RA 8293:

- Intellectual Property Code of the Philippines

- A codification of the country’s various intellectual property laws.
- Consolidation of Senate Bill No. 1719 and House Bill No. 80989 approved by President
Ramos on June 6, 1997 and effective on January 1, 1998
- Repealed RA 165 – established an independent patent system; RA 166 that governs
Trademark and PD 49 known as Decree on Intellectual Property and Articles 188 and
189 of the Revised Penal Code

Purpose:

 to promote the diffusion of knowledge and information for the promotion of national
development and progress and the common good
 to streamline administrative procedures of registering patents, trademarks and copyright
 to liberalize the registration on the transfer of technology
 to enhance the enforcement of intellectual property rights in the Philippines

FIRST TO FILE RULE:

- if two or more persons have made the invention separately and independently of each
other, the right to the patent shall belong to the person who filed an application for such
invention, or where two or more applications are filed for the same invention, to the
applicant who has the earliest filing date or, the earliest priority date.

- Filing date is the day when all the requirements provided under the Code are present:
 an express or implicit indication that a Philippine patent is sought
 information identifying the applicant
 description of the invention and
 one or more claims in Filipino or in English

- Priority date is the date of the filing of the foreign application in a country which by
treaty, convention or law affords similar privileges to Filipino citizens provided that
 The local application expressly claims priority
 It is filed within 12 months from the date the earliest foreign application was filed
 A certified copy of the foreign application together with an English translation is
filed within 6 months from the date of filing in the Philippines

NOVELTY:

- An invention shall not be considered new if it forms part of a prior art.

 - Is present if after having regard to prior art, it is not obvious to a person skilled in the art
at the time of filing date or priority date of application claiming the invention.

- Section 24. Prior Art. - Prior art shall consist of:

 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

 The whole contents of an application for a patent, utility model, or industrial design
registration, published in accordance with this Act, filed or effective in the Philippines,
with a filing or priority date that is earlier than the filing or priority date of the application:
Provided, That the application which has validly claimed the filing date of an earlier
application under Section 31 of this Act, shall be prior art with effect as of the filing date
of such earlier application: Provided further, That the applicant or the inventor identified
in both applications are not one and the same. (Sec. 9, R.A. No. 165a)

TRADEMARK: p. 149
- A distinctive mark of authenticity through which the merchandise of a particular producer
or manufacturer may be distinguished from that of others

*Use of identical mark if taken alone does not automatically guarantee a finding of trademark
infringement.

*The law likewise disallows use of marks that resembles a registered mark if such is likely to
deceive or cause confusion.

*Likelihood of confusion is enough to make a case for trademark infringement. Actual proof of
confusion is not necessary.

COLLECTIVE WORK:
- Any visible sign designated as such in the application for registration and capable of
distinguishing the origin or another common characteristic, including the quality of goods
or services of different enterprises which use the sign under the control of the registered
owner of the collective mark.

AUTHOR:
- A person who has created a work.

TERM OF PATENT:
 - 20 years

COPYRIGHT:
- Copyright is a right over literary and artistic works which are original intellectual creations
in the literary and artistic domain protected from the moment of creation.

- Copyright in a work of architecture shall include the right to control the erection of any
building which reproduces the whole or a substantial part of the work either in its original
form or in any form recognizable derived from the original, provided that the copyright in
any such work shall not include the right to control the reconstruction or rehabilitation in
the same style as the original of a building to which the copyright relates.

REGISTRATION (TRADEMARK)
- The rights through a mark may be acquired through registration
- Actual use in commerce is also the test of ownership but the mark must not have been
appropriated by another.
- One may be an owner of a mark due to its actual use but may not have the right to
register such ownership due to the owner’s failure to use the same in the Philippines for
2 months prior to registration.
- It is not the application or registration of a trademark that vests ownership but it is the
ownership of a trademark that confers the right to register the same.

TECHNOLOGY TRANSFER ARRANGEMENT:

- Contracts or agreements involving the transfer of systematic knowledge for the

manufacture of a product, the application of a process, or rendering of a service
including management contracts and the transfer, assignment or licensing of all forms of
intellectual property rights, including licensing of computer software developed for mass
market
- It is in the nature of a licensing contract granted by a licensor to a licensee to
commercially exploit the same intellectual property rights under specified terms and
conditions.

Mandatory provisions:

 Philippine laws to govern interpretations of the agreement and venue in case of litigation
 Continued access to improvements in techniques and processes related to the
technology shall be made available
 In case of arbitration, the arbitration law of the Philippines or of the UNICITRAL or the
Rules of Conciliation and Arbitration of ICC shall apply and venue shall be the
Philippines or any neutral country
  Philippine taxes shall be borne by the licensor

DOMINANCY TEST:
- Focuses on the similarity of the prevalent features of the competing trademarks which
might cause confusion or deception and thus infringement.

