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Intellectual Property

Side-by-Side Comparison
Compiled by: Maligad, Anton

Element/ PATENTS TRADEMARKS/SERVICEMARK/TRADENAME COPYRIGHT


Characteristic
Definition Patent is a set of exclusive rights granted [Section 121; RA 8293] Copyright is an intangible incorporeal
by a State to an inventor or his assignee for Trademark is any visible sign capable of right:
a fixed period of time in exchange for a distinguishing the goods of an enterprise.  To certain literary, scholarly,
disclosure of an invention. and artistic production;
Servicemark is any visible sign capable of  Granted by statute to the
distinguishing the services of an enterprise. author or creator of the work;
 Giving him, his heirs and
Tradename—means the name or designation assigns, copyright or economic
identifying or distinguishing an enterprise. rights
What can be [Section 21; RA 8293]—Patentable No Provision provided under RA 8293 [Section 172; RA 8293]—Original
registered? Inventions. Works

Any technical solution of a problem in any Literary and artistic works, are
field of human activity which is: original intellectual creations in the
literary and artistic domain protected
a.) New; from the moment of their creation and
b.) Involves an Inventive Step; and shall include:
c.) Industrially applicable.
(a) Books, pamphlets, articles
It may be, or may relate to a: and other writings;

a.) Product; (b) Periodicals and newspapers;


b.) Process; or
c.) An Improvement of any of the
foregoing. (c) Lectures, sermons, addresses,
dissertations prepared for oral
delivery, whether or not
reduced in writing or other
material form;

(d) Letters;

(e) Dramatic or dramatico-


musical compositions;
choreographic works or
entertainment in dumb shows;

(f) Musical compositions, with or


without words;

(g) Works of drawing, painting,


architecture, sculpture,
engraving, lithography or

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other works of art; models or
designs for works of art;

(h) Original ornamental designs


or models for articles of
manufacture, whether or not
registrable as an industrial
design, and other works of
applied art;

(i) Illustrations, maps, plans,


sketches, charts and three-
dimensional works relative to
geography, topography,
architecture or science;

(j) Drawings or plastic works of a


scientific or technical
character;

(k) Photographic works including


works produced by a process
analogous to photography;
lantern slides;

(l) Audiovisual works and


cinematographic works and
works produced by a process
analogous to cinematography
or any process for making
audio-visual recordings;

(m) Pictorial illustrations and


advertisements;

(n) Computer programs; and

(o) Other literary, scholarly,


scientific and artistic works.

[Section 173; RA 8293]—Derivative


Works
The following derivative works shall
also be protected by copyright:
(a) Dramatizations, translations,
adaptations, abridgments,
arrangements, and other
alterations of literary or
2 This is a Derivate Work, unlawful reproduction is a violation of RA 8293.
artistic works; and

(b) Collections of literary,


scholarly or artistic works,
and compilations of data and
other materials which are
original by reason of the
selection or coordination or
arrangement of their contents.

What cannot be [Section 22; RA 8293 as amended by RA [Section 123.1; RA 8293]—Registrability [Section 175 & 176; RA 8293]—
registered? 10372]—Non-Patentable Inventions Unprotected Subject matter/Works
A mark cannot be registered if it: of the Government
The following shall be excluded from patent
protection: (a) Consists of immoral, deceptive or No protection (copyright) shall be
scandalous matter, or matter which may extended under this law:
(a) Discoveries, scientific theories and disparage or falsely suggest a connection
mathematical methods, and in the with persons, living or dead, institutions, (a) Any idea, procedure, system,
case of drugs and medicines, the beliefs, or national symbols, or bring them method or operation, concept,
mere discovery of a new form or into contempt or disrepute; principle, discovery or mere
new property of a known substance data as such, even if they are
which: (b) Consists of the flag or coat of arms or other expressed, explained,
 Doesn’t result in the insignia of the Philippines or any of its illustrated or embodied in
enhancement of the known political subdivisions, or of any foreign work;
efficacy of that substance; nation, or any simulation thereof;
or (b) News of the day and other
 The mere discovery of any miscellaneous facts having the
new property or new use of (c) Consists of a name, portrait or signature character of mere items of
a known substance; or identifying a particular living individual press information;
 The mere use of a known except by his written consent, or the name,
process unless such known signature, or portrait of a deceased (c) Any official text of a legislative,
process results in a new President of the Philippines, during the life administrative or legal nature,
product that employs at of his widow, if any, except by written as well as any official
least one reactant. consent of the widow; translation thereof.

(b) Schemes, rules and methods of (d) [Registered Mark] Is identical with a (d) No copyright shall subsist in
performing mental acts, playing registered mark belonging to a different any work of the Government of
games or doing business, and proprietor or a mark with an earlier filing the Philippines
programs for computers; or priority date, in respect of:
(i) The same goods or services, or (e) Works that don’t require prior
(c) Methods for treatment of the (ii) Closely related goods or services, or approval for use—
human or animal body by surgery (iii) If it nearly resembles such a mark as
or therapy and diagnostic methods to be likely to deceive or cause confusion;  The use of any purpose of
practiced on the human or animal statutes, rules, and
body. This provision shall not apply (e) [Well-Known Brand w/n registered in regulations;
to products and composition for the Philippines] Is identical with, or  Speeches, lectures, sermons,
use in any of these methods; confusingly similar to, or constitutes a addresses, dissertations,
translation of a mark which is considered pronounced, read or rendered
(d) Plant varieties or animal breeds or by the competent authority of the in courts of justice, before

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essentially biological process for the Philippines to be well-known administrative agencies in
production of plants or animals. internationally and in the Philippines, deliberative assemblies and in
This provision shall not apply to whether or not it is registered here, as meetings of public character.
micro-organisms and non-biological being already the mark of a person other
and microbiological processes. than the applicant for registration, and
Provisions under this subsection used for identical or similar goods or
shall not preclude Congress to services: Provided, That in determining
consider the enactment of a law whether a mark is well-known, account
providing sui generis protection of shall be taken of the knowledge of the
plant varieties and animal breeds relevant sector of the public, rather than of
and a system of community the public at large, including knowledge in
intellectual rights protection; the Philippines which has been obtained
as a result of the promotion of the mark;
(e) Aesthetic creations;
(f) [Well-known; Registered in the
(f) Anything which is contrary to Philippines] Is identical with, or
public order or morality confusingly similar to, or constitutes a
translation of a mark considered well-
known in accordance with the preceding
paragraph, which is registered in the
Philippines with respect to goods or
services which are not similar to those
with respect to which registration is
applied for: Provided, That use of the mark
in relation to those goods or services would
indicate a connection between those goods
or services, and the owner of the registered
mark: Provided further, That the interests
of the owner of the registered mark are
likely to be damaged by such use;

(g) Is likely to mislead the public, particularly


as to the nature, quality, characteristics or
geographical origin of the goods or
services;

(h) Consists exclusively of signs that are


generic for the goods or services that they
seek to identify;

(i) Consists exclusively of signs or of


indications that have become customary or
usual to designate the goods or services in
everyday language or in bona fide and
established trade practice;

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(j) Consists exclusively of signs or of
indications that may serve in trade to
designate the kind, quality, quantity,
intended purpose, value, geographical
origin, time or production of the goods or
rendering of the services, or other
characteristics of the goods or services;

(k) Consists of shapes that may be


necessitated by technical factors or by the
nature of the goods themselves or factors
that affect their intrinsic value;

(l) Consists of color alone, unless defined by a


given form; or

(m) Is contrary to public order or morality.

XPN: [Section 123.2; Doctrine of Secondary


Meaning]— As regards signs or devices mentioned
in paragraphs (j), (k), and (l), nothing shall prevent
the registration of any such sign or device which:

 Has become distinctive in relation to the


goods for which registration is requested
as a result of the use that have been made
of it in commerce in the Philippines.

The Office may accept as prima facie evidence that


the mark has become distinctive, as used in
connection with the applicant's goods or services in
commerce, proof of substantially exclusive and
continuous use thereof by the applicant in
commerce in the Philippines for five (5) years
before the date on which the claim of
distinctiveness is made.

