. 9502 (Universally Accessible Cheaper
licensed to do business in the and Quality Medicines Act of 2008)
Philippines. (Sec. 77, IPC) however amended Sec. 93 so that it is
the Director General of the IPO who
What are the defenses in an action for may grant a license to exploit patented
infringement? invention under the grounds
enumerated therein.
A:
Invalidity of the patent; (Sec. 81, IPC); Note: Clarification either by legislation of
Any of the grounds for cancellation of judicial interpretation as to who has
patents: jurisdiction should be made to avoid
That what is claimed as the invention is confusion. (Salao, Essential of Intellectual
not new or patentable Property Law: a Guidebook on Republic
That the patent does not disclose the Act No. 8293 and Related Laws, 2008)
invention in a manner sufficiently
clear and complete for it to be What are the grounds for compulsory licensing
carried out by any person skilled in and the period for filing a petition?
the art; or
That the patent is contrary to public A:
order or morality. (Sec. 61, IPC) National emergency
LICENSING Where the public interest, at any time after

the grant of the patent
What are the modes of obtaining license to
exploit patent rights? Where a judicial or administrative body has
determined that the manner of
A: exploitation by the owner of the patent
Voluntary licensing (Sec. 85, IPC) and or his licensee is anti‐competitive at any
Compulsory licensing (Sec. 93, IPC) time after the grant of the patent
What is voluntary licensing? In case of public non‐commercial use of the

patent by the patentee, without
satisfactory reason at any time after the
The grant by the patent owner to a third person
of the right to exploit a patented invention. grant of the patent
What are the rights of a licensor in voluntary If the patented invention is not being worked
licensing? in the Philippines on a commercial scale,
although capable of being worked,
without satisfactory reason after the
In the absence of any provision to the contrary in
expiration of 4 years from the date of
the technology transfer arrangement, the grant of
filing of the application or 3 years from
a license shall not prevent the licensor from
the date of the patent whichever is
granting further licenses to third person nor from
later. (Sec. 93 in relation to Sec. 94)
exploiting the subject matter of the technology
transfer arrangement himself (Sec. 89, IPC).
Where the demand for patented drugs and
Who can grant a compulsory license? medicines is not being met to an
adequate extent and on reasonable
terms, as determined by the Secretary
A:
of the Department of Health (Sec. 10,
R.A. 9502)
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Grounds for cancellation of the compulsory J. ASSIGNMENT AND TRANSMISSION OF RIGHTS

license?
Q: What are the forms of assignment? A:
Ground for the grant of the compulsory
license no longer exists and is unlikely to Total – assignment of entire right, title or
recur; interest in and to the patent and the
invention covered thereby.
Licensee has neither begun to supply the Partial
domestic market nor made serious Separate rights – assignment of a
preparation therefore; specific right (ex: right to sell)b.
Pro Indiviso – assignment of an aliquot
Licensee has not complied with the part which results in co‐
prescribed terms of the license. ownership
Cezar works in a car manufacturing company How is the transfer of rights effected?
owned by Joab. Cezar is quite innovative and
loves to tinker with things. With the materials A:
and parts of the car, he was able to invent a gas‐
By inheritance or bequest
saving device that will enable cars to consume
License contract
less gas. Francis, a co‐worker, saw how Cezar
created the device and likewise, came up with a
What is the effect of an assignment of a patent?
similar gadget, also using scrap materials and
spare parts of the company. Thereafter, Francis
The assignment works as an estoppels by deed,
filed an application for registration of his device
preventing the assignor from denying the novelty
with the Bureau of Patents. Eighteen months
and utility of the patented invention when sued y
later, Cezar filed his application for the
the assignee for infringement.
registration of his device with the Bureau of
Patents.
Q What should be the form of an assignment?
Is the gas‐saving device patentable? Explain.
A:
In writing
Yes because it is new, it involves an inventive step
Acknowledged and certified before a notary
and it is industrially applicable.
public or other officer authorized to
perform notarial acts
Assuming that it is patentable, who is entitled to
Recorded in the IPO
the patent? What, if any, is the remedy of the
losing party?
What is the effect if the assignment was not
recorded in the IPO?
Francis is entitled to the patent, because he had
the earlier filing date. The remedy of Cezar is to
A deed of assignment affecting title shall be void
file a petition in court for the cancellation of the
as against any subsequent purchaser or
patent of Francis on the ground that he is the true
mortgagee for valuable consideration and without
and actual inventor, and ask for his substitution as
notice unless, it is so recorded in the Office, within
patentee. (2005 Bar Question)
three (3) months from the date of said
instrument, or prior to the subsequent purchase
Supposing Albert Einstein were alive today and
or mortgage. Even without recordal, the
he filed with the Intellectual Property Office
instruments are binding upon the parties.
(IPO) an application for patent for his theory of
relativity expressed in the formula E=mc2. The
May a licensee maintain a suit for infringement?
IPO disapproved Einstein's application on the
ground that his theory of relativity is not
A:
patentable. Is the IPO's action correct?
GR: Only the patentees, his heirs, assignee,
grantee or personal representatives may bring
Yes, the IPO’s action is correct. Section 22 of the
an action for infringement.
Intellectual Property Law expressly states that
discoveries, scientific theories and mathematical
methods are among those matters which are not
patentable. (2006 Bar Question)

XPN: If the licensing agreement provides that tradename in the Philippines and that it had
the licensee may bring an action for been using the same in its restaurant business.
infringement or if he was authorized to do so Shangrila Corporation counters that it is an
by the patentee through a special power of affiliate of an international organization which
attorney. has been using such logo and tradename
"Shangrila" for over 20 years. However, Shangrila
TRADEMARKS Corporation registered the tradename and logo
in the Philippines only after the suit was filed.
A. DEFINITION OF MARKS, COLLECTIVE MARKS,
TRADENAMES Which of the two corporations has a better right
to use the logo and the tradename? Explain.
What is a trademark and how does it differ from
a trade name? S Development Corporation has a better right to
use the logo and tradename, since it was the first
Any visible sign capable of distinguishing the to register the logo and tradename.
goods (trademark) or services (service mark) of an
enterprise. A trade name is a name or designation Alternative Answer:
identifying or distinguishing an enterprise. S Development Corporation has a better right to
use the logo and tradename, because its
TRADEMARK TRADE NAME certificate of registration upon which the
A natural or artificial infringement case is based remains valid and
Goods or services
offered by a proprietor
person who does subsisting for as long as it has not been cancelled.
or enterprise are
business and produces (Shangrila International Hotel Management v. CA,
designated by
or performs the goods G.R. No. 111580, June 21, 2001) (2005 Bar
trademark (goods) or
or services designated
Question)
by trademark or service
service marks (services).
mark. How does the international affiliation of
Refers to business and
Refers to the goods. Shangrila Corporation affect the outcome of the
its goodwill. dispute? Explain.
Acquired only by
Need not be registered.
registration. Since Shangrila Corporation is not the owner of
the logo and tradename but is merely an affiliate
Q: What is a collective mark? of the international organization which has been
using them it is not the owner and does not have
A "collective mark" or collective trade‐name" is a the rights of an owner. (Sec. 147, IPC)
mark or trade‐name used by the members of a
cooperative, an association or other collective Alternative Answer:
group or organization. (Sec. 40, R.A. 166) The international affiliation of Shangrila
Corporation shall have no effect on the outcome
Q: What are the functions of trademark? of the dispute. Section 8 of the Paris Convention
provides that "there is no automatic protection
A: afforded an entity whose tradename is alleged to
To point out distinctly the origin or be infringed through the use of that name as a
ownership of the articles to which it is trademark by a local entity." (Kabushi Kaisha
affixed. Isetan v. IAC, G.R. No. 75420, Nov. 15, 1991) (2005
Bar Question)
To secure to him who has been instrumental
in bringing into market a superior article What are the salient features of the Paris
or merchandise the fruit of his industry convention of trademarks?
and skill
A:
To prevent fraud and imposition. (Etepha v. National Treatment Principle – foreign
Director of Patents, G.R. No. L‐20635, nationals are to be given the same
Mar. 31, 1966) treatment in each of the member
countries as that country makes
S Development Corporation sued Shangrila available in its own citizens.
Corporation for using the "S" logo and the
tradename "Shangrila". The former claims that it
was the first to register the logo and the
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Right of Priority – any person who has duly Pilsen in Czechoslovakia. Pilsen is a primarily
filed registration for trademark shall geographically descriptive word, hence, non‐
enjoy a right of priority of 6 months registrable and not appropriable by any beer
(Rule 203, Trademark Rules) manufacturer (Asia Brewery, Inc. v. CA, G.R. No.
103543, July 5, 1993).
Protection against Unfair Competition
Who may file an opposition to trademark
Protection of Tradenames – protected in all registration and on what ground?
countries without obligation of filing or
registration. Any person who believes that he would be
damaged by the registration of a mark may, upon
Protection of Well‐Known Marks payment of the required fee and within thirty (30)
days after the publication referred to in
B. ACQUISITION OF OWNERSHIP OF MARK Subsection 133.2, file with the Office an
opposition to the application. (Sec. 134, IPC)
How are marks acquired?
Laberge, Inc., manufactures and markets after‐
Marks are acquired solely through registration. shave lotion, shaving cream, deodorant, talcum
(Sec. 122, IPC) powder and toilet soap, using the trademark
“PRUT”, which is registered with the Phil. Patent
What marks may be registered? Office. Laberge does not manufacture briefs and
underwear and these items are not specified in
Any word, name, symbol, emblem, device, figure, the certificate of registration. JG who
sign, phrase, or any combination thereof except manufactures briefs and underwear, wants to
those enumerated under Section 123, IPC. know whether, under our laws, he can use and
register the trademark “PRUTE” for his
What are the requirements for a mark to be merchandise. What is your advice?
registered?
Yes, he can use and register the trademark
A: “PRUTE” for his merchandise. The trademark
A visible sign (not sounds or scents); and registered in the name of Laberge Inc. covers only
Capable of distinguishing one’s goods and after‐shave lotion, shaving cream, deodorant,
services from another. talcum powder and toilet soap. It does not cover
briefs and underwear. The limit of the trademark
What is the doctrine of secondary meaning? is stated in the certificate issued to Laberge Inc. It
does not include briefs and underwear which are
This doctrine is to the effect that a word or phrase different products protected by Laberge’s
originally incapable of exclusive appropriation trademark. JG can register the trademark “PRUTE”
with reference to an article on the market, to cover its briefs and underwear (Faberge Inc. v.
because it is geographical or otherwise IAC, G.R. No. 71189, Nov. 4, 1992)
descriptive, may nevertheless be used exclusively (1994 Bar Question)
by one producer with reference to his article so
long as in that trade and to that branch of the ACQUISITION AND OWNERSHIP OF TRADE
purchasing public, the word or phrase has come NAME
to mean that the article was his product. (G. and
C. Merriam Co. v. Saalfield, 198 F. 369, 373, cited How are trade names acquired?
in Ang v. Teodoro, G.R. No. L‐48226, Dec. 14,
1942) Trade names or business names are acquired
through adoption and use. Registration is not
Is there an infringement of trademark when two required. (Sec. 165, IPC)
similar goods use the same words, “PALE
PILSEN”?
No, because “pale pilsen” are generic words