 Duplication or imitation is not necessary nor is it necessary that the infringing label
should suggest an effort to imitate. The question is whether the use of the marks
involved is likely to cause confusion or mistake in the mind of the public or deceive
purchasers.

*Holistic or totality test entails the consideration of the entirety of the marks as applied to the
products, including the labels and packaging, in determining confusing similarity.

INDUSTRIALLY APPLICABLE:
- An invention that can be produced and used in any industry

DIRECTOR GENERAL OF THE IPO: p. 106

- Has the authority to grant or not the compulsory licensing of the invention

DIRECTOR OF LEGAL AFFAIRS:

- Has original jurisdiction over petitions for compulsory licensing of patents

- Has jurisdiction to hear petition for cancellation of patent

TRADE NAME:
- is the name or designation identifying or distinguishing an enterprise
- need not be registered with the IPO before an infringement may be filed by the owner
against owner of an infringing IP right.

RECIPIENT:
- Letters and other private communications in writing are owned by the person to whom
they are addressed and delivered, but they cannot be published or disseminated without
 the consent of the writer or his heirs. However, the court may authorize their publication
or dissemination if the public good or the interest of justice so requires.

DURATION OF WORK OF APPLIED ART (25 YEARS):

- is an artistic creation with utilitarian functions or incorporated in a useful article, whether

made by hand or produced on an industrial scale;

PATENT INFRINGEMENT:

- the making, using, offering for sale, selling, or importing a patented product or a product
obtained directly or indirectly from a patented process, or the use of a patented process
without the authorization of the patentee.

*The person possessing any right, title or interest in and to the patented invention whose
rights have been infringed may

 bring a civil action before a court of competent jurisdiction against the infringer
 may recover such damages sustained plus attorney’s fees and other expenses of
litigation
 secure an injunction for the protection of his rights

If the damages are inadequate or cannot be readily ascertained with reasonable certainty, the
court may award by way of damages a sum equivalent to reasonable royalty. The court may,
award damages in a sum above the amount found as actual damages sustained provided that
the award does not exceed three times the amount of such actual damages.

The court may, in its discretion, order that the infringing goods, materials and implements
predominantly used in the infringement be disposed of outside the channels of commerce or
destroyed without compensation.

Criminal liability (penalty of 6 months to 3 years and/or a fine of 100k – 300k) only inures when
the infringement is repeated.

COPYRIGHT INFRINGEMENT:
- Copyright infringement is a violation of the rights of the copyright holder, when material
is used without the copyright holder’s consent,

MARK IS WELL KNOWN: p. 232

*A mark is well-known if it is considered by the competent authority of the Philippines to be well-
known internationally and in the Philippines and that in determining whether a mark is well-
known, account shall be taken of the knowledge of the relevant sector of the public, rather than
of the public at large, including knowledge in the Philippines which has been obtained as a
result of promotion of the mark.

*If the well-known mark is registered in the Philippines, the prohibition to use that mark by
another entity extends to non-related goods or services.

*Generic terms are those which constitute the common descriptive name of an article or
substance, or comprise the genus of which the particular product is a species, or are commonly
used as the name or description of a kind of goods

*Descriptive if it conveys the characteristics, functions, qualities or ingredients of a product

* Trademarks that are considered well-known may be protected in the Philippines even without
registration.

INVENTIVE STEP:
- An invention involves an inventive step if, having regard to prior art, it is not obvious to a
person skilled in the art at the time of the filing date or priority date of the application
claiming the invention.
- Connotes that the invention should not be obvious not to the general public but to a
person skilled in the art for it to be patented.

PERSON SKILLED IN THE ART:

- a person who is presumed to be an ordinary practitioner aware of what was common
general knowledge in the art at the relevant date

DERIVATIVE WORK:

Derivative Works. - 173.1. The following derivative works shall also be protected by copyright:

(a) Dramatizations, translations, adaptations, abridgments, arrangements, and other

alterations of literary or 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. (Sec. 2, [P] and [Q], P.D. No. 49)
10 YEARS
- is the term of trademark

FAIR USE (FACTOR):

Fair Use – is using somebody else’s work fairly.

In determining fair use, the following factors are to be considered”

 The purpose and character of the use, including whether such use is of a commercial
nature or is for non-profit educational purposes
 The nature of the copyrighted work
 The amount and substantiality of the portion used in relation to the copyrighted work as
a whole
 The effect of the use upon the potential market or value of the copyrighted work

Only natural person may avail of the right to private reproduction of a published work in a single
copy.