Ownership of the [Section 28; RA 8293]—Right to a [Section 122; RA 8293] The one who has acquired [Section 178-179, RA 8293]
Right Patent— The right to a patent belongs to the mark through registration in accordance with Copyright ownership—
the following: the provisions of the law.
(1) In case of original literary
(a) The inventor; and artistic works—author of
(b) The heirs of the inventor; or the work;
(c) The assigns of the inventor.
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(2) In case of works of joint
When two (2) or more persons have jointly ownership—co-authors shall
made an invention, the right to a patent be the original owners,
shall belong to them jointly. governed by the law on co-
ownership;
[Section 29; RA 8293]—First to File Rule
(3) In case of work created
(1) Two (2) or more person have during employment—
made the invention separately Employee; if the creation is
and independently of each not part of his regular duties;
other—The right of the patent shall
belong to the person who filed an (4) In case of work created
application for such invention; during employment—
Employer; if the creation is
(2) Two (2) or more applications are part of the regular duties of
filed for the same invention—The the employee;
right of the patent shall belong to
the applicant who has the earliest (5) In case of Commissioned
filing date, or the earliest priority work—The work is owned by
date. the person commissioning
such work; however the
[Section 30; RA 8293] copyright is owned and shall
remain with the creator;
(1) In case of commissioned work—
The person who commissions the (6) In case of audiovisual
work; work—The copyright shall
belong to the producer, the
(2) In case of work created during author of the scenario, the
employment—The employer; if the composer of the music, the
invention is the result of the film director, and the author
performance of the duties of the of the work so adapted;
employee;
(7) In respect of letter—the
(3) In case of work created during copyright shall belong to the
employment—The employee; if the writer;
invention is not part of his regular
duties (8) In Anonymous and
Pseudonymous work—the
publishers shall be deemed to
represent the authors of
articles and other writings

6 This is a Derivate Work, unlawful reproduction is a violation of RA 8293.


Elements of Elements of Patentability: No Provision provided under RA 8293 Elements of Registrability:
Registrability (a) Novelty [Section 23; RA 8293]— 1.) Literary Work;
an invention shall not be
considered new if it forms part of 2.) Artistic Work;
prior art;

3.) Scholarly work;


(b) Inventive Step [Section 26; RA
8293]—An invention involves an 4.) Product of the intellectual
inventive step if, having regard to creation of the author or
prior art, it is not obvious to a creator
person skilled in the art at the time
of the filing date or priority date of
the application claiming the
invention;

(c) Industrially Applicable [Section


27; RA 8293]— An invention that
can be produced and used in any
industry shall be industrially
applicable

In connection to novelty:
[Section 24; RA 8293] Prior Art—The two
(2) classes of prior art are the following:

1.) Made available to the public—


Everything which has been made
available to the public anywhere in
the world, before the filing date or
the priority date of the application
claiming the invention; and

2.) Those actually subject of


application for patent
registration—The whole contents
of an application for a patent,
utility model, or industrial design
registration, published in
accordance with this Act, filed or
effective in the Philippines, with a
filing or priority date that is
earlier than the filing or priority
date of the application: Provided,
That the application which has
validly claimed the filing date of an
earlier application under Section 31
of this Act, shall be prior art with
effect as of the filing date of such

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earlier application: Provided
further, That the applicant or the
inventor identified in both
applications are not one and the
same.
Procedure Outline The procedure for the grant of a patent may The procedure for the grant of a trademark may be Literary and Artistic Works, which are
be summarized as follows: summarized as follows: original intellectual creations in the
literary and artistic domain, are
1.) Filing of the application [Sections 1.) Filing of the application [Sections 124, protected from the moment of their
32-39; RA 8293] 128, 129; RA 8293]; creation.

2.) Accordance of the filing date 2.) Accordance of the filing date [Sections
[Section 31, 40, 41; RA 8293]; 127, 131, 132; RA 8293];

3.) Formality Examination [Section 3.) Examination and Publication [Section


42; RA 8293] 133; RA 8293];

4.) Classification and Search [Section 4.) Opposition and Period of Filing of
43; RA 8293]; Opposition [Sections 134-135; RA 8293];

5.) Publication of the application 5.) Issuance and Publication of Certificate of


[Sections 44-46; RA 8293]; Registration [Section 136; RA 8293]

6.) Substantive Examination [Section 6.) Registration of Mark and Issuance of a


48, RA 8293]; Certificate to the Owners or his Assignee
[Section 137-138; RA 8293];
7.) Grant/Refusal of Patent [Section
50-51; RA 8293]; 7.) Publication of Registered Marks [Section
139; RA 8293]
8.) Publication of Grant [Section 52;
RA 8293];

9.) Issuance of the Certificate [Section


53; RA 8293]
Where to file Bureau of Patents Bureau of Trademarks Formerly the National Library
Application for
Registration For Tradenames: File with the Securities and Currently, the Bureau of Copyright
Exchange Commission (SEC) and Other Related Rights
1ST STEP: [Sections 32-39; RA 8293] [Section 124; RA 8293]—The application for Literary and Artistic Works, which are
Requirements for The patent application shall be in Filipino registration of the mark shall be in Filipino or in original intellectual creations in the
Application or English and shall contain the English, and shall contain the following: literary and artistic domain, are
following: protected from the moment of their
creation.
(a) A Request for the grant of (a) A request for registration;
patent—The request shall contain:
 A petition for the grant of
patent; (b) The name and address of the applicant;
 The name and other data of
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the applicant, the inventor (c) The name of a State of which the
and the agent; and applicant is a national or where he has
 The title of the invention domicile; and the name of a State in which
the applicant has a real and effective
(b) A Description of the Invention— industrial or commercial establishment, if
The application shall disclose the any;
invention in a manner sufficiently
clear and complete for it to be (d) Where the applicant is a juridical entity,
carried out by a person skilled in the law under which it is organized and
the art. Otherwise, such lack of existing;
disclosure can be a ground for
cancellation;
(e) The appointment of an agent or
(c) Drawings necessary for the representative, if the applicant is not
understanding of the invention; domiciled in the Philippines;

(d) One or more claims—The (f) Where the applicant claims the priority
application shall contain one or of an earlier application, an indication of:
more claims which shall define the
matter for which protection is i) The name of the State with
sought. Each claim shall be clear whose national office the earlier
and concise, and shall be application was filed or if filed with
supported by the description; an office other than a national
office, the name of that office,
(e) An Abstract—An abstract shall
consist of a summary of the
ii) The date on which the earlier
disclosures of the invention as
application was filed, and
contained in the description, claims
and drawings in preferably not
more than 150 words. The abstract iii) Where available, the application
shall merely serve for technical number of the earlier application;
information.
(g) Where the applicant claims color as a
Note: No patent may be granted unless the distinctive feature of the mark, a statement
application identifies the inventor. to that effect as well as the name or names
If the applicant is not the inventor, the of the color or colors claimed and an
Office may require to submit said authority. indication, in respect of each color, of the
principal parts of the mark which are in
that color;
[Section 38; RA 8293]—Unity of
Invention
(h) Where the mark is a three-dimensional
(1) Application shall relate to:
mark, a statement to that effect;
 One invention only; or
 To a group of inventions
forming a single general (i) One or more reproductions of the mark,
inventive concept; as prescribed in the Regulations;

(2) Director of Patents—If several (j) A transliteration or translation of the


independent inventions which do mark or of some parts of the mark, as

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not form a single general inventive prescribed in the Regulations;
concept are claimed in one
application, the Director may (k) The names of the goods or services for
require that the application be which the registration is sought, grouped
restricted to a single invention; according to the classes of the Nice
Classification, together with the number of
(3) A later application for a divided the class of the said Classification to which
invention shall be considered each group of goods or services belongs;
filed as of the date of the filing of and
the first application—A later
application filed for an invention
divided out shall be considered as (l) A signature by, or other self-
having been filed on the same day identification of, the applicant or his
as the first application: Provided, representative.
That the later application is filed
within four (4) months after the Declaration of Actual Use:
requirement to divide becomes final 1.) Declaration of Actual Use—The applicant
or within such additional time, not or the registrant shall file a declaration of
exceeding four (4) months, as may actual use of the mark with evidence to
be granted: Provided further, That that effect, as prescribed by the
each divisional application shall not Regulations;
go beyond the disclosure in the
initial application. 2.) When to file DAU—within three (3) years
from the filing date of the application.