descriptive of the color (pale) and of a type of
beer (pilsen), which is a light bohemian beer with
strong hops flavor that originated in the City of

NON‐REGISTRABLE MARKS designate the goods or services in

everyday language and established
What marks may not be registered? trade practice
A: Consists exclusively that may serve in trade

Consists of immoral, deceptive or scandalous to designate the kind, quality, quantity,
matter or falsely suggest a connection intended purpose, value, geographical
with persons, institutions, beliefs, or origin, time or production of the goods
national symbols or rendering of the services, or other
characteristics of the goods or services
Consists of the flag or coat of arms or other
insignia of the Philippines or any of its Consists of shapes that may be necessitated
political subdivisions, or of any foreign by technical factors or by the nature of
nation the goods themselves or factors that
affect their intrinsic value
Consists of a name, portrait or signature
identifying a particular living individual Consists of color alone, unless defined by a
except by his written consent, or the given form; or
name, signature, or portrait of a
deceased President of the Philippines, Is contrary to public order or morality. (Sec.
during the life of his widow except by 123)
written consent of the widow
PRIOR USE OF MARK AS A REQUIREMENT
Identical with a registered mark belonging to
a different proprietor or a mark with an Is the prior use of the mark still a requirement
earlier filing or priority date, in respect for registration?
of:
The same goods or services, or No. Actual prior use in commerce in the
Closely related goods or services, or Philippines has been abolished as a condition for
If it nearly resembles such a mark as to the registration of a trademark. (RA 8293)
be likely to deceive or cause
confusion; When is non‐use excused?
Is identical with an internationally well‐ A:

known mark, whether or not it is If caused by circumstances arising
registered here, used for identical or independently of the will of the owner.
similar goods or services Lack of funds is not an excuse.
A use which does not alter its distinctive
Is identical with an internationally well‐ character though the use is different
known mark which is registered in the from the form in which it is registered.
Philippines with respect to non‐similar Use of mark in connection with one or more
goods or services. Provided, that the of the goods/services belonging to the
interests of the owner of the registered class in which the mark is registered.
mark are likely to be damaged by such The use of a mark by a company related to
use the applicant/registrant.
The use of a mark by a person controlled by
Is likely to mislead the public as to the the registrant. (Section 152, IPC)
nature, quality, characteristics or
geographical origin of the goods or
services
Consists exclusively of signs that are generic

for the goods or services that they seek
to identify
Consists exclusively of signs that have

become customary or usual to
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F. TEST TO DETERMINE CONFUSING SIMILARITY misleading similarity in general appearance, not

BETWEEN MARKS similarity of trademarks. (Converse Rubber Co. v.
Jacinto Rubber & Plastics Co., G.R. Nos. 27425,
What are the tests in determining whether there 30505, Apr. 28, 1980) (1996 Bar Question)
is a trademark infringement?
What is the so‐called “related goods principle”?
A:
Dominancy test – Focuses on the similarity of Goods are related when they; 1) belong to the
the prevalent features of the competing same class or have the same descriptive
marks. If the competing trademark properties; 2) when they possess the same
contains the main or essential or physical attributes or essential characteristics with
dominant features of another, and reference to their form, composition, texture or
confusion is likely to result, quality.
infringement takes place. (Asia Brewery
v. CA, G.R. No. 103543, 5 July 1993) What is the rule of idem sonans?
Totality or holistic test – Confusing similarity Two names are said to be "idem sonantes" if the
is to be determined on the basis of attentive ear finds difficulty in distinguishing them
visual, aural, connotative comparisons when pronounced. (Martin v. State, 541 S.W. 2d
and overall impressions engendered by 605)
the marks in controversy as they are
encountered in the marketplace. Note: Similarity of sound is sufficient to rule that the
two marks are confusingly similar when applied to
Note: The dominancy test only relies on visual merchandise of the same descriptive properties.
comparisons between two trademarks whereas the (Marvex Commercial v. Director of Patent, G.R. No. L‐
totality or holistic test relies not only on the visual 19297, Dec. 22, 1966)
but also on the aural and connotative comparisons
and overall impressions between the two What are the types of confusion that arise from
trademarks. (Societe Des Produits Nestl, S.A. v. CA, the use of similar or colorable imitation marks?
G.R. No. 112012, Apr. 4, 2001)
A:
N Corporation manufactures rubber shoes under Confusion of goods (product confusion); and
the trademark “Jordann” which hit the Philippine Confusion of business (source or origin
market in 1985, and registered its trademark confusion). (McDonald’s Corporation v.
with the Bureau of Patents, Trademarks and L.C. Big Mak Burger, Inc., et al., G.R. No.
Technology in 1990. PK Company also 143993, Aug. 18, 2004)
manufactures rubber shoes with the trademark
“Javorski” which it registered with BPTTT in Note: While there is confusion of goods when the
1978. In 1992, PK Co adopted and copied the products are competing, confusion of business exists
design of N Corporation’s “Jordann” rubber when the products are non‐competing but related
shoes, both as to shape and color, but retained enough to produce confusion of affiliation.
the trademark “Javorski” on its products. May PK
Company be held liable to N Co? Explain. Q: What is colorable imitation?
PK Co may be liable for unfairly competing against Such a close or ingenious imitation as to be
N Co. By copying the design, shape and color of N calculated to deceive ordinary persons, or such a
Corporation’s “Jordann” rubber shoes and using resemblance to the original as to deceive an
the same in its rubber shoes trademarked ordinary purchaser giving such attention as a
“Javorski,” PK is obviously trying to pass off its purchaser usually gives, as to cause him to
shoes for those of N. It is of no moment that the purchase the one supposing it to be the other.
trademark “Javorski” was registered ahead of the (Societe des Produits Nestlé, S.A. v. CA, G.R. No.
trademark “Jordann.” Priority in registration is not 112012, Apr. 4, 2001)
material in an action for unfair competition as
distinguished from an action for infringement of
trademark. The basis of an action for unfair
competition is confusing and