The purpose is exclusively for research and private study. Thus reading for pleasure is not
allowed.

Doctrine of fair use: permits a secondary use that serves the copyright objective of stimulating
productive thought and public instruction without excessively diminishing the incentives for
creativity.

PARALLEL IMPORTATION:
- Importation of drugs and medicines by a government agency or any private third party
- is the unauthorized importation of original goods bearing authentic trademarks from
other authorized sources and their distribution or sale in the country by entities other
than the exclusive distributors.

IDEM SONANS RULE (DOMINANCY TEST ON TRADEMARK)

- the rule in which the word that has been heard is different from the one that is written.
- Two names are said to be idem sonantes if the attentive ear finds difficulty in
distinguishing them when pronounced

LAYOUT DESIGN:
 - synonymous with Topography and means the three-dimensional disposition, however
expressed, of the elements, at least one of which is an active element, and of some or
all of the interconnections of an integrated circuit, or such a three-dimensional
disposition prepared for a integrated circuit intended for manufacture.

DOCTRINE OF EQUIVALENTS:
- provides that an infringement also takes place when a device appropriates a prior
invention by incorporating its innovative concept and although with some modification
and change, performs substantially the same function in substantially the same way to
achieve substantially the same result.

UNFAIR COMPETITION:
- Consists of the passing off (or palming off) or attempting to pass off upon the public of
the goods or business of one person as the goods or business of another with the end
and probable effect of deceiving the public.

Elements of unfair competition:

 Confusing similarity in the general appearance of the goods

 Intent to deceive the public and defraud a competitor.

*Unfair competition may subsist even in the absence of trademark infringement.

AURAL EFFECT:
- Another term for idem sonans rule in which it is used in dominancy test which takes
account of the following:

DECOMPILATION:

- reproduction of the code and translation of the forms of the computer program to achieve
the inter-operability of an independently created computer program with other programs may
also constitute fair use. In determining whether the use made of a work in any particular case is
fair use, the factors to be considered shall include:

(a) The purpose and character of the use, including whether such use is of a commercial
nature or is for non-profit educational purposes;

(b) The nature of the copyrighted work;

 (c) The amount and substantiality of the portion used in relation to the copyrighted work
as a whole; and

(d) The effect of the use upon the potential market for or value of the copyrighted work.

- may constitute fair use

COLORABLE IMITATION:
- defined as that which denotes such a close or ingenious imitation as to be calculated to
deceive ordinary persons, or such a resemblance to the original as to deceive an
ordinary purchaser giving such attention as a purchases usually gives, as to cause him
to purchase the one supposing it to be the other.

CONFUSION OF GOODS:
- when an otherwise prudent purchaser is induced to purchase one product in the belief
that he is purchasing another, in which case defendant’s good are then bought as the
plaintiff’s and its poor quality reflects badly on the plaintiff’s reputation.

*There is confusion of business when the goods of the parties are different but the defendant’s
product can reasonably though mistaken, be assumed to originate from its plaintiff, thus
deceiving the public into believing that there is some connection between the plaintiff and
defendant which, in fact, does not exist.

DOCTRINE OF SECONDARY MEANING

- The doctrine of secondary meaning means that a word or phrase originally incapable
of exclusive appropriation with reference to an article in the market has, through its long
and exclusive use by one entity has effectively been distinguished and identified as that
representing the user and its products.

- May refer to an incident where a generic or a descriptive mark may later on acquire the
characteristic of a distinctive mark.

NON-PREJUDICIAL DISCLOSURE
- Refers to disclosure made during the 12 months preceding the filing date or the priority
date of the application
  The application will not be denied for lack of novelty if disclosure was made by any of the
following persons:
a. The inventor
b. A patent office and the information was contained a) in another application filed by
the inventor and should not have been disclosed by the office or b)in an application
filed without the knowledge or consent of the inventor by a third party which obtained
the information directly or indirectly from the inventor.
c. A third party which obtained the information directly or indirectly from the inventor.

PRINCIPLE OF RECIPROCITY:
- Any person who is a national or who is domiciled or has a real and effective industrial
establishment in a country which is a party to any convention, treaty or agreement
relating to intellectual property rights or the repression of unfair completion, to which the
Philippines is also a party, or extends reciprocal rights to nationals of the Philippines by
law, shall be entitled to benefits to the extent necessary to give effect to any provision of
such convention, treaty or reciprocal law in addition to the rights to which any owner of
an intellectual property right is otherwise entitled by the law.

INTER PARTES CASES:

- Refer to cases that are contested and are filed before the IPO.