(4) Not a ground for Cancellation of 3.) Otherwise, the application shall be refused
Patent— The fact that a patent has or the mark shall be removed from the
been granted on an application that Register by the Director.
did not comply with the
requirement of unity of invention Note: As compared to Patent applications, a
shall not be a ground to cancel the Trademark Application requires a declaration of
patent actual use of the mark applied for or registered.
Previously, it was a requirement of Prior use.
However, upon the amendment under RA 8293 the
requirement is now Actual use.

One Application may refer to Several Goods—


One (1) application may relate to several goods
and/or services, whether they belong to one (1)
class or to several classes of the Nice
Classification.

Requirement for Sufficient Evidence—If during


the examination of the application, the Office finds
factual basis to reasonably doubt the veracity of
any indication or element in the application, it may
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0
require the applicant to submit sufficient evidence
to remove the doubt.

[Section 128; RA 8293]—Single Registration for


Goods/Services
Where goods and/or services belonging to several
classes of the Nice Classification have been
included in one (1) application, such an application
shall result in one registration.

Note: In Trademark applications, it allows a single


application for goods/services belonging to different
classifications in the Nice classification. However,
as compared to Patent Applications, the latter only
allows one application for one type of invention as
state under Section 38 of RA 8293.

[Section 129; RA 8293]—Division of Application


1.) Any application referring to several goods
or services, hereafter referred to as the
"initial application," may be divided by the
applicant into two (2) or more applications,
hereafter referred to as the "divisional
applications,"

2.) By distributing among the latter the goods


or services referred to in the initial
application.

3.) The divisional applications shall preserve


the filing date of the initial application or
the benefit of the right of priority.

Foreign/Non- [Section 33; RA 8293] Appointment of [Section 125; RA 8293] Representative; Address No Provision provided under RA 8293
Resident Agent or Representative: for Service
Applicants 1.) Appointment of an Agent—An 1.) Applicant not Domiciled or no
applicant who is not a resident of Commercial Establishment—If the
the Philippines must appoint and applicant is not domiciled or has no real
maintain a resident agent or and effective commercial establishment in
representative in the Philippines; the Philippines, he shall designate by a
written document in the Office, the name
2.) Role of Agent—Upon whom notice and address of a Philippine resident;
or process for judicial or
administrative procedure relating to 2.) Role of Philippine Resident—The
the application for patent or the Philippine resident shall be served notices

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patent may be served. or process in proceedings affecting the
mark.

3.) Service of notices or services—Such


notices or services may be served upon the
person so designated by leaving a copy
thereof at the address specified in the last
designation filed.

4.) Person not designated cannot be


found—If the person so designated cannot
be found at the address given in the last
designation, such notice or process may be
served upon the Director.
2nd STEP: [Section 40; RA 8293]—Filing Date [Section 127; RA 8293]—Filing Date No Provision provided under RA 8293
Accordance of Requirements The filing date of an application shall be the date
Filing Date The filing date of a patent application shall on which the Office received the following
be the date of receipt by the Office of at indications and elements in English or Filipino:
least the following element:
(a) Indication—An express or implicit
(a) Indication—An express or implicit indication that the registration of a mark is
indication that a Philippine patent sought;
is sought;

(b) Information—Information (b) Identity—The identity of the applicant;


identifying the applicant; and
(c) Indications—Indications sufficient to
contact the applicant or his representative,
(c) Description—Description of the if any;
invention and one (1) or more
claims in Filipino or English (d) Reproduction of the Mark—A
reproduction of the mark whose
Application shall be Withdrawn*—If any registration is sought; and
of these elements is not submitted within
the period set by the Regulations, the
application shall be considered as (e) List of Goods or Services—The list of
withdrawn. the goods or services for which the
registration is sought.
[Section 41; RA 8293]—According a
Filing Date (f) Payment of the Fee—No filing date
1.) The Office shall examine whether shall be accorded until the required fee is
the patent application satisfies the paid.
requirements for the grant of date
of filing as provided in Section 40; [Section132; RA 8293]—Application Number
and Filing Date
2.) Opportunity to correct

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2
deficiencies—If the date of filing (1) Examination by the Office—The Office
cannot be accorded, the applicant shall examine whether the application
shall be given an opportunity to satisfies the requirements for the grant of a
correct the deficiencies in filing date as provided in Section 127 and
accordance with the implementing Regulations relating thereto.
Regulations;
(2) Application doesn’t satisfy the
3.) Application doesn’t contain all requirements—If the application doesn’t
the elements—If the application satisfy the requirements, the Office shall
doesn’t contain all the elements notify the applicant who shall within a
indicated in Section 40, the filing period fixed by the Regulations complete or
date should be that date when all correct the application as required;
the elements are received.
(3) Otherwise withdrawn*—Otherwise, the
4.) Application shall be withdrawn*— application shall be withdrawn;
If the deficiencies are not remedied
within the prescribed time limit, the
application shall be considered
withdrawn.
(4) Numbering of Application—Once the
Note: The filing date/priority date is very application meets the filing requirements
important in patent application. The date is of Section 127, it shall be numbered in the
usually used as the reckoning point. sequential order, and the applicant shall
be informed of the application number and
the filing date of the application will be
deemed to have been abandoned.

Priority Date/Right [Section 31; RA 8293]—Right of Priority [Section 131; RA 8293]—Priority Right No Provision provided under RA 8293
(1) Local Application—An application for
(1) Local Application—An application registration of a mark filed in the
for patent filed by any person; Philippines by a person referred to in
Section 3
(2) Foreign Application—who has  Any person who is a national or
previously applied for the same who is domiciled; or
invention in another country which  Has a real and effective industrial
by treaty, convention, or law affords establishment in a country;
similar privileges to Filipino  The country is a party to any
citizens; convention, treaty or agreement
relating to Intellectual Property
(3) Priority Right—The local rights to which the Philippines is
application shall be considered filed also a party; or
as of the date of the filing of the  Extends reciprocal rights to
foreign application. nationals in the Philippines by law

(4) Provided—That (2) Foreign Application—Who previously filed


an application for registration of the same
(a) The local application expressly mark in one of those countries;
claims priority;

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(3) Priority Right—The local application shall
(b) The local application is filed be considered as filed as of the day the
within 12 months from the date application was first filed in the foreign
of the earliest foreign country.
application was filed;
(4) Grant of Registration of the Mark—No
(c) A certified copy of the foreign registration of a mark in the Philippines by
application together with an a person described in this section shall be
English translation is filed granted until such mark has been
within six (6) months from the registered in the country of origin of the
date of the filing in the applicant.
Philippines (local application)
(5) Cannot sue for acts committed prior
[Section 39; RA 8293]—Information registration—Nothing in this section shall
concerning Corresponding Foreign entitle the owner of a registration granted
Application for Patents under this section to sue for acts
committed prior to the date on which his
(1) The applicant shall, at the request mark was registered in this country.
of the Director, furnish him with
the date and number of any  Trademark is registered—The registered
application for a patent filed by him owner can sue for Trademark Infringement
abroad—referred to as the foreign only if the mark has been registered in the
application; Philippines;

(2) Relating to the same or essentially  Trademark not registered—Even if the


same invention as that claimed in mark is not registered in the Philippines,
the application filed with the Office the owner of a well-known mark as defined
and other Documents relating to under Section 123.1(e) of RA 8293, may
the foreign application against an identical or confusingly similar
mark: Oppose its registration, or Petition
for Cancellation of its Registration; or Sue
for Unfair Competition; without prejudice
to availing himself of other remedies
provided under the law;

(6) Subsequent Foreign Application—In like


manner and subject to the same
conditions and requirements, the right
provided in this section may be based
upon a subsequent regularly filed
application in the same foreign country:
Provided, That any foreign application filed
prior to such subsequent application has
been withdrawn, abandoned, or otherwise
disposed of, without having been laid open
to public inspection and without leaving

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4
any rights outstanding, and has not
served, nor thereafter shall serve, as a
basis for claiming a right of priority

Note: Items (4), (5), and (6) only applies to


Trademarks and doesn’t apply to Patents nor to
Copyright.
3rd STEP: [Section 42; RA 8293] Formality No Provision provided under RA 8293 No Provision provided under RA 8293
Formality Examination—
Examination
(1) After accordance of Filing date—
After the patent application has
been accorded a filing date and the
required fees have been paid on
time in accordance with the
Regulations;

(2) Comply with Formal


Requirements—The applicant
shall comply with the formal
requirements specified by Section
32 and the Regulations within the
prescribed period;

(3) Otherwise; withdrawn*—The


application shall be considered as
withdrawn.