WELL‐KNOWN MARKS What are the rights of a registered mark owner?
What constitutes an internationally well‐ known A:

mark? Protection against reproduction, or imitation
or unauthorized use of the mark
A: (infringement of mark)
Considered by the competent authority of To stop entry of imported merchandise into
the Philippines to be “well‐known” the country containing a mark identical
international and in the Philippines as or similar to the registered mark
the mark of a person other than the
applicant or registrant To transfer or license out the mark.
Need not be used or registered in the

Philippines I. USE BY THIRD PARTIES OF NAMES, ETC.
SIMILAR TO REGISTERED MARK
Need not be known by the public at large but
only by relevant sector of the public. What is the effect of use of Indications by third
parties for purposes other than those for which
What does the law provide as regards the mark is used?
internationally‐well known marks?
Registration of the mark shall not confer on the
A: registered owner the right to preclude third
GR: Prohibition on subsequent registration parties from using bona fide their names,
does not include services and goods of addresses, pseudonyms, a geographical name, or
different nature or kind. exact indications concerning the kind, quality,
quantity, destination, value, place of origin, or
XPN: time of production or of supply, of their goods or
If the internationally well‐known mark is not services.
registered in the Philippines, the
application for registration of a INFRINGEMENT AND REMEDIES
subsequent or similar mark can be
rejected only if the goods or services Q: What is trademark infringement?
specified in the application are similar
to those of the internationally well‐ The use without consent of the trademark owner
known mark of any a) reproduction, b) counterfeit, c) copy or d)
colorable imitation of any registered mark or
If the internationally well‐known mark is tradename in connection with the sale, offering
registered in the Philippines, the for sale, or advertising of any goods, business or
application for registration of a services on or in connection with which such use
subsequent or similar mark can be is likely to cause confusion or mistake or to
refused even if the goods or services deceive purchasers or others as to the source or
specified in the application are not origin of such goods or services, or identity of
identical or similar to those of the such business; or reproduce, counterfeit, copy or
internationally well‐known mark colorably imitate any such mark or tradename
and apply such reproduction, counterfeit, copy or
RIGHTS CONFERRED BY REGISTRATION colorable limitation to labels, signs, prints,
packages, wrappers, receptacles or
What is the duration of a certificate of trademark advertisements intended to be used upon or in
registration? connection with such goods, business or services
(Esso Standard Eastern v. CA, G.R. No. L‐29971,
10 years, renewable for a period of another 10 Aug. 31, 1982)
years. Each request for renewal must be made
within 6 months before or after the expiration of
the registration.
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What are the elements to be established in presumed if a letter R within a circle is

trademark infringement? appended) and stop him permanently
from using the mark.
A:
The validity of the mark Criminal — the owner of the trademark may
The plaintiff’s ownership of the mark ask the court to issue a search warrant
The use of the mark or its colorable imitation and in appropriate cases, remedies
by the alleged infringer results available shall also include the seizure,
in “likelihood of confusion.” (McDonald’s forfeiture and destruction of the
Corporation v. L.C. Big Mak Burger, Inc., infringing goods and of any materials
G.R. No. 143993, Aug 18, 2004) and implements the predominant use of
which has been in the commission of
What is meant by non‐competing goods? the offense.
Those which, though they are not in actual Administrative — This remedy is the same as
competition, are so related to each other that it in patent infringement cases. If the
might reasonably be assumed that they originate amount of damages claimed is not less
from one manufacturer. than P200,000.00, the registrant may
Non‐competing goods may also be those which, choose to seek redress against the
being entirely unrelated, could not reasonably be infringer by filing an administrative
assumed to have a common source. In the case of action against the infringer with the
related goods, confusion of business could arise Bureau of Legal Affairs.
out of the use of similar marks; in the latter case
of non‐related goods, it could not. The vast How is the amount of damages in a civil action
majority of courts today follow the modern theory for infringement ascertained?
or concept of "related goods" which the court has
likewise adopted and uniformly recognized and The owner of a trademark which has been
applied. (Esso Standard Eastern, Inc. v. CA, G.R. infringed is entitled to actual damages:
No. L‐29971, Aug. 31, 1982)
The reasonable profit which the complaining
Is there infringement even if the goods are non‐ party would have made, had the
competing? defendant not infringed his said rights;
or
A: The profit which the defendant actually
GR: No. made out of infringement; or
The court may award as damages a
XPN: If it prevents the natural expansion of his reasonable percentage based upon the
business and, second, by having his business amount of gross sales of the defendant
reputation confused with and put at the mercy of the value of the services in
of the second user. (Ang v. Teodoro, G.R. No. connection with which the mark or
L‐48226, Dec. 14, 1942) trade name was issued.
What are the remedies of the owner of the What court has jurisdiction over violations of
trademark against infringers? intellectual property rights?
A: It is properly lodged with the Regional Trial Court

Civil — both civil and criminal actions may be even if the penalty therefore is imprisonment of
filed with the Regional Trial Courts. The less than six years, or from 2 to 5 years and a fine
owner of the registered mark may ask ranging from P50,000 to P200,000.
the court to issue a preliminary
injunction to quickly prevent infringer Note: R.A. 8293 and R.A. 166 are special laws
from causing damage to his business. conferring jurisdiction over violations of intellectual
Furthermore, the court will require property rights to the Regional Trial Court. They
infringer to pay damages to the owner should therefore prevail over R.A. No. 7691, which is
of the mark provided defendant is a general law. (Samson v. Daway, G.R. No. 160054‐
shown to have had notice of the 55, July 21, 2004)
registration of the mark (which is

What are the limitations on the actions for Q: Who are guilty of unfair competition?
infringement?
A:
A: Any person, who is selling his goods and
Right of prior user – registered mark shall be gives them the general appearance of
without affect against any person who, goods of another manufacturer or
in good faith, before filing or priority dealer, either as to the goods
date, was using the mark for purposes themselves or in the wrapping of the
of his business. (Sec 159.1, IPC) packages in which they are contained,
or the devices or words thereon, or in
Relief against publisher – injunction against any other feature of their appearance,
future printing against an innocent which would be likely to influence
infringer who is engaged solely in the purchasers to believe that the goods
business of printing the mark. (Sec. offered are those of a manufacturer or
159.2, IPC) dealer, other than the actual
manufacturer or dealer, or who
Relief against newspaper – injunction against otherwise clothes the goods with such
the presentation of advertising matter in appearance as shall deceive the public
future issues of the newspaper, and defraud another of his legitimate
magazine or in electronic trade, or any subsequent vendor of such
communications in case the goods or any agent of any vendor
infringement complained of is contained engaged in selling such goods with a like
in or is part of paid advertisement in purpose;
such materials. (Sec. 159.3, IPC)
Any person who by any artifice, or device, or
UNFAIR COMPETITION who employs any other means
calculated to induce the false belief that
What distinguishes infringement of trademark such person is offering the services of
from unfair competition? another who has identified such
services in the mind of the public; or
A:
INFRINGEMENT OF UNFAIR Any person who shall make any false
TRADEMARK COMPETITION statement in the course of trade or who
Unauthorized use of a The passing off of one’s shall commit any other act contrary to
goods as those of good faith of a nature calculated to
trademark.
another. discredit the goods, business or services
Fraudulent intent is Fraudulent intent is of another. (Sec. 168.3)
unnecessary. essential.
Prior registration of the Registration is not Is the law on unfair competition broader than
trademark is a necessary. (Del Monte the law on trademark?
prerequisite to the Corp. v. CA, G.R. No.
action. 78325, Jan. 23, 1990) Yes. For the latter (trademark infringement) is
more limited but it recognizes a more exclusive
What is the right protected under unfair right derived from the trademark adoption and
competition? registration by the person whose goods or
business is first associated with it. Hence, even if
A person who has identified in the mind of the one fails to establish his exclusive property right
public the goods he manufactures or deals in, his to a trademark, he may still obtain relief on the
business or services from those of others, ground of his competitor’s unfairness or fraud.
whether or not a registered mark is employed, has Conduct constitutes unfair competition if the
a property right in the goodwill of the said goods, effect is to pass off on the public the goods of one
business or services so identified, which will be man as the goods of another. (Mighty Corporation
protected in the same manner as other property v. E. & J. Gallo Winery, G.R. No. 154342, July 14,
rights. (Sec. 168.1, IPC) 2004)
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What are the elements of an action for unfair What are the limitations on use of trade name or
competition? business name?
A: A person may not:

Confusing similarity in the general
appearance of the goods; and Use any name or designation contrary to
public order or morals
Note: The confusing similarity may or may
not result from similarity in the marks, but Use a name if it is liable to deceive trade
may result from other external factors in circles or the public as to the nature of
the packaging or presentation of the the enterprise identified by that name.
goods. (Sec. 165.1, IPC)
Intent to deceive the public and defraud a Subsequently use a trade name likely to
competitor. mislead the public as a third party. (Sec.
165.2, b, IPC)
Note: The intent to deceive and defraud
may be inferred from the similarity in Copy or simulate the name of any domestic
appearance of the goods as offered for product (for imported products).
sale to the public. Actual fraudulent intent
need not be shown. (McDonald’s
Copy or simulate a mark registered in
Corporation v. L.C. Big Mak Burger, Inc., et
al., G.R. No. 143993, Aug. 18, 2004) accordance with the provisions of IPC
(for imported products).
The NBI found that SG Inc. is engaged in the
reproduction and distribution of counterfeit Use mark or trade name calculated to induce
"playstation games" and thus applied with the the public to believe that the article is
Manila RTC warrants to search respondent's manufactured in the Philippines, or that
premises in Cavite. RTC granted such warrants it is manufactured in any foreign
and thus, the NBI served the search warrants on country or locality other than the
the subject premises. SG Inc. questioned the country or locality where it is in fact
validity of the warrants due to wrong venue manufactured.
since the RTC of Manila had no jurisdiction to
issue a search warrant enforceable in Cavite. Is Note: Items 4, 5 and 6 only applies to
imported products and those imported
the contention of SG Inc. correct?
articles shall not be admitted to entry at
any customhouse of the Philippines (Sec.
No, unfair competition is a transitory or 166, IPC).
continuing offense under Section 168 of Republic
Act No. 8293. As such, petitioner may apply for a
How is the change in the ownership of a trade
search warrant in any court where any element of
name made?
the alleged offense was committed, including any
of the courts within Metro Manila and may be
validly enforced in Cavite. (Sony Computer It shall be made with the transfer of the
Entertainment Inc. v. Supergreen Inc. G.R. No. enterprise or part thereof identified by that name.
161823, Mar. 22, 2007) (Sec. 165.4, IPC)
TRADE NAMES OR BUSSINESS NAMES COLLECTIVE MARKS
Q: What is a trade name or business name? What is a collective mark?
Any individual name or surname, firm name, A "collective mark" or “collective trade‐name" is a
device nor word used by manufacturers, mark or trade‐name used by the members of a
industrialists, merchants, and others to identify cooperative, an association or other collective
their businesses, vocations or occupants group or organization. (Sec. 40, R.A. 166)
(Converse rubber Corp. vs. Universal Rubber
Products, GR No. L‐27425, L‐30505, April 28,
1980).

What should an application for registration of a If its registration was obtained

collective mark contain? fraudulently or contrary to the
provisions of the IPC;
A: If the registered mark is being used by,
The application shall designate the mark as a or with the permission of, the
collective mark registrant so as to misrepresent the
Accompanied by a copy of the agreement, if source of the goods or services on
any, governing the use of the collective or in connection with which the
mark (Sec. 167.2, IPC) mark is used;
Non‐use of the mark within the
What are the grounds for the cancellation of Philippines, without legitimate
collective marks? reason, for an uninterrupted period
of 3 years.
A:
The Court shall cancel the registration of a IV. COPYRIGHTS
collective mark if the person requesting
the cancellation proves that only the Q: What is copyright?
registered owner uses the mark,
A right over literary and artistic works which are
Or that he uses or permits its use in original intellectual creations in the literary and
contravention of the agreements artistic domain protected from the moment of
referred to in Subsection 166.2, creation. (Sec. 171.1, IPC)
Or that he uses or permits its use in a BASIC PRINCIPLES

manner liable to deceive trade circles or
the public as to the origin or any other What are the elements of copyrightability?
common characteristics of the goods or
services concerned (Sec 167.3).
A:
Note: The registration of a collective mark, or an Originality – Must have been created by the
application therefor shall not be the subject of a author’s own skill, labor, and judgment
license contract. without directly copying or evasively
imitating the work of another. (Ching
N. CRIMINAL PENALTIES Kian Chuan v. CA, G.R. No. 130360, Aug.
15, 2001)
What are the criminal penalties for unfair
competition, infringement, false designation of
Expression – Must be embodied in a medium
origin and false representations?
sufficiently permanent or stable to
permit it to be perceived, reproduced or
A penalty of imprisonment from 2 years to 5and a communicated for a period more than a
fine ranging from P50,000 to P200,000 (Sec. 170, transitory duration.
IPC.)
What are the elements of originality?
Q: Can trademark registration be cancelled?
A:
Yes, by any person who believes that he will be
It is independently created by the author,
damaged by the registration of the mark:
and
It possesses some minimal degree of
Within 5 years, from the date of the creativity
registration of the mark; or
When does copyright vest?
At any time;
If the registered mark becomes the
Works are protected from the time of their
generic name for the goods or
creation, irrespective of their mode or form of
services, or a portion thereof, for
expression, as well as of their content, quality and
which it is registered;
purpose.
If the mark has been abandoned;
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B. COPYRIGHTABLE WORKS P&D was granted a copyright on the technical

drawings of light boxes as "advertising display
Q: What are copyrightable works? units". SMI, however, manufactured similar or
identical to the light box illustrated in the
A: technical drawings copyrighted by P&D for
Literary and Artistic Works leasing out to different advertisers. Was this an
BOLD‐MAN‐GAS‐PAP‐CO infringement of P&D’s copyright over the
technical drawings?
Books, pamphlets, articles and other
writings No, P&D’s copyright protection extended only to
Lectures, sermons, addresses, the technical drawings and not to the light box
dissertations prepared for Oral itself. The light box was not a literary or artistic
delivery, whether or not reduced in piece which could be copyrighted under the
writing or other material form copyright law. If SMI reprinted P&D’s technical
Letters drawings for sale to the public without license
Dramatic, choreographic works from P&D, then no doubt they would have been
Musical compositions guilty of copyright infringement. Only the
Works of Art expression of an idea is protected by copyright,
Periodicals and Newspapers not the idea itself. If what P&D sought was
Works relative to Geography, exclusivity over the light boxes, it should have
topography, architecture or science instead procured a patent over the light boxes
Works of Applied art itself. (Pearl and Dean Inc. v. Shoe Mart Inc., GR
Works of a Scientific or technical No. 148222, Aug. 15, 2003)
character
Photographic works What is the difference between collection of
Audiovisualworks and cinematographic work and collective work?
works
A:
Pictorialillustrations and COLLECTION OF WORK COLLECTIVE WORK
advertisements
It is not necessary that There is an agreement
there is an agreement. whereby the authors
Computer programs; and
Individual contribution bound themselves not to
Other literary, scholarly, scientific and is capable of copyright be identified with the
artistic works. (Sec. 172.1, IPC) protection. work.
Derivative Works
Juan Xavier wrote and published a story similar
to an unpublished copyrighted story of Manoling
Dramatizations,translations,
Santiago. It was, however, conclusively proven
adaptations,abridgements, that Juan Xavier was not aware that the story of
arrangements, and other Manoling Santiago was protected by copyright.
alterations of literary or artistic Manoling Santiago sued Juan Xavier for
works; infringement of copyright. Is Juan Xavier liable?
Collections of literary, scholarly, or Yes. Juan Xavier is liable for infringement of
artistic works and compilations of copyright. It is not necessary that Juan Xavier is
data and other materials which are aware that the story of Manoling Santiago was
original by reason of the selection protected by copyright. The work of Manoling
or coordination or arrangement of Santiago is protected from the time of its creation.
their contents. (Sec. 173) (1998 Bar Question)
Note: Derivative Works shall be protected
Note: There will still be originality sufficient to
as new works, provided that such new
warrant copyright protection if “the author, through
work shall not affect the force of any
his skill and effort, has contributed a distinguishable
subsisting copyright upon the original
variation from the older works.” In such a case, of
works employed or any part thereof, or be
course, only those parts which are new are protected
construed to imply any right to such use of
by the new copyright. Hence, in such a case, there is
the original works, or to secure or extend
no case of infringement. Juan Xavier is
copyright in such original works. (Sec.
173.2, IPC)