[Rule 603; Rules and Regulations on


Inventions] Such other Formal
Requirements may relate to the
following:
(a) Contents of the request for grant of
a Philippine patent;
(b) Priority documents if with claim of
convention priority;
(c) Proof of authority, if the applicant
is not the inventor;
(d) Deed of Assignment;
(e) Payment of all fees;
(f) Signature of the applicants;
(g) Identification of the inventor; and
(h) Formal drawings
4th STEP: [Section 43; RA 8293] Classification and No Provision provided under RA 8293 No Provision provided under RA 8293
Classification and Search
Search (1) An application that has complied
with the formal requirements shall
be classified and a search

This is a Derivate Work, unlawful reproduction is a violation of RA 8293. 15


conducted to determine the prior
art;

(2) It is at this point that the patent


examiner shall determine the
requirement of novelty.

(3) Involves a search document or


search report
5th STEP: [Section 44; RA 8293] Publication of [Section 133; RA 8293] Examination and No Provision provided under RA 8293
Publication of Patent Application— Publication—The process of examination and
Application publication are the following:
(1) Application shall be published—
The patent application shall be (1) After accordance of Filing Date—Once
published in the IPO Gazette with a the application meets the filing
search document; requirements of Section 127 of RA 8293
 Search document—the (filing date):
search document  Examination—The Office shall
established by or on behalf examine whether the application
of the Office citing any meets the requirements of Section
documents that reflect 124 of RA 8293; and
prior art
 Mark is registrable—The mark as
(2) When will the application be defined under Section 121 is
published—The application shall registrable under Section 123 of
be published after the expiration of RA 8293 (doesn’t fall within those
eighteen (18) months from the filing listed under Section 123)
date or priority date;
(2) Publication of the Application—Where
(3) Inspection after publication— the Office finds that the conditions
After publication of the patent aforementioned are fulfilled:
application, any interested party  Payment of Fee—It shall upon
may inspect the application payment of the prescribed fee;
documents filed with the Office;
 Publication—Forthwith cause the
(4) Director General may prohibit application, as filed, to be
the publication of the published in the prescribed
application—The Director General manner.
subject to the approval of the
Secretary of the Trade and (3) Amendment of Application & Re-
Industry, may prohibit or restrict examination—If after examination, the
the publication of an application, if applicant is not entitled to registration for
in his opinion, to do so would be
prejudicial to the national security
any reason:
and interest of the Republic of the  The Office shall advise the
Philippines. applicant thereof and the reasons
therefor;
1 This is a Derivate Work, unlawful reproduction is a violation of RA 8293.
6
[Rule 800; Rule and Regulations on  Period for amendment—The
Inventions] Early Publication (Prior lapse applicant shall have a period of
of 18 months) –The applicant may request four (4) months in which to reply
for the early publication of his application or amend his application;
provided that the:
 Re-examination—The amended
1.) Applicant submits a written waiver application shall be re-examined;
of the:
 18-month period; and  Regulations— The Regulations
 Establishment of a search shall determine the procedure for
report the re-examination or revival of an
application as well as the appeal to
2.) Publication shall not be earlier the Director of Trademarks from
than six (6) months from the filing any final action by the Examiner
date; and
(4) Revival of an Abandoned Application—
3.) Required fee for early publication is An abandoned application may be revived
paid in full. as a pending application:
 Period—Within three (3) months
APPLICATION SHALL NOT BE from the date of abandonment;
PUBLISHED:
1.) If the application has been finally  Ground—Upon good cause shown;
refused or withdrawn; and
2.) If the application is deemed  Payment of Fee—The payment of
withdrawn before the termination of the required fee
the technical preparation for
publication (5) Final decision is appealable— The final
decision of refusal of the Director of
Trademarks shall be appealable to the
Director General in accordance with the
procedure fixed by the Regulations.

Rights Before and [Section 45; RA 8293] Confidentiality No Provision provided under RA 8293 No Provision provided under RA 8293
After Publication of before publication— A patent application,
the Application which has not yet been published, and all
related documents, shall not be made
available for inspection without the consent
of the applicant.

[Section 46; RA 8293] Rights conferred


after publication of application

(1) Rights conferred after


publication of application— The
applicant shall have all the rights of
a patentee under Section 76
against any person who, without
This is a Derivate Work, unlawful reproduction is a violation of RA 8293. 17
his authorization, exercised any of
the rights conferred under Section
71 of RA 8293 in relation to the
invention claimed in the published
patent application, as if a patent
had been granted for that
invention;

(2) Provided—That the said person


had:

 Actual Knowledge—Actual
knowledge that the
invention that he was using
was the subject matter of a
published application; or

 Written notice—Received
written notice that he was
using was the subject
matter of a published
application being identified
in the said notice by its
serial number

(3) Cause of Action but no Right of


Action—The action may not be
filed until after the grant of a patent
on the published application and
within (4) four years from the
commission of the acts complained
of.
 Prior grant of patent—
There is a cause of action
based on Section 76;

 After grant of patent—


There is now a right of
action.

Note: For better understanding read in


conjunction with Section 71 and 76 of RA
8293.
6th Step: No Provision provided under RA 8293 [Section 134; RA 8293] Opposition— No Provision provided under RA 8293
Filing of Opposition

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8
However: This is not provided in the Codal. (1) Who may file—Any person who believes
that he would be damaged by the
Who may file: An interested party may file registration of a mark;
an opposition to the patent application.
(2) Payment of Fee—Upon payment of the
When: From the time of the filing of the required fee; and
application but before the grant of the
patent application. (3) When filed—Within thirty (30) days after
the publication of the application;
Grounds:
1.) That the invention applied for is not (4) Form of Opposition—The opposition shall
new or novel; be in writing;

2.) That the inventor is not identified (5) Verification—The opposition is verified by
in the application; the oppositor or by any person on his
behalf who knows the facts;
3.) That the invention applied for is
against morals, conduct or law (6) Grounds—The opposition shall specify the
grounds on which it is based and include a
statement of the facts relied upon;

(7) Copies of Certificates of Registration—


Copies of certificates of registration of
marks registered in other countries or
other supporting documents mentioned in
the opposition shall be filed therewith,
together with the translation in English, if
not in English languae.

(8) Extension for time of filing of


opposition—The Director of Legal Affairs
shall extend the time of filing for
opposition:

 For good cause shown; and


 Upon payment of the required
surcharge;
 Director of BLA shall notify the
applicant of such extension of
period
(9) Opposition shall be filed with—The
Bureau of Legal Affairs. Specifically, to the
Director of Legal Affairs.

[Section 135; RA 8293] Notice and Hearing of


the Opposition

(1) Notice of the Filing—Upon the filing of an


opposition, the Office shall serve notice of

This is a Derivate Work, unlawful reproduction is a violation of RA 8293. 19


the filing on the applicant;

(2) Notice of the Hearing—The notice of the


date of the hearing thereof shall be served
on the applicant and the oppositor and all
other persons having any right, title, or
interest in the mark covered by the
application, as appear of record in the
Office.
7th STEP: [Section 48; RA 8293] Substantive No Provision provided under RA 8293 No Provision provided under RA 8293
Substantive Examination
Examination
(1) Duty of the Applicant—It is the
duty of the applicant to file a
written request for substantive
examination;

(2) When—Within six months from the


date of publication of the patent
application;

(3) Parameters of the Substantive


Examination—The requirements
under Sections 21 to 27 and
Sections 32 to 39 and the fees
should have been paid on time;

(4) Otherwise; Withdrawn*—Failure


to file a written request for
substantive examination, the
application shall be deemed
withdrawn

(5) Withdrawal of Request for


Examination— Withdrawal of the
request for examination shall be
irrevocable and shall not authorize
the refund of any fee.