no less an “author” because others have preceded prosecutor to dismiss the case for lack of
him. probable cause. Was the decision of the DOJ
Secretary correct?
NON‐COPYRIGHTABLE WORKS
Yes, the format of a show is not copyrightable.
What are the subjects not protected? The copyright law enumerates the classes of work
entitled to copyright protection.The format or
A: mechanics of a television show is not included in
Idea, procedure, system, method or the list of protected works. For this reason, the
operation, concept, principle, discovery protection afforded by the law cannot be
or mere data as such extended to cover them. Copyright, in the strict
News of the day and other items of press sense of the term, is purely a statutory right. It is a
information new or independent right granted by the statute,
Any official text of a legislative, and not simply a pre‐existing right regulated by
administrative or legal nature, as well as the statute. Being a statutory grant, the rights are
any official translation thereof only such as the statute confers, and may be
Pleadings obtained and enjoyed only with respect to the
Decisions of courts and tribunals – this refers subjects and by the persons, and on terms and
to original decisions and not to conditions specified in the statute. The copyright
annotated decisions such as the SCRA or does not extend to the general concept or format
SCAD as these already fall under the of its dating game show. (Joaquin v. Drilon, G.R.
classification of derivative works, hence No. 108946, Jan. 28, 1999)
copyrightable
Any work of the Government of the Rural is a certified public utility providing
Philippines telephone service to several communities in
Manila. It obtains data for the directory from
GR: Conditions imposed prior the subscribers, who must provide their names and
approval of the government agency or addresses to obtain telephone service. Feist
office wherein the work is created shall Publications, Inc., is a publishing company that
be necessary for exploitation of such specializes in area‐wide telephone directories
work for profit. Such agency or office, covering a much larger geographic range than
may, among other things, impose as directories such as Rural's. Feist extracted the
condition the payment of royalties. listings it needed from Rurals’s directory without
its consent. Are directories copyrightable?
XPN: No prior approval or conditions
shall be required for the use of any No, directories are not copyrightable and
purpose of statutes, rules and therefore the use of them does not constitute
regulations, and speeches, lectures, infringement. The Intellectual Property Code
sermons, addresses, and dissertations, mandates originality as a prerequisite for
pronounced, read, or rendered in courts copyright protection. This requirement
of justice, before administration necessitates independent creation plus a
agencies, in deliberative assemblies and modicum of creativity. Since facts do not owe
in meetings of public character. (Section their origin to an act of authorship, they are not
176, IPC) original, and thus are not copyrightable. A
compilation is not copyrightable per se, but is
TV programs, format of TV programs copyrightable only if its facts have been "selected,
(Joaquin v. Drilon, G.R. No. 108946, Jan. coordinated, or arranged in such a way that the
28, 1999) resulting work as a whole constitutes an original
Systems of bookkeeping; and work of authorship." Thus, the statute envisions
Statutes. that some ways of selecting, coordinating, and
arranging data are not sufficiently original to
BJ Productions, Inc. (BJPI) is the holder/grantee trigger copyright protection. Even a compilation
of a copyright of “Rhoda and Me”, a dating game that is copyrightable receives only limited
show aired from 1970 to 1977. Subsequently, protection, for the copyright does not extend to
however, RPN aired the game show “It’s a Date”, facts contained in the compilation. (Feist
which was produced by IXL Productions, Inc. Publications, Inc. v. Rural Telephone Service Co.,
(IXL). As such, an information for copyright 499 U.S. 340)
infringement was filed against RPN. The DOJ
Secretary directed the
ACADEMICS CHAIR: LESTER JAY ALAN E. FLORES II
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D. RIGHTS OF A COPYRIGHT OWNER own creation or in a distorted

version of his work. (Sec.193, IPC)
Q: What is the presumption of authorship?
Droit de suite (Right to proceeds in
The natural person whose name is indicated on a subsequent transfers or follow up rights)
work in the usual manner as the author shall, in – This is an inalienable right of the
the absence of proof to the contrary, presumed to author or his heirs to receive to the
be the author of the work. This is applicable even extent of 5% of the gross proceeds of
if the name is a pseudonym, where the the sale or lease of a work of painting or
pseudonym leaves no doubt as to identity of the sculpture or of the original manuscript
author. (Sec. 219.1, IPC) of a writer or composer, subsequent to
its first disposition by the author.
The person or body corporate, whose name
appears on the audio‐visual work in the usual The following works are not covered:
manner shall, in the absence of proof to the Prints
contrary, be presumed to be the maker of said Etchings
work. (Sec. 219.2, IPC) Engravings
Works of applied art
Q: What are the rights of an author? Similar works wherein the author
primarily derives gain from the
A: proceeds of reproductions. (Sec.
Economic rights – The right to carry out, 201, IPC)
authorize or prevent the following acts:
ABC is the owner of certain musical compositions
Reproduction of the work or substantial among which are the songs entitled: "Dahil Sa
portion thereof Iyo", "Sapagkat Ikaw Ay Akin," "Sapagkat Kami
Carry‐outderivativework Ay Tao Lamang" and "The Nearness Of You.”
(dramatization,translation, Soda Fountain Restaurant hired a combo with
adaptation,abridgement, professional singers to play and sing musical
arrangement or other compositions to entertain and amuse customers.
transformation of the work) They performed the above‐ mentioned
First distribution of the original and compositions without any license or permission
each copy of the work by sale or from ABC to play or sing the same. Accordingly,
other forms of transfer of ABC demanded from Soda Fountain payment of
ownership the necessary license fee for the playing and
Rental right singing of aforesaid compositions but the
Public display demand was ignored. ABC filed an infringement
Public performance case against Soda Fountain. Does the playing and
Other communications to the public. singing of musical compositions inside an
establishment constitute public performance for
Moral rights – For reasons of professionalism profit?
and propriety, the author has the right:
To require that the authorship of the Yes. The patrons of the Soda Fountain pay only for
works be attributed to him the food and drinks and apparently not for
(attribution right) listening to the music, but the music provided is
To make any alterations of his work for the purpose of entertaining and amusing the
prior to, or to withhold it from customers in order to make the establishment
publication more attractive and desirable. For the playing and
Right to preserve integrity of work, singing the musical compositions involved, the
object to any distortion, mutilation combo was paid as independent contractors by
or other modification which would Soda Fountain. It is therefore obvious that the
be prejudicial to his honor or expenses entailed thereby are added to the
reputation; and overhead of the restaurant which are either
To restrain the use of his name with eventually charged in the price of the food and
respect to any work not of his drinks or to the overall total of additional income
produced by the bigger volume of business which
the entertainment was programmed to attract.
Consequently, it is beyond question that the

playing and singing of the combo in defendant‐ Note: The person/s to be charged with the
appellee's restaurant constituted performance for posthumous enforcement of moral rights shall be
profit. (FILSCAP v. Tan, G.R., No. L‐36402, Mar. 16, named in writing to be filed with the National
1987) Library. In default of such person or persons, such
enforcement shall devolve upon either the author's
Malang Santos designed for Ambassador Neri for heirs, and in default of the heirs, the Director of the
National Library. (ibid.)
his personal christmas greetings for the year
1959 a christmas card depicting a Philippine rural
Christmas time scene. The following year Q: What are the exceptions to moral rights?
McCullough Printing Company, without the
knowledge and authority of Santos, displayed A:
the very design in its album of Christmas cards Absent any special contract at the time
and offered it for sale. Santos filed for copyright creator licenses/permits another to use
infringement contending that the publication of his work, the following are deemed not
his design was limited as it was intended only for to contravene creator’s moral rights,
Ambassador Neri’s use, hence, it could not be provided they are done in accordance
used for public consumption. Is there copyright with reasonable customary standards or
infringement? requisites of the medium:
Editing
No. If there were a condition that the cards are to Arranging
be limitedly published, then Ambassador Neri Adaptation
would be the aggrieved party, and not Santos. Dramatization
And even if there was such a limited publication Mechanical and electric reproduction
or prohibition, the same was not shown on the
face of the design. When the purpose is a limited Complete destruction of work
publication, but the effect is general publication, unconditionally transferred by creators.
irrevocable rights thereupon become vested in (Sec. 197, IPC)
the public, in consequence of which enforcement
of the rights under a copyright becomes Can moral rights be waived?
impossible. (Malang v. McCullough Printing
Company, G.R. No. L‐19439, Oct. 31, 1964) A:
GR: Moral rights can be waived in writing,
May an author be compelled to perform his expressly so stating such waiver.
contract?
XPN: Even in writing, waiver is not valid if:
An author cannot be compelled to perform his Use the name of the author, title of his work,
contract to create a work or for the publication of or his reputation with respect to
his work already in existence. However, he may be any version/adaptation of his work,
held liable for damages for breach of such which because of alterations,
contract. (Sec. 195, IPC) substantially tend to injure
literary/artistic reputation of another
What is the nature of moral rights? author
These are personal rights independent from the Use name of author in a work that he did not
economic rights. Being a personal right, it can create
only be given to a natural person. Hence, even if
he has licensed or assigned his economic rights, What are the neighboring rights?
he continues to enjoy the above‐mentioned
moral rights. (Amador, Intellectual Property These are the rights of performers, producers of
Fundamentals, 2007) sound recording and broadcasting organizations.
What is the term of moral rights?
It shall last during the lifetime of the author and

for fifty (50) years after his death and shall not be
assignable or subject to license. (Sec. 198, IPC)
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Q: What is the scope of a performer’s rights? When are performers entitled to additional
remuneration on their performance?
Performers shall enjoy the following exclusive
rights: The performer shall be entitled to an additional
remuneration equivalent to at least 5% of the
As regards their performances, the right of original compensation he received for the first
authorizing: communication or broadcast in every
The broadcasting and other communication to the public or broadcast of a
communication to the public of performance subsequent to the first
their performance; and communication or broadcast, unless otherwise
The fixation of their unfixed provided in the contract. (Sec. 206, IPC)
performance.
What is the scope of the rights of producers
The right of authorizing the direct or indirect on sound recordings?
reproduction of their performances
fixed in sound recordings, in any manner Producers of sound recordings shall enjoy the
or form; following exclusive rights:
The right to authorize the direct or indirect
The right of authorizing the first public reproduction of their sound recordings,
distribution of the original and copies of in any manner or form; the placing of
their performance fixed in the sound these reproductions in the market and
recording through sale or rental or other the right of rental or lending
forms of transfer of ownership;
The right to authorize the first public
The right of authorizing the commercial distribution of the original and copies of
rental to the public of the original and their sound recordings through sale or
copies of their performances fixed in rental or other forms of transferring
sound recordings, even after ownership; and
distribution of them by, or pursuant to
the authorization by the performer; and The right to authorize the commercial rental
to the public of the original and copies
The right of authorizing the making available of their sound recordings, even after
to the public of their performances fixed distribution by them by or pursuant to
in sound recordings, by wire or wireless authorization by the producer. (Sec. 208,
means, in such a way that members of IPC)
the public may access them from a
place and time individually chosen by Note: Fair use and limitations to copyrights shall
them. (Sec. 203, IPC) apply mutatis mutandis to performers. (Sec. 210,
IPC)
What are the moral rights of performers?
What is the scope of the rights of broadcasting
The performer, shall, as regards his live aural organizations?
performances or performances fixed in sound
recordings, have the right to claim to be identified Broadcasting organizations shall enjoy the
as the performer of his performances, except exclusive right to carry out, authorize or prevent
where the omission is dictated by the manner of any of the following acts:
the use of the performance, and to object to any The rebroadcasting of their broadcasts
distortion, mutilation or other modification of his The recording in any manner, including the
performances that would be prejudicial to his making of films or the use of video tape,
reputation. of their broadcasts for the purpose of
communication to the public of
Q: When are performer’s rights lost? television broadcasts of the same
The use of such records for fresh
Once a performer has authorized broadcasting or transmissions or for fresh recording.
fixation of his performance. (Sec 205, IPC) (Sec. 211, IPC)
Note: Fair use and limitations to copyrights shall

apply mutatis mutandis to performers. (Ibid.)

Q: When are neighboring rights not applicable? irrespective of the nationality or

residence of the authors. (Sec. 221,
A: IPC)
Exclusive use of a natural person for own
personal purposes For perfomers
Short excerpts for reporting current events Performers who are nationals of the
Sole use for the purpose of teaching or for Philippines;
scientific research Performers who are not nationals of the
Fair use of the broadcast Philippines but whose
performances:
What are the term of protection given to Take place in the Philippines; or
performers, producers and broadcasting Are incorporated in sound
organizations? recordings that are protected
under IPC; or
A: Which has not been fixed in sound
For performances not incorporated in recording but are
recordings, 50 years from the end of the carried by broadcast
year in which the performance took qualifying for protection
place; and under IPC. (Sec. 222, IPC)
For sound or image and sound recordings Of sound recordings

and for performances incorporated Sound recordings the producers of
therein, 50 years from the end of the which are nationals of the
year in which the recording took place. Philippines; and
Sound recordings that were first
In case of broadcasts, the term shall be 20 published in the Philippines. (Sec.
years from the date the broadcast took 223, IPC)
place. The extended term shall be
applied only to old works with subsisting For broadcast
protection under the prior law. (Sec. Broadcasts of broadcasting
215, IPC) organizations the headquarters of
which are situated in the
To whom are the rights granted to copyrightable Philippines; and
works applicable (points of attachment)? Broadcasts transmitted from
transmitters situated in the
A: Philippines. (Sec. 224, IPC)
For literary and artistic works and derivative
works Note: The provisions of IPC shall also apply to
Works of authors who are nationals of, works, performers, producers of sound
or have their habitual residence in, recordings and broadcasting organizatins that
the Philippines; are to be protected by virtue of and in
Audio‐visual works the producer of accordance with any international convention
or other international agreement to which the
which has his headquarters or
Philippines is a party. (Sec. 221.2 and 224.2,
habitual residence in the
IPC)
Philippines;
Works of architecture erected in the
E. RULES ON OWNERSHIP OF COPYRIGHT
Philippines or other artistic works
incorporated in a building or other
Q: Who owns copyright?
structure located in the Philippines;
Works first published in the Philippines;
A:
and
Author – Original literary and artistic works.
Works first published in another country
(Sec. 178.1, IPC)
but also published in the
Philippines within thirty days,
Co‐authors – Works of joint authorship; in
the absence of agreement, their rights
shall be governed by the rules on co‐
ownership.
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Q: Distinguish collective work from joint work.

Note: If work of joint authorship consists
of parts that can be used separately, then A:
the author of each part shall be the
original owner of the copyright in the part COLLECTIVE WORK JOINT WORK
that he has created. (Sec. 178.2, IPC) Elements remain Separate elements merge
unintegrated and
into a unified whole.
In the course of employment, the copyright disparate.
shall belong to: Work created by 2 or
more persons at the
The employee, if not a part of his initiative and under the Work prepared by 2 or
regular duties even if the direction of another
more authors with the
employee uses the time, facilities with
intention that their
and materials of the employer. the understanding that
contributions be merged
(Sec. 178.3, IPC) it will be disclosed by
into inseparable or
The employer, if the work is the result the latter under his
independent parts of the
of the performance of his own name and that of
unitary whole.
regularly‐assigned duties, unless the contributions of
there is an agreement, express or natural persons will
NOT be identified
implied, to the contrary. (ibid.)
Each author shall enjoy Joint authors shall be co‐
copyright to his own owners. Co‐ownership
The person who commissioned the work
contribution shall apply.
shall own the work but the copyright
The work will be
thereto shall remain with the creator –
attributed to the
In cases of work pursuant to
person under whose Joint authors shall be
commission, unless there is a written
initiative and direction both entitled to the
stipulation to the contrary. (Sec. 178.4,
it was created unless acknowledgment as
IPC) the contributor authors of the work.
expressly reserves his
GR: Producer, the author of the scenario, the right.
composer of the music, the film
director, and the author of the work so BR and CT are noted artists whose paintings are
adapted – audiovisual work. highly prized by collectors. Dr. DL commissioned
them to paint a mural at the main lobby of his
XPN: The producers shall exercise the new hospital for children. Both agreed to
copyright to an extent required for the collaborate on the project for a total fee of two
exhibition of the work in any manner. million pesos to be equally divided between
(Sec. 178.5, IPC) them. It was also agreed that Dr. DL had to
provide all the materials for the painting and pay
Writer – in respect of letters subject to the for the wages of technicians and laborers needed
provisions of Article 723, Civil Code. for the work on the project. Assume that the
(Sec. 178.6, IPC) project is completed and both BR and CT are fully
paid the amount of P2M as artists' fee by DL.
GR: Publishers – deemed representatives of Under the law on intellectual property, who will
the author in case of anonymous and own the mural? Who will own the copyright in
pseudonymous works. the mural? Why? Explain.
XPN: When the contrary appears or Under Sec. 178.4 of the Intellectual Property
where the pseudonym or adopted name Code, in case of commissioned work, the creator
leaves no doubt as to the author’s (in the absence of a written stipulation to the
identity; or author discloses his identity. contrary) owns the copyright, but the work itself
belongs to the person who commissioned the
In case of collective works – contributor is creation. Accordingly, the mural belongs to DL.
deemed to have waived his right unless However, BR and CT own the copyright, since
he expressly reserves it. (Sec. 196, IPC) there is no stipulation to the contrary. (1995 Bar
Question)

What is the principle of “automatic protection”? Performance of a work, once it has been
lawfully made accessible to the public, if
Works are protected by the sole fact of their done privately and free of charge or for
creation irrespective of their content, quality or a charitable or religious institution or
purpose. Such rights are conferred from the society.
moment of creation.
The making of quotations from a published
What is the term of protection of copyright? work if they are compatible with fair use
and only to the extent justified for the
purpose.
Communication to the public by mass media