Amendment of [Section 49; RA 8293] Amendment of [Refer to Section 133; RA 8293] No Provision provided under RA 8293
Application during Application:
Substantive
Examination (1) An applicant may amend the patent
application during examination;

2 This is a Derivate Work, unlawful reproduction is a violation of RA 8293.


0
(2) Provided, That such amendment
shall not include new matter
outside the scope of the disclosure
contained in the application as filed
8th STEP: [Section 50; RA 8293] Grant of Patent— [Section 137; RA 8293] Registration of Mark No Provision provided under RA 8293
Grant or Refusal and Issuance of a Certificate to the Owner or
(1) Grant of Patent— If the his assignee—
application meets the requirements
of this Act, the Office shall grant (1) Register of Marks—The Office shall
the patent: Provided, That all the maintain a Register in which shall be
fees are paid on time; registered marks, numbered in the order of
their registration, and all transactions in
(2) Failure to pay the fees— If the respect of each mark, required to be
required fees for grant and printing recorded by virtue of this law;
are not paid in due time, the
application shall be deemed to be (2) Registration of a Mark—shall include:
withdrawn;  A reproduction of the mark;
 Shall mention its number, the
(3) Date of Effectivity of Patent— A name; the name and address of
patent shall take effect on the date the registered owner and, if the
of the publication of the grant of registered owner's address is
the patent in the IPO Gazette. outside the country, his address
for service within the country; the
[Section 51; RA 8293] Refusal— dates of application and
(1) Final order; Appealable— The final registration;
order of refusal of the examiner to  If priority is claimed, an indication
grant the patent shall be of this fact, and the number, date
appealable to the Director in and country of the application,
accordance with this Act. basis of the priority claims;
 The list of goods or services in
(2) Regulations— The Regulations respect of which registration has
shall provide for the procedure by been granted, with the indication
which an appeal from the order of of the corresponding class or
refusal from the Director shall be classes; and
undertaken  Such other data as the
Regulations may prescribe from
time to time

(3) Certificate of registration issued to the


Assignee of the Applicant
 Provided, That the assignment is
recorded in the Office;
 In case of a change of ownership,
the Office shall at the written
request signed by the owner, or his
representative, or by the new
owner, or his representative and
upon a proper showing and the
payment of the prescribed fee,
This is a Derivate Work, unlawful reproduction is a violation of RA 8293. 21
issue to such assignee a new
certificate of registration of the
said mark in the name of such
assignee, and for the unexpired
part of the original period.

(4) Changes— The Office shall record any


change of address, or address for service,
which shall be notified to it by the
registered owner;

(5) Communications to the Registered


Owner— In the absence of any provision to
the contrary in this Act, communications
to be made to the registered owner by
virtue of this Act shall be sent to him at his
last recorded address and, at the same, at
his last recorded address for service.

9th STEP: [Section 52; RA 8293] Publication Upon [Section 139; RA 8293] Publication of No Provision provided under RA 8293
Publication of Grant of Patent— Registered Marks
Grant (1) Published in the IPO Gazette—
The grant of the patent together (1) Publication of Mark— The Office shall
with other related information shall publish, in the form and within the period
be published in the IPO Gazette fixed by the Regulations, the marks
within the time prescribed by the registered, in the order of their
Regulations; registration, reproducing all the particulars
referred to in Subsection 137.2;
(2) Inspection by interested party—
Any interested party may inspect (2) Inspection of Registered Marks— Marks
the complete description, claims, registered at the Office may be inspected
and drawings of the patent on file free of charge and any person may obtain
with the Office copies thereof at his own expense. This
provision shall also be applicable to
[Section 53; RA 8293] Contents of transactions recorded in respect of any
Patent—That patent shall be: registered mark.
 Issued in the name of the Republic
of the Philippines;

 Under the seal of the Office; and

 Shall be signed by the Director, and


registered together with the
description, claims, and drawings,
2 This is a Derivate Work, unlawful reproduction is a violation of RA 8293.
2
if any, in books and records of the
Office.

Certificate of No Provision provided under RA 8293 [Section 138; RA 8293] Certificate of No Provision provided under RA 8293
Registration Registration— A certificate of registration of a
mark shall be prima facie evidence of the validity of
the registration, the registrant's ownership of the
mark, and of the registrant's exclusive right to use
the same in connection with the goods or services
and those that are related thereto specified in the
certificate.

[Section 145; RA 8293] Duration of Certificate


of Registration

(1) A certificate of registration shall remain in


force for ten (10) years:

(2) Declaration of Actual Use or Obstacle to


such use—Provided, That the registrant
shall file a declaration of actual use and
evidence to that effect, or shall show valid
reasons based on the existence of
obstacles to such use, as prescribed by the
Regulations, within one (1) year from the
fifth anniversary of the date of the
registration of the mark.

(3) Otherwise; Mark is removed—Otherwise,


the mark shall be removed from the
Register by the Office

[Section 146; RA 8293] Renewal of Certificate


of Registration

(1) Renewable for 10 years—A certificate of


registration may be renewed for period of
ten (10) years;

(2) When Renewed—At the expiration of the


period of the certificate of registration;

(3) Payment of Fee—Upon the payment of


the prescribed fee; and

This is a Derivate Work, unlawful reproduction is a violation of RA 8293. 23


(4) Filing of Request—The request shall
contain the following:
(a) An indication that renewal is sought;

(b) The name and address of the registrant or


his successor-in-interest, hereafter
referred to as the "right holder";

(c) The registration number of the registration


concerned;

(d) The filing date of the application which


resulted in the registration concerned to be
renewed;

(e) Where the right holder has a


representative, the name and address of
that representative;

(f) The names of the recorded goods or


services for which the renewal is requested
or the names of the recorded goods or
services for which the renewal is not
requested, grouped according to the
classes of the Nice Classification to which
that group of goods or services belongs and
presented in the order of the classes of the
said Classification; and

(g) A signature by the right holder or his


representative.

(5) Language of Request—such request shall


be in Filipino or English;

(6) When is Request made— be made at any


time within six (6) months before the
expiration of the period for which the
registration was issued or renewed, or it
may be made within six (6) months after
such expiration on payment of the
additional fee herein prescribed.

2 This is a Derivate Work, unlawful reproduction is a violation of RA 8293.


4
(7) Refusal of Office of Request— If the
Office refuses to renew the registration, it
shall notify the registrant of his refusal
and the reasons therefor;

(8) Applicant for Renewal is not


Domiciled— An applicant for renewal not
domiciled in the Philippines shall be
subject to and comply with the
requirements of this Act

Term of Right [Section 54; RA 8293] Term of Patent— [Refer to Section 145; RA 8293]—10 years from [Section 213; RA 8293] Term of
The term of a patent shall be twenty (20) the date of grant Protection
years from the filing date of the application.
(1) Original and Derivative
Not Absolute: The patent shall cease to be Work of an Author/Creator—
in force and effect if any prescribed annual during the lifetime of the
fees therefor is not paid within the author and for fifty (50) years
prescribed time or if the patent is cancelled after his death;
in accordance with the provisions of the
law. (2) Works of Joint Authorship—
During the life of the last
surviving author and for fifty
(50) years after his death;

(3) Anonymous or
Pseudonymous Work—Fifty
(50) years from the date of
publication of such work. If
not published, fifty (50) years
from the date of the making of
such work. Provided, that if
before expiration of the said
period, the author’s identity is
revealed or is no longer in
doubt, the duration for 213.1
and 213. 2 shall apply;

(4) Works of Applied Art—Period


of twenty-five (25) years from
the date of the making;

(5) Photographic Works—Period


of Fifty (50) years from the
date of publication of the work
and if unpublished fifty (50)
years from the making;

This is a Derivate Work, unlawful reproduction is a violation of RA 8293. 25


(6) Audio-Visual Work— Period
of Fifty (50) years from the
date of publication of the work
and if unpublished fifty (50)
years from the making;

[Section 214; RA 8293] Calculation


of Term—
(1) The term of protection
subsequent to the death of the
author provided in the
preceding Section shall run
from the date of his death or
of publication,

(2) But such terms shall always


be deemed to begin on the
first day of January of the year
following the event, which
gave rise to them.

Cancellation of [Section 61; RA 8293] Cancellation of [Section 140; RA 8293] Cancellation upon No Provision provided under RA 8293
Right Patent— Application by Registrant; Amendment or
Disclaimer of Registration—
(a) Who may file—Any interested
person; (1) By Application for Cancellation—Upon
application of the registrant, the Office
(b) Payment of Fee—Upon payment of may permit any registration to be
the required fee; surrendered for cancellation, and

(c) Petition for Cancellation—May (2) Entry of Cancellation in the Records—


petition to cancel the patent or any upon cancellation the appropriate entry
claim thereof, or parts of the claim; shall be made in the records of the Office.

(d) Filed with—The Bureau of Legal (3) Amendment/Disclaimer of


Affairs; Registration—Upon application of the
registrant and payment of the prescribed
(e) Grounds—On any of the following fee, the Office for good cause may permit
grounds any registration to be amended or to be
 That what is claimed as the disclaimed in part:
invention is not new or
Patentable; (4) Provided, That the amendment or
disclaimer does not alter materially the
 That the patent doesn’t character of the mark.

2 This is a Derivate Work, unlawful reproduction is a violation of RA 8293.


6
disclose the invention in a
manner sufficiently clear (5) Appropriate entry shall be made in the
and complete for it to be records of the Office upon the certificate of
carried out by any person registration or, if said certificate is lost or
skilled in the art; or destroyed, upon a certified copy thereof

 That the patent is contrary Note: In patents, there is no application for


to public order or morality cancellation. The cancellation must be by another
party. In trademarks, the cancellation may also be
done by the Registrant.

[Section 151; RA 8293] Cancellation—Any


petition to cancel a registration of a mark under RA
8293 may be filed:
[Section 62; RA 8293] Requirements of
Petition for Cancellation—The petition for (a) Filed with—The Bureau of Legal Affairs;
cancellation shall be:
(1) In writing; (b) Filed by who—By any person who believes
(2) Verified by the Petitioner or by any that he is or will be damaged by the
person in his behalf who knows the registration of a mark under this Act as
facts; follows;
(3) Specify the grounds upon which it
is based; (c) Period of Filing/Grounds:
(4) Include a statement of the facts to
be relied upon; and  Within 5 years—Within five (5)
(5) Filed with the Office; years from the date of the
(6) Copies of printed publications or of registration of the mark under this
patents of other countries, and Act;
other supporting documents
mentioned in the petition shall be  At Any time—At any time, if the
attached thereto, together with the
registered mark becomes the
translation thereof in English.
generic name for the goods or
services, or a portion thereof, for
[Section 63; RA 8293] Notice of Hearing which it is registered, or has been
of Petition for Cancellation abandoned, or its registration was
obtained fraudulently or contrary
(1) Notice of Filing—Upon the filing of
to the provisions of this Act, or if
a petition for cancellation, the
the registered mark is being used
Director of Legal Affairs shall
by, or with the permission of, the
forthwith serve notice of the filing
registrant so as to misrepresent
thereof upon the patentee and all
the source of the goods or services
persons having grants or licenses,
on or in connection with which the
or any other right, title or interest
mark is used. If the registered
in and to the patent and the
mark becomes the generic name
invention covered thereby, as
for less than all of the goods or
appears of record in the Office. services for which it is registered, a
Notice of the filing of the petition petition to cancel the registration
shall be published in the IPO for only those goods or services
Gazette; may be filed. A registered mark
This is a Derivate Work, unlawful reproduction is a violation of RA 8293. 27
shall not be deemed to be the
(2) Notice of Hearing—Notice of the generic name of goods or services
date of hearing thereon on such solely because such mark is also
persons and the petitioner used as a name of or to identify a
unique product or service. The
[Section 64; RA 8293] Committee of primary significance of the
Three— registered mark to the relevant
(1) In cases involving highly technical public rather than purchaser
issues, on motion of any party, the motivation shall be the test for
Director of Legal Affairs may order determining whether the registered
that the petition be heard and mark has become the generic
decided by a committee composed name of goods or services on or in
of the Director of Legal Affairs as connection with which it has been
chairman and two (2) members who used.
have the experience or expertise in
the field of technology to which the  At Any time, due to Non-Use— At
patent sought to be cancelled any time, if the registered owner of
relates. the mark without legitimate reason
fails to use the mark within the
(2) The decision of the committee shall Philippines, or to cause it to be
be appealable to the Director used in the Philippines by virtue of
General. a license during an uninterrupted
period of three (3) years or longer.
[Section 65; RA 8293] Cancellation of
Patent
(1) Cancellation of the Patent—If the (d) Court vested with the Jurisdiction—
Committee finds that a case for Notwithstanding the foregoing provisions,
cancellation has been proved, it the court or the administrative agency
shall order the patent or any vested with jurisdiction to hear and
specified claim or claims thereof adjudicate any action to enforce the rights
cancelled. to a registered mark shall likewise exercise
jurisdiction to determine whether the
(2) Amendment of Patent as to registration of said mark may be cancelled
prevent Cancellation—If the in accordance with this Act.
Committee finds that, taking into
consideration the amendment made (e) Exclusionary Rule— The filing of a suit to
by the patentee during the enforce the registered mark with the
cancellation proceedings, the proper court or agency shall exclude any
patent and the invention to which it other court or agency from assuming
relates meet the requirement of this jurisdiction over a subsequently filed
Act, it may decide to maintain the petition to cancel the same mark.
patent as amended: Provided, That
the fee for printing of a new patent (f) Earlier filing is not a prejudicial
is paid within the time limit question— On the other hand, the earlier
prescribed in the Regulations. filing of petition to cancel the mark with
the Bureau of Legal Affairs shall not

2 This is a Derivate Work, unlawful reproduction is a violation of RA 8293.


8
(3) Patent is Revoked for failure to constitute a prejudicial question that must
pay the Fee—If the fee for the be resolved before an action to enforce the
printing of a new patent is not paid rights to same registered mark may be
in due time, the patent should be decided.
revoked.
[Section 153; RA 8293] Requirements of
(4) Publication of cancellation—If the Petition for Cancellation—
patent is amended under
Subsection 65.2 hereof, the Bureau (a) Form—Section 134; like that of Opposition
shall, at the same time as it
publishes the mention of the (b) Notice and Hearing—Section 135; like
cancellation decision, publish the that of Opposition
abstract, representative claims and
drawings indicating clearly what [Section 154; RA 8293] Cancellation of
the amendments consist of. Registration
(1) If the Bureau of Legal Affairs finds that a
[Section 66; RA 8293] Effect of case for cancellation has been made out, it
Cancellation— shall order the cancellation of the
(1) The rights conferred by the patent registration.
or any specified claim or claims
cancelled shall terminate. (2) When the order or judgment becomes final,
any right conferred by such registration
(2) Notice of the cancellation shall be upon the registrant or any person in
published in the IPO Gazette; interest of record shall terminate.

(3) Immediately Executory—Unless (3) Notice of cancellation shall be published in


restrained by the Director General, the IPO Gazette.
the decision or order to cancel by
Director of Legal Affairs shall be
immediately executory even
pending appeal.
Rights Conferred [Section 71; RA 8293] Rights conferred [Section 147; RA 8293 as amended by RA 9502] [Section 177; RA 8293] Economic
by Patent— A patent shall confer on its Rights Conferred— Rights— Subject to the provisions of
owner the following exclusive rights: Chapter VIII, copyright or economic
(1) Registered Mark—The owner of a rights shall consist of the exclusive
(a) Subject matter is a product— registered mark shall have the exclusive right to carry out, authorize or prevent
Where the subject matter of a right to prevent all third parties not having the following acts:
patent is a product, to restrain, the owner's consent from using in the 1.) Reproduction of the work or
prohibit and prevent any course of trade identical or similar signs or substantial portion of the
unauthorized person or entity from containers for goods or services which are work;
making, using, offering for sale, identical or similar to those in respect of
selling or importing that product; which the trademark is registered where 2.) Dramatization, translation,
such use would result in a likelihood of adaptation, abridgment,
confusion. In case of the use of an arrangement or other
(b) Subject matter is a Process— identical sign for identical goods or transformation of the work;
Where the subject matter of a services, a likelihood of confusion shall be
patent is a process, to restrain, presumed. 3.) The first public distribution of
prevent or prohibit any the original and each copy of
unauthorized person or entity from the work by sale or other
using the process, and from
This is a Derivate Work, unlawful reproduction is a violation of RA 8293. 29
manufacturing, dealing in, using, forms of transfer of ownership;
selling or offering for sale, or Except in cases of importation of drugs and
importing any product obtained medicines allowed under Section 72.1 of 4.) Rental of the original or a copy
directly or indirectly from such this Act and of off-patent drugs and of an audiovisual or
process. medicines, the owner of a registered mark cinematographic work, a work
shall have the exclusive right to prevent all embodied in a sound
(c) Right to Assign or Transfer— third parties not having the owner's consent recording, a computer
The Patent owner shall also have from using in the course of trade identical or program, a compilation of data
the right to assign or transfer by similar signs or containers for goods or and other materials or a
succession the patent, and to services which are identical or similar to musical work in graphic form,
conclude licensing contracts for the those in respect of which the trademark is irrespective of the ownership
same. registered where such use would result in a of the original or the copy
likelihood of confusion. In case of the use of which is the subject of the
an identical sign for identical goods or rental; (n)
services, a likelihood of confusion shall be
presumed. 5.) Public display of the original
or a copy of the work;
"There shall be no infringement of 6.) Public performance of the
trademarks or tradenames of imported or work; and
sold patented drugs and medicines allowed
under Section 72.1 of this Act, as well as 7.) Other communication to the
imported or sold off-patent drugs and public of the work.
medicines: Provided, That, said drugs and
medicines bear the registered marks that [Section 193; RA 8293] Moral
have not been tampered, unlawfully Rights—The author of a work shall,
modified, or infringed upon, under Section independently of the economic rights
155 of this Code. in Section 177 or the grant of an
assignment or license with respect to
(2) Well-known mark; Registered—The such right, have the right:
exclusive right of the owner of a well-
known mark defined in Subsection 1.) To require that the authorship
123.1(e) which is registered in the of the works be attributed to
Philippines, shall extend to goods and him, in particular, the right
services which are not similar to those in that his name, as far as
respect of which the mark is registered: practicable, be indicated in a
Provided, That use of that mark in relation prominent way on the copies,
to those goods or services would indicate a and in connection with the
connection between those goods or public use of his work;
services and the owner of the registered
mark: Provided further, That the interests 2.) To make any alterations of his
of the owner of the registered mark are work prior to, or to withhold it
likely to be damaged by such use. from publication;

3.) To object to any distortion,


mutilation or other

3 This is a Derivate Work, unlawful reproduction is a violation of RA 8293.


0
modification of, or other
derogatory action in relation
to, his work which would be
prejudicial to his honor or
reputation; and

4.) To restrain the use of his


name with respect to any work
not of his own creation or in a
distorted version of his work

Limitations of [Section 72; RA 8293 as amended by RA No Provision provided under RA 8293 [Section 184; RA 8293 as amended
Rights Conferred 9502] Limitation of Patent Rights—The by RA 10372] Limitation of
owner of a patent has no right to prevent Copyright—The following acts shall
third parties from performing, without his not constitute infringement of
authorization, the acts referred to in copyright:
Section 71 hereof in the following (a) The recitation or performance
circumstances: of a work, once it has been
1.) Using a patented product which lawfully made accessible to
has been put on the market in the the public, if done privately
Philippines by the owner of the and free of charge or if made
product, or with his express strictly for a charitable or
consent, insofar as such use is religious institution or society;
performed after that product has (Sec. 10(1), P.D. No. 49)
been so put on the said market:
Provided, That, with regard to The reproduction or
drugs and medicines, the limitation distribution of published
on patent rights shall apply after a articles or materials in a
drug or medicine has been specialized format exclusively
introduced in the Philippines or for the use of the blind,
anywhere else in the world by the visually- and reading-impaired
patent owner, or by any party persons:
authorized to use the invention:
Provided, further, That the right to Provided, That such copies
import the drugs and medicines and distribution shall be made
contemplated in this section shall on a nonprofit basis and shall
be available to any government indicate the copyright owner
agency or any private third party; and the date of the original
publication
2.) Where the act is done privately and
on a non-commercial scale or for a (b) The making of quotations from
non-commercial purpose: Provided, a published work if they are
That it does not significantly compatible with fair use and
prejudice the economic interests of only to the extent justified for
the owner of the patent; the purpose, including
quotations from newspaper
articles and periodicals in the
3.) Where the act consists of making or form of press summaries:
using exclusively for experimental Provided, That the source and

This is a Derivate Work, unlawful reproduction is a violation of RA 8293. 31


use of the invention for scientific the name of the author, if
purposes or educational purposes appearing on the work, are
and such other activities directly mentioned;
related to such scientific or (Sec. 11, third par., P.D. No.
educational experimental use; 49)

4.) In the case of drugs and medicines, (c) The reproduction or


where the act includes testing, communication to the public
using, making or selling the by mass media of articles on
invention including any data current political, social,
related thereto, solely for purposes economic, scientific or
reasonably related to the religious topic, lectures,
development and submission of addresses and other works of
information and issuance of the same nature, which are
approvals by government regulatory delivered in public if such use
agencies required under any law of is for information purposes
the Philippines or of another and has not been expressly
country that regulates the reserved: Provided, That the
manufacture, construction, use or source is clearly indicated;
sale of any product: Provided, That,
in order to protect the data (d) The reproduction and
submitted by the original patent communication to the public
holder from unfair commercial use of literary, scientific or artistic
provided in Article 39.3 of the works as part of reports of
Agreement on Trade-Related current events by means of
Aspects of Intellectual Property photography, cinematography
Rights (TRIPS Agreement), the or broadcasting to the extent
Intellectual Property Office, in necessary for the purpose;
consultation with the appropriate
government agencies, shall issue
the appropriate rules and (e) The inclusion of a work in a
regulations necessary therein not publication, broadcast, or
later than one hundred twenty other communication to the
(120) days after the enactment of public, sound recording or
this law; film, if such inclusion is made
by way of illustration for
5.) Where the act consists of the teaching purposes and is
preparation for individual cases, in compatible with fair use:
a pharmacy or by a medical Provided, That the source and
professional, of a medicine in of the name of the author, if
accordance with a medical shall appearing in the work, are
apply after a drug or medicine has mentioned;
been introduced in the Philippines
or anywhere else in the world by (f) The recording made in
the patent owner, or by any party schools, universities, or
authorized to use the invention: educational institutions of a

3 This is a Derivate Work, unlawful reproduction is a violation of RA 8293.


2
Provided, further, That the right to work included in a broadcast
import the drugs and medicines for the use of such schools,
contemplated in this section shall universities or educational
be available to any government institutions: Provided, That
agency or any private third party; such recording must be
deleted within a reasonable
6.) Where the act is done privately and period after they were first
on a non-commercial scale or for a broadcast: Provided, further,
non-commercial purpose: Provided, That such recording may not
That it does not significantly be made from audiovisual
prejudice the economic interests of works which are part of the
the owner of the patent; general cinema repertoire of
feature films except for brief
7.) Where the act consists of making or excerpts of the work;
using exclusively for experimental
use of the invention for scientific
purposes or educational purposes (g) The making of ephemeral
and such other activities directly recordings by a broadcasting
related to such scientific or organization by means of its
educational experimental use; own facilities and for use in its
own broadcast;
8.) In the case of drugs and medicines,
where the act includes testing, (h) The use made of a work by or
using, making or selling the under the direction or control
invention including any data of the Government, by the
related thereto, solely for purposes National Library or by
reasonably related to the educational, scientific or
development and submission of professional institutions where
information and issuance of such use is in the public
approvals by government regulatory interest and is compatible
agencies required under any law of with fair use;
the Philippines or of another
country that regulates the
manufacture, construction, use or (i) The public performance or the
sale of any product: Provided, That, communication to the public
in order to protect the data of a work, in a place where no
submitted by the original patent admission fee is charged in
holder from unfair commercial use respect of such public
provided in Article 39.3 of the performance or
Agreement on Trade-Related communication, by a club or
Aspects of Intellectual Property institution for charitable or
Rights (TRIPS Agreement), the educational purpose only,
Intellectual Property Office, in whose aim is not profit
consultation with the appropriate making, subject to such other
government agencies, shall issue limitations as may be provided
the appropriate rules and in the Regulations;
regulations necessary therein not
later than one hundred twenty (j) Public display of the original
(120) days after the enactment of or a copy of the work not

This is a Derivate Work, unlawful reproduction is a violation of RA 8293. 33


this law; made by means of a film,
slide, television image or
9.) Where the act consists of the otherwise on screen or by
preparation for individual cases, in means of any other device or
a pharmacy or by a medical process: Provided, That either
professional, of a medicine in the work has been published,
accordance with a medical or, that the original or the
prescription or acts concerning copy displayed has been sold,
medicines so prepared; and given away or otherwise
transferred to another person
10.) Where the invention is used in any by the author or his successor
ship, vessel, aircraft, or land vehicle in title; and
of any other country entering the
territory of the Philippines
temporarily or accidentally: (k) Any use made of a work for
Provided, that such invention is the purpose of any judicial
used exclusively for the needs of proceedings or for the giving of
the ship, vessel, aircraft, or land professional advice by a legal
vehicle and not used for the practitioner.
manufacturing of anything to be
sold within the Philippines.

Infringement of [Section 76; RA 8293 as amended by RA [Sections 155-159; RA 8293 as amended by RA No Provision provided under RA 8293,
Rights 9502] Civil Action for Infringement 9502] Remedies; Infringement—Any person who but relate to the economic rights and
shall, without the consent of the owner of the moral rights of the Author or Creator.
1.) The making, using, offering for sale, registered mark:
selling, or importing a patented (1) Use in commerce any reproduction,
product or a product obtained counterfeit, copy, or colorable imitation of
directly or indirectly from a a registered mark or the same container or
patented process, or the use of a a dominant feature thereof in connection
patented process without the with the sale, offering for sale, distribution,
authorization of the patentee advertising of any goods or services
constitutes patent infringement. including other preparatory steps
necessary to carry out the sale of any
The making, using, offering for sale, goods or services on or in connection with
selling, or importing a patented which such use is likely to cause
product or a product obtained confusion, or to cause mistake, or to
directly or indirectly from a patented deceive; or
process, or the use of a patented
process without the authorization of (2) Reproduce, counterfeit, copy or colorably
the patentee constitutes patent imitate a registered mark or a dominant
infringement: Provided, That, this feature thereof and apply such
shall not apply to instances covered reproduction, counterfeit, copy or colorable
by Sections 72.1 and 72.4 imitation to labels, signs, prints, packages,
(Limitations of Patent Rights); wrappers, receptacles or advertisements
Section 74 (Use of Invention by intended to be used in commerce upon or

3 This is a Derivate Work, unlawful reproduction is a violation of RA 8293.


4
Government); Section 93.6 in connection with the sale, offering for
(Compulsory Licensing); and Section sale, distribution, or advertising of goods
93-A (Procedures on Issuance of a or services on or in connection with which
Special Compulsory License under such use is likely to cause confusion, or to
the TRIPS Agreement) of this Code. cause mistake, or to deceive, shall be liable
in a civil action for infringement by the
2.) Any patentee, or anyone possessing registrant for the remedies hereinafter set
any right, title or interest in and to forth: Provided, That the infringement
the patented invention, whose takes place at the moment any of the acts
rights have been infringed, may stated in Subsection 155.1 or this
bring a civil action before a court of subsection are committed regardless of
competent jurisdiction, to recover whether there is actual sale of goods or
from the infringer such damages services using the infringing material
sustained thereby, plus attorney's
fees and other expenses of [Section 156-157; RA 8293] Actions and
litigation, and to secure an Damages and Injunction for Infringement
injunction for the protection of his
rights. (1) Action for Damages—The owner of a
registered mark may recover damages from
3.) If the damages are inadequate or any person who infringes his rights. If
cannot be readily ascertained with actual intent to mislead the public or to
reasonable certainty, the court may defraud the complainant is shown—the
award by way of damages a sum damages may be doubled.
equivalent to reasonable royalty.
(2) Impounding of Receipts— On application
4.) The court may, according to the of the complainant, the court may
circumstances of the case, award impound during the pendency of the
damages in a sum above the action, sales invoices and other documents
amount found as actual damages evidencing sales;
sustained: Provided, That the
award does not exceed three (3)
times the amount of such actual (3) Injunction— The complainant, upon
damages. proper showing, may also be granted
injunction.
5.) The court may, in its discretion,
order that the infringing goods, (4) Destruction of the Infringing Material—
materials and implements the court may order that goods found to be
predominantly used in the infringing be, without compensation of any
infringement be disposed of outside sort, disposed of outside the channels of
the channels of commerce or commerce in such a manner as to avoid
destroyed, without compensation. any harm caused to the right holder, or
destroyed; and all labels, signs, prints,
6.) Anyone who actively induces the packages, wrappers, receptacles and
infringement of a patent or provides advertisements in the possession of the
the infringer with a component of a defendant, bearing the registered mark or
patented product or of a product trade name or any reproduction,
produced because of a patented counterfeit, copy or colorable imitation
process knowing it to be especially thereof, all plates, molds, matrices and
adopted for infringing the patented other means of making the same, shall be

This is a Derivate Work, unlawful reproduction is a violation of RA 8293. 35


invention and not suitable for delivered up and destroyed.
substantial non-infringing use shall
be liable as a contributory infringer [Section 158; RA 8293] Requirement of Notice
and shall be jointly and severally for Damages— In any suit for infringement, the
liable with the infringer. owner of the registered mark shall not be entitled
to recover profits or damages unless the acts have
[Section 79; RA 8293] Prescription for been committed with knowledge that such
Action of Infringement—No damages can imitation is likely to cause confusion, or to cause
be recovered for acts of infringement mistake, or to deceive. Such knowledge is
committed for more than 4 years before the presumed if the registrant gives notice that his
institution of the action for infringement. mark is registered by displaying with the mark the
words '"Registered Mark" or the letter R within a
circle or if the defendant had otherwise actual
notice of the registration.
Limitations for Refer to Section 72 of RA 8293 [Section 159; RA 8293 as amended by RA 9502] Refer to Section 184 of RA 8293
Action of Limitation to Actions for Infringement—
Infringement Notwithstanding any other provision of this Act,
the remedies given to the owner of a right infringed
under this Act shall be limited as follows:
(1) Notwithstanding the provisions of Section 155
hereof, a registered mark shall have no effect
against any person who, in good faith, before
the filing date or the priority date, was using
the mark for the purposes of his business or
enterprise: Provided, That his right may only
be transferred or assigned together with his
enterprise or business or with that part of his
enterprise or business in which the mark is
used.

(2) Where an infringer who is engaged solely in


the business of printing the mark or other
infringing materials for others is an innocent
infringer, the owner of the right infringed shall
be entitled as against such infringer only to an
injunction against future printing;

(3) Where the infringement complained of is


contained in or is part of paid advertisement
in a newspaper, magazine, or other similar
periodical or in an electronic communication,
the remedies of the owner of the right
infringed as against the publisher or
distributor of such newspaper, magazine, or
other similar periodical or electronic

3 This is a Derivate Work, unlawful reproduction is a violation of RA 8293.


6
communication shall be limited to an
injunction against the presentation of such
advertising matter in future issues of such
newspapers, magazines, or other similar
periodicals or in future transmissions of such
electronic communications. The limitations of
this subparagraph shall apply only to
innocent infringers: Provided, That such
injunctive relief shall not be available to the
owner of the right infringed with respect to an
issue of a newspaper, magazine, or other
similar periodical or an electronic
communication containing infringing matter
where restraining the dissemination of such
infringing matter in any particular issue of
such periodical or in an electronic
communication would delay the delivery of
such issue or transmission of such electronic
communication is customarily conducted in
accordance with the sound business practice,
and not due to any method or device adopted
to evade this section or to prevent or delay the
issuance of an injunction or restraining order
with respect to such infringing matter.

(4) There shall be no infringement of trademarks


or tradenames of imported or sold drugs and
medicines allowed under Section 72.1 of this
Act, as well as imported or sold off-patent
drugs and medicines: Provided, That said
drugs and medicines bear the registered
marks that have not been tampered,
unlawfully modified, or infringed upon as
defined under Section 155 of this Code

This is a Derivate Work, unlawful reproduction is a violation of RA 8293. 37