TYPE of WORK DURATION
of articles on current political, social,
Lifetime of the creator economic, scientific or religious topic,
Single creation and for 50 years after lectures, addresses and other works of
his death the same nature
Lifetime of the last
Joint creation surviving co‐creator and As part of reports of current events (e.g.
for 50 years after his music played or tunes on the occasion
death. of a sporting event and such tunes were
50 years after the date picked up during a new coverage of the
of their first publication; event).
except where before
the expiration of said For teaching purposes, provided that the
Anonymous or period, the author’s source and of the name of the author, if
identity is revealed or is appearing in the work, are mentioned.
pseudonymous work
no longer in doubt, the
st
1 two mentioned rules Recording made in educational institutions of
shall apply; or if a work included in a broadcast for the
unpublished, 50 years use of such educational institutions,
from their making. provided that such recording must be
Work of an applied art deleted within a reasonable period after
of an artistic creation they were first broadcast.
with utilitarian functions
or incorporated in a
The making of ephemeral recordings by a
useful article whether 25 years from the time
broadcasting organization by means of
made by hand or
of the making. its own facilities and for use in its own
produced on an
industrial scale broadcast.
Audio‐visual works
including those The use made of a work by or under the
produced by process 50 years from date of direction or control of the government,
analogous to by the National Library or by
publication and, if educational, scientific or professional
photography or any
unpublished, from the institutions where such use is in the
process for making
date of making.
audio‐visual recordings public interest and is compatible with
Lifetime of the author fair use.
Newspaper Article and 50 years after. (Sec.
213, IPC) The public performance of a work, in a place
where no admission fee is charged.
F. LIMITATIONS ON COPYRIGHT
Public display of the original or a copy of the
What are the general limitations on copyright? work not made by means of a film, slide,
television image or otherwise on screen
The following acts shall not constitute or by means of any other device or
infringement of copyright: process (e.g. Public display
231
V C A F :J
choCivil
using posters mounted on walls and materials;

display boards). A computer program except as provided
in Section 189; and
Any use made of a work for the purpose of Any work in cases where reproduction
any judicial proceedings or for the giving would unreasonably conflict with a
of professional advice by a legal normal exploitation of the work or
practitioner. would otherwise unreasonably
prejudice the legitimate interests
What are the other limitations on copyright? of the author. (Sec. 187, IPC)
A: Any library or archive whose activities are

The fair use of a copyrighted work for not for profit may, without the
criticism, comment, news reporting, authorization of the author of copyright
teaching including multiple copies for owner, make a single copy of the work
classroom use, scholarship, research, by reprographic reproduction:
and similar purposes is not an Where the work by reason of its fragile
infringement of copyright. (Sec. 185, character or rarity cannot be lent
IPC) to user in its original form;
Where the works are isolated articles
Note: Decompilation, which is the contained in composite works or
reproduction of the code and translation brief portions of other published
of the forms of the computer program to works and the reproduction is
achieve the inter‐operability of an necessary to supply them, when
independently created computer program this is considered expedient, to
with other programs, may also constitute persons requesting their loan for
fair use (e.g. the software program for purposes of research or study
Windows 7 will be disassembled by a
instead of lending the volumes or
skilled programmer in order to understand
booklets which contain them; and
much of the structure and operation of
the program). Where the making of such a copy is in
order to preserve and, if necessary
in the event that it is lost,
Copyright in a work of architecture shall
destroyed or rendered unusable,
include the right to control the erection
replace a copy, or to replace, in the
of any building which reproduces the
permanent collection of another
whole or a substantial part of the work
similar library or archive, a copy
either in its original form or in any form
which has been lost, destroyed or
recognizably derived from the original,
rendered unusable and copies are
provided, that the copyright in any such
not available with the publisher.
work shall not include the right to
control the reconstruction or
rehabilitation in the same style as the But it shall not be permissible to
original of a building to which that produce a volume of a work published
copyright relates. (Sec. 186, IPC) in several volumes or to produce
missing tomes or pages of magazines or
similar works, unless the volume, tome
The private reproduction of a published work
or part is out of stock. (Sec. 188, IPC)
in a single copy, where the reproduction
is made by a natural person exclusively
for research and private study, shall be The reproduction in one back‐up copy or
permitted, without the authorization of adaptation of a computer program shall
the owner of copyright in the work but be permitted, without the authorization
shall not extend to the reproduction of: of the author of, or other owner of
copyright in, a computer program, by
A work of architecture in the form of
the lawful owner of that computer
building or other construction;
program, provided, the copy or
An entire book, or a substantial part
adaptation is necessary for:
thereof, or of a musical work in
graphic form by reprographic
means;
A compilation of data and other

The use of the computer program in What are the factors that should be considered
conjunction with a computer for in order to determine “fair use”?
the purpose, and to the extent, for
which the computer program has A:
been obtained; and The purpose and character of the use,
Archival purposes, and, for the including whether such use is of a
replacement of the lawfully owned commercial nature or is for non‐profit
copy of the computer program in educational purpose;
the event that the lawfully The nature of the copyrighted work;
obtained copy of the computer The amount and substantiality of the portion
program is lost, destroyed or used in relation to the copyrighted work
rendered unusable. (Sec. 187, IPC) as a whole; and
The effect of the use upon the potential
The importation of a copy of a work by an market for or value of the copyrighted
individual for his personal purposes work.
shall be permitted without the
authorization of the author of, or other Note: The fact that a work is unpublished shall
owner of copyright in, the work under not by itself bar a finding of fair use if such
the following circumstances: finding is made upon consideration of all the
When copies of the work are not above factors. (Sec. 182.2, IPC)
available in the Philippines and:
Not more than one copy at one time What is the “must carry rule”?
is imported for strictly individual
use only; or Must‐carry rule is another limitation on copyright.
The importation is by authority of It obligates operators to carry the signals of local
and for the use of the Philippine channels within their respective systems. This is to
Government; or give the people wider access to more sources of
The importation, consisting of not news, information, education, sports event and
more than three such copies or entertainment programs other than those
likenesses in any one invoice, is provided for by mass media and afforded
not for sale but for the use only television programs to attain a well informed,
of any religious, charitable, or well‐versed and culturally refined citizenry and
educational society or institution enhance their socio‐economic growth. (ABS‐CBN
duly incorporated or registered, Broadcasting Corporation v. Philippine
or is for the encouragement of Multimedia System, G.R. No. 175769‐ 70, Jan. 19,
the fine arts, or for any state 2009)
school, college, university, or
free public library in the Ford contracted with H&R Publishing to publish
Philippines. his unwritten memoirs. The agreement gave H&R
the exclusive first serial right to license
When such copies form parts of libraries prepublication excerpts. As the memoirs were
and personal baggage belonging to nearing completion, H&R, as the copyright
persons or families arriving from holders, negotiated a prepublication licensing
foreign countries and are not agreement with Time Magazine. Shortly before
intended for sale, provided, that the Time article's scheduled release, an
such copies do not exceed three. unauthorized source provided The Nation
(Sec. 190, IPC) Magazine with the unpublished Ford manuscript.
An editor of The Nation produced an article
What is the doctrine of “fair use”? which consisted of verbatim quotes of
copyrighted expression taken from the
“Fair use” permits a secondary use that “serves manuscript which were the gist of the memoirs.
the copyright objective of stimulating productive As a result, Time refused to pay H&R as agreed
thought and public instruction without upon in the prepublication agreement. H&R
excessively diminishing the incentives for brought an action for infringement against
creativity”. Nation Magazine. Nation magazine contended
that the article it published constitutes fair use
and thus it cannot be held liable for
infringement. Is the contention correct?
233
V C A F :J
choCivil
No, the article does not constitute fair use. Taking

into account the factors as especially relevant in It may be assigned in whole or in part. Within the
determining fair use, leads to the conclusion that scope of the assignment, the assignee is entitled
the use in question here was not fair. First of all, to all the rights and remedies which the assignor
the purpose or character of the use was had with respect to the copyright. (Sec. 180.1,
commercial (to scoop a competitor), meaning that IPC)
The Nation's use was not a good faith use of fair
use in simply reporting news. Also, although the Q: Is copyright similar with the material object?
verbatim quotes in question were an insubstantial
portion of the Ford manuscript, they qualitatively No, the copyright is distinct from the property in
embodied Mr. Ford's distinctive expression, and the material object subject to it. Consequently,
played a key role in the infringing article. And the transfer or assignment of the copyright shall
lastly, the effect of the use on the potential not itself constitute a transfer of the material
market for the value of the copyrighted work was object. Nor shall a transfer or assignment of the
also great, because the Nation's liberal use of sole copy or of one or several copies of the work
verbatim excerpts posed substantial potential for imply transfer or assignment of the copyright.
damage to the marketability of first serialization (Sec. 181, IPC)
rights in the copyrighted work. (Harper & Row v.
Nation Enterprises, 471 U.S. 539, 1985) What are the requisites for a transfer of
copyright to take effect?
What are published works?
A:
Those works which, with the consent of the If inter vivos, must be in writing; and
authors, are made available to the public by wire Filed in National Library upon payment of
or wireless means in such a way that members of prescribed fees. (Sec. 182, IPC)
the public may access these works from a place
and time individually chosen by them: provided, Is filing of the assignment or license of copyright
that availability of such copies has been such, as a mandatory requirement?
to satisfy the reasonable requirement of the
public, having regard to the nature of the work. No, Section 182 uses the permissive word “may”
(Sec. 171.7, IPC) in reference to the filing of the deed of
assignment or transfer of copyright, this filing
What is the difference between public should not be understood as mandatory for
performance and communication to the public of validity and enforceability. The filing is entirely
a performance? optional for the parties and may be useful only for
evidentiary and notification purposes. (Amador,
A: Intellectual Property Fundamentals, 2007)
COMMUNICATIONS TO
PUBLIC
PERFORMANCE
THE PUBLIC OF A
What is the limitation regarding submission of a
PERFORMANCE literary, photographic or artistic work to a
Performance at a newspaper, magazine or periodical for
The transmission to the
place or at places
public, by any medium, publication?
where persons
otherwise than by
outside the normal
broadcasting, of sounds of Unless a greater right is expressly granted, such
circle of a family and
a performance or the submission shall constitute only a license to make
that family’s closest
representations of sounds a single publication. (Sec. 180.3, IPC)
social acquaintances
fixed in a sound recording.
are or can be present. Note: If two or more persons jointly own a copyright
The communication can be
It is performed at a or any part thereof, neither of the owners shall be
accessed through wired or
specific time and entitled to grant licenses without the prior written
wireless means at a time
place. (e.g. The consent of the other owner or owners. (Ibid.)
and place convenient to
Pacquiao‐Clottey
the viewer (e.g. The
Match in Dallas Texas
Pacquiao‐Clottey Match
Q: What is copyright infringement?
Stadium)
watched via YouTube)
It is the doing by any person, without the consent
of the owner of the copyright, of anything the sole
Q: May a copyright be transferred/assigned? 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 What are the available remedies in case of
acknowledge the same is an infringement of copyright infringement?
copyright. (Habana v. Robles, G.R. No. 131522,
July 19, 1999) A:
Injunction
Q: What does substantial reproduction mean? Damages, including legal costs and other
expenses, as he may have incurred due
It is not necessarily required that the entire to the infringement as well as the
copyrighted work, or even a large portion of it, be profits the infringer may have made due
copied. If so much is taken that the value of the to such infringement
original work is substantially diminished, there is Impounding during the pendency of the
an infringement of copyright and to an injurious action sales invoices and other
extent, the work is appropriated. It is no defense documents evidencing sales
that the pirate did not know whether or not he Destruction without any compensation all
was infringing any copyright; he at least knew that infringing copies
what he was copying was not his, and he copied Moral and exemplary damages (Sec. 216.1);
at his peril. In cases of infringement, copying or
alone is not what is prohibited. The copying must Seizure and impounding of any article, which
produce an “injurious effect”. (Habana v. Robles, may serve as evidence in the court
G.R. No. 131522, July 19, 1999) proceedings. (Sec. 216.2)
What are the criminal penalties in case of

What is plagiarism? copyright infringement?
It is the practice of claiming or implying original A:

authorship of (or incorporating material from) Imprisonment of one (1) year to three
someone else’s written or creative work, in whole years plus a fine ranging from Fifty
or in part, into one’s own without adequate thousand pesos (P50,000) to One
acknowledgment. hundred fifty thousand pesos
(P150,000) for the first offense.
What is the difference between copyright Imprisonment of three (3) years and one (1)
infringement and plagiarism? day to six (6) years plus a fine ranging
from One hundred fifty thousand pesos
COPYRIGHT to Five hundred thousand (P500,000)
PLAGIARISM
INFRINGEMENT for the second offense.
The unauthorized use of Imprisonment of six (6) years and one day to
copyrighted material in a nine (9) years plus a fine ranging from
The use of another’s
manner that violates one of Five hundred thousand pesos
information, language,
the copyright owner’s
or writing, when done
(P500,000) to P1,500,000 for the third
exclusive rights, such as the
without proper
offense.
right to reproduce or
acknowledgment of
perform the copyrighted
the original source. In all cases, subsidiary imprisonment in cases
work, or to make derivative of insolvency.
works that build upon it.
Copyright infringement is a What is affidavit evidence?
very broad term that
describes a variety of acts.
Plagiarism is specific as An affidavit made before the notary public in
It may be duplication of a
it refers only to using actions for infringement, reciting the facts
work, rewriting a piece,
performing a written work
someone else’s work required to be stated under the IPC. (Sec. 216.1)
without proper
or doing anything that is
acknowledgement. Note: As a prima facie proof, the affidavit shifts the
normally considered to be
burden of proof to the defendant, to prove the
the exclusive right of the
ownership of the copyrighted work.
copyright holder.
Public documents can
There is no copyright
be plagiarized so long
infringement on public
as it is not
documents.
acknowledged.
235
V C A F :J
choCivil

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UST GOLDEN NOTES 2011

INTELLECTUAL PROPERTY LAWS C. TECHNOLOGY TRANSFER ARRANGEMENTS

I. INTELLECTUAL PROPERTY RIGHTS IN GENERAL Q: What is a technology transfer arrangement?

A. INTELLECTUAL PROPERTY RIGHTS

0 It’s an indication which identifies a good as

Q: What is prior art? 5890 A third party which obtained

result in the enhancement of the known some or all of the interconnections of

A: 1 In the case of Drugs and medicines,

1 Layout design/topography – The three

MERCANTILE LAW TEAM:

5890 2 or more persons invented 0 The estranged husband of Cheche cannot

5892 Inventions created pursuant to a 0 Who may apply for a patent?

0 What is a claim? 25 A certified copy of the foreign

0 What is an abstract? 5888 Leonard and Marvin applied for Letters

MERCANTILE LAW TEAM:

F. RIGHTS CONFERED BY A PATENT act includes testing, using, making

1 Where the act is done privately and 0 Public interest, as determined by

MERCANTILE LAW TEAM:

What is meant by “equivalent device”? Administrative remedy – Where the amount

MERCANTILE LAW TEAM:

LICENSING Where the public interest, at any time after

What is voluntary licensing? In case of public non‐commercial use of the

Grounds for cancellation of the compulsory J. ASSIGNMENT AND TRANSMISSION OF RIGHTS

MERCANTILE LAW TEAM:

No, because “pale pilsen” are generic words

MERCANTILE LAW TEAM:

NON‐REGISTRABLE MARKS designate the goods or services in

A: Consists exclusively that may serve in trade

Is identical with an internationally well‐ A:

Consists exclusively of signs that are generic

Consists exclusively of signs that have

F. TEST TO DETERMINE CONFUSING SIMILARITY misleading similarity in general appearance, not

MERCANTILE LAW TEAM:

WELL‐KNOWN MARKS What are the rights of a registered mark owner?

What constitutes an internationally well‐ known A:

Need not be used or registered in the

What are the elements to be established in presumed if a letter R within a circle is

A: It is properly lodged with the Regional Trial Court

MERCANTILE LAW TEAM:

A: A person may not:

TRADE NAMES OR BUSSINESS NAMES COLLECTIVE MARKS

Q: What is a trade name or business name? What is a collective mark?

MERCANTILE LAW TEAM:

What should an application for registration of a If its registration was obtained

Or that he uses or permits its use in a BASIC PRINCIPLES

B. COPYRIGHTABLE WORKS P&D was granted a copyright on the technical

MERCANTILE LAW TEAM:

D. RIGHTS OF A COPYRIGHT OWNER own creation or in a distorted

MERCANTILE LAW TEAM:

What is the term of moral rights?

It shall last during the lifetime of the author and

Note: Fair use and limitations to copyrights shall

MERCANTILE LAW TEAM:

Q: When are neighboring rights not applicable? irrespective of the nationality or

For sound or image and sound recordings Of sound recordings

Q: Distinguish collective work from joint work.

MERCANTILE LAW TEAM:

Communication to the public by mass media

using posters mounted on walls and materials;

A: Any library or archive whose activities are

MERCANTILE LAW TEAM:

No, the article does not constitute fair use. Taking

MERCANTILE LAW TEAM: