2011 Ip Code Outline - Feu Commercial Law Review

FEU INSTITUTE OF LAW
COMMERCIAL LAW REVIEW INTELLECTUAL PROPERTY CODE

I. PATENTS
A. SUBJECT MATTER OF PROTECTION
ATTY. ALEXANDER C. DY 3 TRIMESTER, SY 2011-2012

RD
1. Patentable Inventions Sec. 21: Any technical solution of a problem in any field of human activity which is: (a) new; (b) involves an inventive step; and (c) is industrially applicable shall be patentable. It may be, or may relate to: a. machine; b. product; c. process; d. an improvement of any of the foregoing; e. Sec. 22.4: micro-organisms; or f. non-biological and microbiological processes 2. Non-Patentable Inventions Sec. 22: The following shall be excluded from patent protection: a. Sec. 22.1: Discoveries, scientific theories and mathematical methods; b. Sec. 22.2: Schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers; c. Sec. 22.3: Methods for treatment of human or animal body by surgery or therapy and diagnostic methods practiced on human or animal body. This provision shall not apply to products and composition for use in any of these methods; d. Sec. 22.4: Plant varieties or animal breeds or essentially biological process for the production of plants or animals;1 e. Sec. 22.5: Aesthetic creations; and f. Sec. 22.6: Anything which is contrary to public order or morality.
Section 22.4 further provides that: Provisions under this subsection shall not preclude Congress to consider the enactment of a law providing sui generis of plant varieties and animal breeds and a system of community intellectual rights protection
B. CONDITIONS OF PROTECTION
1. Substantive Requirements a. Sec. 23: Novelty An invention shall not be considered new if it forms part of a prior art. i. Sec. 24: Prior Art Prior art shall consist of: (a) Sec. 24.1: Everything made available to public anywhere in the world, before filing date or priority date of application claiming invention; and (b) Sec. 24.2: Whole contents of application for patent, utility model, or industrial design registration, published in accordance with IP Code, filed or effective in Philippines, with filing or priority date earlier than filing or priority date of application: Provided, That application which has validly claimed filing date of earlier application under Sec. 31, shall be prior art with effect as of filing date of such earlier application: Provided further, That applicant or inventor identified in both applications are not one and same. ii. Sec. 25.1: Non-Prejudicial Disclosure Disclosure of information contained in application during the 12 months preceding filing date or priority date of application shall not prejudice applicant on ground of lack of novelty if such disclosure was made by: (a) Inventor;2 (b) Patent office and information was contained (a) in another application filed by inventor and should not have been disclosed by the office, or (b) in application filed without knowledge or consent of inventor by third party which obtained information directly or indirectly from inventor; or (c) Third party which obtained information directly or indirectly from inventor. b. Sec. 26: Inventive Step Invention involves inventive step if, having regard to prior art, it is not obvious to person skilled in art at time of filing date or priority date of application claiming invention. c. Sec. 27: Industrial Applicability Invention that can be produced and used in any industry shall be industrially applicable. 2. Formal Requirements/Procedure for Application and Grant of Patent a. Patent Application Secs. 32 to 39
Sec. 25.2 provides that, For the purposes of Subsection 25.1, "inventor" also means any person who, at the filing date of application, had the right to the patent.
b. Procedure After Application: i. Sec. 40: Filing Date Requirements ii. Sec. 41: According a Filing Date iii. Sec. 42: Formality Examination iv. Sec. 43: Classification and Search c. Publication and Procedure After Application: i. Sec. 44: Publication of Patent Application ii. Sec. 45: Confidentiality Before Publication iii. Sec. 46: Rights Conferred by a Patent Application After Publication iv. Sec. 47: Observation by Third Parties v. Sec. 48: Request for Substantive Examination vi. Sec. 49: Amendment of Application d. Grant of Patent i. Sec. 50: Grant of Patent ii. Sec. 51: Refusal of the Application iii. Sec. 52: Publication Upon Grant of Patent iv. Sec. 53: Contents of Patent e. Requirements/Actions After Grant i. Sec. 55: Annual Fees ii. Sec. 56: Surrender of Patent iii. Sec. 57: Correction of Mistakes of the Office iv. Sec. 58: Correction of Mistake in the Application v. Sec. 59: Changes in Patents vi. Sec. 60: Form and Publication of Amendment
C. OWNERSHIP
1. The Inventor Sec. 28. Right to patent belongs to inventor, his heirs, or assigns. 2. Joint Invention Sec. 28: For inventions jointly made by 2 or more persons right to patent shall belong to them jointly 3. Inventions Made for Hire a. Sec. 30.1: Person who commissions work shall own patent, unless contrary agreement.
b. Sec. 30.2: For employee who made invention in course of his employment contract, patent shall belong to: i. Employee, if inventive activity is not part of his regular duties even if employee uses time, facilities and materials of employer. ii. Employer, if invention is result of performance of his regularlyassigned duties, unless contrary agreement, express or implied. 4. Sec. 29: First to File Rule If 2 or more persons have made invention separately and independently of each other, right to patent shall belong to person who filed an application for such invention, or where 2 or more applications are filed for same invention, to applicant who has earliest filing date or earliest priority date. 5. Sec. 31: Right of Priority Application for patent filed by any person who previously applied for same invention in another country which by treaty, convention, or law affords similar privileges to Filipino citizens, shall be considered as filed as of the date of filing foreign application: Provided: a. Local application expressly claims priority; b. It is filed within 12 months from date earliest foreign application was filed; and c.. Certified copy of foreign application together with English translation is filed within 6 months from date of filing in Philippines.
D. TRANSFER OF OWNERSHIP
1. Sec. 103: Transmission of Rights in General a. Sec. 103.1: Patents or applications for patents and invention to which they relate, shall be protected in same way as rights of other property under Civil Code. b. Sec. 103.2. Inventions and any right, title or interest in and to patents and inventions covered thereby, may be assigned or transmitted by inheritance or bequest or may be subject of license contract. c. Sec. 107: Rights of Joint Owners If 2 or more persons jointly own patent and invention covered thereby, either by issuance of patent in their joint favor or by reason of assignment of an undivided share in patent and invention or by reason of the succession in title to such share, each of joint owners shall be entitled to personally make, use, sell, or import invention for his own profit: Provided, however, That neither of joint owners shall be entitled to grant licenses or to assign his right, title or interest or part thereof without consent of other owners, or without proportionally dividing proceeds with such other owners.
d. Sec. 106: Recording i. Sec. 106.1: IPO record assignments, licenses and other instruments relating to transmission of right, title or interest in and to inventions, and patents or application for patents or inventions to which they relate. ii. Sec. 106.2: Such instruments shall be void as against any subsequent purchaser or mortgagee for valuable consideration and without notice, unless, it is so recorded in IPO, within 3 months from date of said instrument, or prior to subsequent purchase or mortgage. 2. Assignment a. Sec. 104: Assignment may be of entire right, title or interest in and to patent and invention covered thereby, or of an undivided share thereof, in which event parties become joint owners thereof. An assignment may be limited to specified territory. b. Sec. 105: Form of Assignment 3. Voluntary Licensing a. Sec. 85: Voluntary License Contract To encourage transfer and dissemination of technology, prevent or control practices and conditions that may in particular cases constitute abuse of intellectual property rights having adverse effect on competition and trade, all technology transfer arrangements shall comply with the provisions of this Chapter. b. Sec. 86: Jurisdiction to Settle Disputes on Royalties Director of the Documentation, Information and Technology Transfer Bureau c. Sec. 87. Prohibited Clauses - Except in cases under Sec. 91 (Exceptional Cases), the provisions enumerated in Sec. 87 shall be deemed prima facie to have adverse effect on competition and trade.3
Sec. 87 enumerates the prohibited clauses, as follows: 87.1. Those which impose upon the licensee the obligation to acquire from a specific source capital goods, intermediate products, raw materials, and other technologies, or of permanently employing personnel indicated by the licensor; 87.2. Those pursuant to which the licensor reserves the right to fix the sale or resale prices of the products manufactured on the basis of the license; 87.3. Those that contain restrictions regarding the volume and structure of production; 87.4 Those that prohibit the use of competitive technologies in a non-exclusive technology transfer agreement; 87.5. Those that establish a full or partial purchase option in favor of the licensor; 87.6. Those that obligate the licensee to transfer for free to the licensor the inventions or improvements that may be obtained through the use of the licensed technology; 87.7. Those that require payment of royalties to the owners of patents for patents which are not used; 87.8. Those that prohibit the licensee to export the licensed product unless justified for the protection of the legitimate interest of the licensor such as exports to countries where exclusive licenses to manufacture and/or distribute the licensed product(s) have already been granted;
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d. Sec. 88: Mandatory Provisions The provisions enumerated in Sec. 88 shall be included in voluntary license contracts.4 e. Sec. 89: Rights of Licensor In absence of contrary provision, grant of license shall not prevent licensor from granting further licenses to third person nor from exploiting subject matter of technology transfer arrangement himself. f. Sec. 90: Rights of Licensee Licensee entitled to exploit subject matter of technology transfer arrangement during whole term thereof. g. Sec. 92: Non-Registration with the Documentation, Information and Technology Transfer Bureau Technology transfer arrangements that conform with provisions of Secs. 86 and 87 need not be registered. h. Sec. 92: Effect of Violation Non-conformance with any of provisions of Secs. 87 and 88, however, shall automatically render technology transfer arrangement unenforceable, unless approved and registered under provisions of Sec. 91 on exceptional cases.
E. SCOPE OF EXCLUSIVE RIGHTS

87.9. Those which restrict the use of the technology supplied after the expiration of the technology transfer arrangement, except in cases of early termination of the technology transfer arrangement due to reason(s) attributable to the licensee; 87.10. Those which require payments for patents and other industrial property rights after their expiration, termination arrangement; 87.11. Those which require that the technology recipient shall not contest the validity of any of the patents of the technology supplier; 87.12. Those which restrict the research and development activities of the licensee designed to absorb and adapt the transferred technology to local conditions or to initiate research and development programs in connection with new products, processes or equipment; 87.13. Those which prevent the licensee from adapting the imported technology to local conditions, or introducing innovation to it, as long as it does not impair the quality standards prescribed by the licensor; 87.14. Those which exempt the licensor for liability for non-fulfillment of his responsibilities under the technology transfer arrangement and/or liability arising from third party suits brought about by the use of the licensed product or the licensed technology; and 87.15. Other clauses with equivalent effects. 4 Sec. 88 enumerates the mandatory clauses, as follows: 88.1. That the laws of the Philippines shall govern the interpretation of the same and in the event of litigation, the venue shall be the proper court in the place where the licensee has its principal office; 88.2. Continued access to improvements in techniques and processes related to the technology shall be made available during the period of the technology transfer arrangement; 88.3. In the event the technology transfer arrangement shall provide for arbitration, the Procedure of Arbitration of the Arbitration Law of the Philippines or the Arbitration Rules of the United Nations Commission on International Trade Law (UNCITRAL) or the Rules of Conciliation and Arbitration of the International Chamber of Commerce (ICC) shall apply and the venue of arbitration shall be the Philippines or any neutral country; and 88.4. The Philippine taxes on all payments relating to the technology transfer arrangement shall be borne by the licensor.
1. Sec. 71: Rights Conferred by Patent a. Sec. 71.1: Exclusive rights: i. If subject matter is a product To restrain, prohibit and prevent any unauthorized person or entity from making, using, offering for sale, selling or importing that product; ii. If subject matter is a process To restrain, prevent or prohibit any unauthorized person or entity from using the process, and from manufacturing, dealing in, using, selling or offering for sale, or importing any product obtained directly or indirectly from such process. b. Sec. 71.2: To assign, or transfer by succession the patent, and to conclude licensing contracts for the same. 2. Sec. 75: Extent of Protection and Interpretation of Claims a. Sec. 75.1: Extent of protection conferred by patent shall be determined by claims, which are to be interpreted in light of description and drawings. b. Sec. 75.2: For purpose of determining extent of protection conferred by patent, due account shall be taken of elements which are equivalent to elements expressed in claims, so that claim shall be considered to cover not only all elements as expressed therein, but also equivalents. See Doctrine of Equivalents, infra. 3. Sec. 46: Rights Conferred by Patent Application After Publication Applicant shall have all rights of patentee under Sec. 76 against any person who, without his authorization, exercised any of rights conferred under Sec. 71 in relation to invention claimed in published patent application, as if patent had been granted for that invention: Provided, That said person had: a. Sec. 46.1: Actual knowledge that invention that he was using was subject matter of published application; or b. Sec. 46.2: Received written notice that invention that he was using was subject matter of published application being identified in said notice by its serial number: Provided, That action may not be filed until after grant of patent on published application and within 4 years from commission of acts complained of.
F. LIMITATION OR EXEMPTIONS TO SCOPE OF PATENT PROTECTION

1. Limitation of Patent Rights Sec. 72: Owner of patent has no right to prevent third parties from performing, without his authorization, acts referred to in Sec. 71 hereof in following circumstances: a. Sec. 72.1: Using patented product put on the market in Philippines by owner of product, or with his express consent, insofar as such use is performed after product has been so put on said market; b. Sec. 72.2: Act is done privately and on a non-commercial scale or for a non-commercial purpose: Provided, That it does not significantly prejudice the economic interests of owner of patent; c. Sec. 72.3: Act consists of making or using exclusively for purpose of experiments that relate to subject matter of patented invention; d. Sec. 72.4: Act consists of preparation for individual cases, in pharmacy or by medical professional, of medicine in accordance with medical prescription or acts concerning the medicine so prepared; e. Sec. 72.5: Invention is used in any ship, vessel, aircraft, or land vehicle of any other country entering the territory of Philippines temporarily or accidentally: Provided, That such invention is used exclusively for needs of ship, vessel, aircraft, or land vehicle and not used for manufacturing of anything to be sold within Philippines. 2. Prior User Sec. 73 a. Sec. 73.1: Notwithstanding Sec. 72, any prior user, who, in good faith was using invention or has undertaken serious preparations to use invention in his enterprise or business, before filing date or priority date of application on which a patent is granted, shall have right to continue use thereof as envisaged in such preparations within territory where patent produces its effect. b. Sec. 73.2: Right of prior user may only be transferred or assigned together with his enterprise or business, or with part of his enterprise or business in which use or preparations for use have been made. 3. Use of Invention by Government5 Sec. 74.1: Government agency or third person authorized by Government may exploit invention even without agreement of patent owner where: a. Public interest, in particular, national security, nutrition, health or development of other sectors, as determined by appropriate agency of the government, so requires; or b. Judicial or administrative body has determined that manner of exploitation, by owner of patent or his licensee, is anti-competitive.
Sec. 74.2 provides that, The use by the Government, or third person authorized by the Government shall be subject, mutatis mutandis, to the conditions set forth in Sections 95 to 97 and 100 to 102.
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4. Compulsory Licensing a. Sec. 93: Grounds for Compulsory Licensing License to exploit patented invention, even without agreement of patent owner, in favor of any person who has shown his capability to exploit invention, under any of following circumstances: i. Sec. 93.1: National emergency or other circumstances of extreme urgency; ii. Sec. 93.2: Public interest, in particular, national security, nutrition, health or development of other vital sectors of national economy as determined by appropriate agency of Government, so requires; or iii. Sec. 93.3: Judicial or administrative body has determined that manner of exploitation by owner of patent or his licensee is anticompetitive; or iv. Sec. 93.4: In case of public non-commercial use of patent by patentee, without satisfactory reason; v. Sec. 93.5: If patented invention is not being worked in Philippines on commercial scale, although capable of being worked, without satisfactory reason: Provided, That importation of patented article shall constitute working or using patent. b. Sec. 94: Period for Filing Petition for Compulsory License c. Sec. 95: Requirement Commercial Terms to Obtain License on Reasonable
i. Sec. 95.1: License will only be granted after petitioner has made efforts to obtain authorization from patent owner on reasonable commercial terms and conditions but such efforts have not been successful within reasonable period of time. ii. Sec. 95.2: Requirement under Sec. 95.1 shall not apply: (a) Where petition for compulsory license seeks to remedy practice determined after judicial or administrative process to be anticompetitive; (b) In situations of national emergency or other circumstances of extreme urgency Sec. 95.3: Right holder shall be notified as soon as reasonably practicable (c) In cases of public non-commercial use Sec. 95.4: Right holder shall be informed promptly d. Sec. 96: Compulsory Licensing of Patents Involving Semi-Conductor Technology. e. Sec. 97: Interdependence If invention protected by patent ("second patent") within country cannot be worked without infringing another patent ("first patent") granted on prior application or benefiting from 9
earlier priority, compulsory license may be granted to owner of second patent to extent necessary for working of his invention, subject to following: i. Sec. 97.1: Invention claimed in second patent involves important technical advance of considerable economic significance in relation to first patent; ii. Sec. 97.2: Owner of first patent entitled to a cross-license on reasonable terms to use invention claimed in second patent; iii. Sec. 97.3: Use authorized in respect of first patent shall be nonassignable except with assignment of second patent; and iv. Sec. 97.4: Terms and conditions of Secs. 95, 96 and 98 to 100. f. Sec. 98: Form and Contents of Petition g. Sec. 99: Notice of Hearing h. Sec. 100: Terms and Conditions of Compulsory License i. Sec. 100.1: Scope and duration of such license limited to purpose for which it was authorized; ii. Sec. 100.2: License shall be non-exclusive; iii. Sec. 100.3: License shall be non-assignable, except with part of enterprise or business with which invention is being exploited; iv. Sec. 100.4: Use of subject matter of license devoted predominantly for supply of Philippine market: Provided, That limitation shall not apply where grant of license is based on ground that patentees manner of exploiting patent is determined by judicial or administrative process to be anti-competitive. v. Sec. 100.5: License may be terminated upon proper showing that circumstances which led to its grant have ceased to exist and are unlikely to recur: Provided, That adequate protection shall be afforded to legitimate interest of licensee; and vi. Sec. 100.6: Patentee shall be paid adequate remuneration taking into account the economic value of grant or authorization, except that in cases where license was granted to remedy practice which was determined after judicial or administrative process, to be anticompetitive, need to correct the anti-competitive practice may be taken into account in fixing the amount of remuneration.
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i. Sec. 101: Amendment, Cancellation, Surrender of Compulsory License. i. Sec. 101.1: Upon request of patentee or licensee, Director of Legal Affairs may amend decision granting compulsory license, upon proper showing of new facts or circumstances justifying such amendment. ii. Sec. 101.2: Upon request of patentee, Director may cancel compulsory license: (a) If ground for grant of compulsory license no longer exists and is unlikely to recur; (b) If licensee has neither begun to supply domestic market nor made serious preparation therefor; (c) If licensee has not complied with prescribed terms of license. iii. Sec. 101.3: Licensee may surrender license by a written declaration submitted to the IPO. iv. Sec. 101.4: Director shall cause amendment, surrender, or cancellation in Register, notify patentee, and/or licensee, and cause notice thereof to be published in IPO Gazette. j. Sec. 102: Licensees Exemption from Liability Any person who works patented product, substance and/or process under license granted under this Chapter, shall be free from any liability for infringement: Provided however, That in case of voluntary licensing, no collusion with licensor is proven. This is without prejudice to right of rightful owner of patent to recover from licensor whatever he may have received as royalties under license.
G. DURATION OF PROTECTION
1. Sec. 54: Term of Patent 20 years from filing date of application.
H. INFRINGEMENT AND REMEDIES

1. Sec. 76 Civil Action for Infringement. a. Definition: i. Sec. 76.1: Making, using, offering for sale, selling, or importing patented product or product obtained directly or indirectly from patented process, or use of patented process without authorization of patentee constitutes patent infringement. b. Tests to Determine Infringement: i. Literal Infringement If challenged matter clearly falls within claim (resort is made to words of claim), literal infringement exists. 11
ii. Doctrine of Equivalents When device appropriates prior invention by incorporating innovative concept and, despite some modification and change, performs substantially same function in substantially same way to achieve substantially same result. c. Jurisdiction with Regular Courts Sec. 76.2 d. Who May Bring Suit i. Sec. 76.2: Any patentee, or anyone possessing any right, title or interest in and to patented invention, whose rights have been infringed, may bring civil action before court of competent jurisdiction, to recover from infringer such damages sustained thereby, plus attorneys fees and other expenses of litigation, and to secure an injunction for protection of his rights. ii. Sec. 77: Infringement Action by a Foreign National Any foreign national or juridical entity who meets requirements of Sec. 3 and not engaged in business in Philippines, to which patent has been granted or assigned under IP Code, may bring an action for infringement of patent, whether or not it is licensed to do business in Philippines under existing law. e. Who May Be Held Liable i. Sec. 76.2: Infringer ii. Sec. 76.6: Anyone who actively induces infringement of patent or provides infringer with component of patented product or of product produced because of patented process knowing it to be especially adopted for infringing patented invention and not suitable for substantial non-infringing use shall be liable as contributory infringer and shall be jointly and severally liable with infringer. f. Defenses Sec. 81: Defendant, in addition to other defenses available to him, may show the invalidity of patent, or any claim thereof, on any of grounds on which petition of cancellation can be brought under Sec. 61 hereof. g. Presumptions Sec. 78: If subject matter of patent is process for obtaining product, any identical product shall be presumed to have been obtained through use of patented process if product is new or there is substantial likelihood that identical product was made by process and owner of patent has been unable despite reasonable efforts, to determine process actually used. In ordering defendant to prove that process to obtain identical product is different from patented process, court shall adopt measures to protect, as far as practicable, his manufacturing and business secrets. h. Assessor in Infringement Action Sec. 83
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i. Reliefs Granted i. Damages (a) Sec. 76.3: If damages are inadequate or cannot be readily ascertained with reasonable certainty, court may award by way of damages sum equivalent to reasonable royalty. (b) Sec. 76.4: Court may, according to circumstances of case, award damages in sum above amount found as actual damages sustained: Provided, That award does not exceed 3 times amount of such actual damages. (c) Sec. 80: Damages cannot be recovered for acts of infringement committed before infringer had known; or had reasonable grounds to know of patent. It is presumed that infringer had known of patent if on patented product, or on container or package in which article is supplied to public, or on advertising material relating to patented product or process, are placed words "Philippine Patent" with number of patent. ii. Injunction Sec. 76.2 iii. Destruction of Infringing Materials Sec. 76.5: Court may, in its discretion, order that infringing goods, materials and implements predominantly used in infringement be disposed of outside channels of commerce or destroyed, without compensation. iv. Patent Found Invalid May be Cancelled Sec. 82: In action for infringement, if court shall find patent or any claim to be invalid, it shall cancel the same, and Director of Legal Affairs upon receipt of final judgment of cancellation by court, shall record that fact in register of IPO and publish notice to that effect in IPO Gazette. j. Prescription Sec. 79: No damages can be recovered for acts of infringement committed more than 4 years before institution of action for infringement. 2. Sec. 84 Criminal Action for Repetition of Infringement: If infringement is repeated by infringer or by anyone in connivance with him after finality of judgment of court against infringer, offenders shall, without prejudice to institution of civil action for damages, be criminally liable therefor and, upon conviction, shall suffer imprisonment for period of not less than 6 months but not more than 3 years and/or fine of not less than P100,000 but not more than P300,000, at discretion of court. Criminal action herein provided shall prescribe in 3 years from date of commission of crime.
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3. Sec. 61 Cancellation of Patents a. Grounds Sec. 61.1:6 Any interested person may, upon payment of required fee, petition to cancel patent or any claim thereof, or parts of the claim, on any of following grounds: i. What is claimed as invention is not new or patentable; ii. Patent does not disclose invention in manner sufficiently clear and complete for it to be carried out by any person skilled in the art; or iii. Patent is contrary to public order or morality. b. Procedure: i. Sec. 62. Requirement of the Petition. ii. Sec. 63. Notice of Hearing. iii. Sec. 64. Committee of Three. iv. Sec. 65. Cancellation of the Patent. v. Sec. 66. Effect of Cancellation of Patent or Claim. 4. Remedies of Person with Right to Patent a. Sec. 67.1:7 If a person referred to in Sec. 29 other than applicant, is declared by final court order or decision as having right to patent, such person may, within 3 months after decision has become final: i. Prosecute application as his own application in place of applicant; ii. File new patent application in respect of same invention; iii. Request that application be refused; or iv. Seek cancellation of patent, if one has already been issued. b. Sec. 68: If person, who was deprived of patent without his consent or through fraud is declared by final court order or decision to be true and actual inventor, court shall order for his substitution as patentee, or at option of true inventor, cancel patent, and award actual and other damages in his favor if warranted by circumstances. c. Sec. 70: Actions indicated in Secs. 67 and 68 shall be filed within 1 year from date of publication made in accordance with Secs. 44 and 51, respectively. d. Sec. 69: Court shall furnish IPO a copy of order or decision referred to in Secs. 67 and 68, which shall be published in IPO Gazette within 3 months from date such order or decision became final and executory, and shall be recorded in register of IPO.
Sec. 61.2 provides that, Where the grounds for cancellation relate to some of the claims or parts of the claim, cancellation may be effected to such extent only. 7 Sec. 67.2 provides that, The provisions of Sec. 38.2 shall apply mutatis mutandis to a new application filed under Sec. 67.1(b).
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II. UTILITY MODELS

A. APPLICABILITY OF PROVISIONS RELATING TO PATENTS
1. Sec 108.1: Subject to Sec. 109, provisions governing patents shall apply, mutatis mutandis, to registration of utility models. 2. Sec. 108.2: Where right to patent conflicts with right to utility model registration in case referred to in Sec. 29, said provision shall apply as if word patent were replaced by words "patent or utility model registration."
B. SUBJECT MATTER OF PROTECTION

1. Sec. 109.1(a): An invention qualifies for registration as a utility model if it is: (a) new; and (b) industrially applicable.
C. CONDITIONS OF PROTECTION
1. Substantive Requirements Sec. 109.1(b): Sec. 21, "Patentable Inventions", shall apply except reference to inventive step as condition of protection. 2. Formal Requirements Sec. 109.2: Secs. 43 to 49 shall not apply in case of applications for registration of utility model.
D. DURATION OF PROTECTION
1. Sec. 109.3: Utility model registration shall expire, without any possibility of renewal, at end of 7th year after date of filing of application.
E. CANCELLATION OF REGISTRATION
1. Sec. 109.4: In proceedings under Secs. 61 to 64, utility model registration shall be canceled on following grounds: a. Claimed invention does not qualify for registration as utility model and does not meet requirements of registrability, in particular having regard to Secs. 109.1 and Ses. 22, 23, 24 and 27; b. Description and claims do not comply with prescribed requirements; c. Any drawing which is necessary for understanding of invention has not been furnished; d. Owner of utility model registration is not inventor or his successor in title.
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F. CONVERSION OF APPLICATIONS
1. Sec. 110.1: At any time before grant or refusal of patent, applicant for patent may, upon payment of prescribed fee, convert his application into application for registration of utility model, which shall be accorded filing date of initial application. Application may be converted only once. 2. Sec. 110.2: At any time before grant or refusal of utility model registration, applicant for utility model registration may, upon payment of prescribed fee, convert his application into patent application, which shall be accorded filing date of initial application.
G. PROHIBITIONS AGAINST FILING PARALLEL APPLICATIONS

1. Sec. 111: Applicant may not file 2 applications for same subject, one for utility model registration and other for grant of patent whether simultaneously or consecutively.
III. INDUSTRIAL DESIGNS

A. APPLICABILITY OF PROVISIONS RELATING TO PATENTS
1. Sec. 119.1: Following provisions relating to patents shall apply mutatis mutandis to industrial design registration. a. Sec. 21 Novelty; b. Sec. 24 Prior art: Provided, That disclosure is contained in printed documents or in any tangible form; c. Sec, 25 Non Prejudicial Disclosure; d. Sec. 28 Right to a Patent; e. Sec. 29 First to File Rule; f. Sec. 30 Inventions Created Pursuant to a Commission; g. Sec. 31 Right of Priority: Provided, That application for industrial design shall be filed within 6 months from earliest filing date of corresponding foreign application; h. Sec. 33 Appointment of Agent or Representative; i. Sec. Refusal of the Application; j. Secs. 56 to 60 Surrender, Correction of and Changes in Patent; k. Chapter VII Remedies of a Person with a Right to Patent; l. Chapter VIII Rights of Patentees and Infringement of Patents; and m. Chapter XI Assignment and Transmission of Rights 16
2. Sec. 119.3: Following provisions relating to patents shall apply mutatis mutandis to layout-design of integrated circuits registration: a. Sec. 28 Right to a Patent; b. Sec. 29 First to File Rule; c. Sec. 30 Inventions Created Pursuant to a Commission; d. Sec. 33 Appointment of Agent or Representative; e. Secs. 56 to 60 Surrender, Correction of and Changes in Patent; f. Chapter VII Remedies of a Person with a Right to Patent; g. Chapter VIII Rights of Patentees and Infringement of Patents; Provided, That layout-design rights and limitation of layout-design rights provided hereunder shall govern: h. Chapter X - Compulsory Licensing; and i. Chapter XI Assignment and Transmission of Rights
B. SUBJECT MATTER OF PROTECTION

1. Sec. 112(1): Industrial Design is any composition of lines or colors or any three-dimensional form, whether or not associated with lines or colors: Provided, That such composition or form gives a special appearance to and can serve as pattern for an industrial product or handicraft; 2. Sec. 112(2): Integrated Circuit means a product, in its final form, or an intermediate form, in which the elements, at least one of which is an active element and some or all of the interconnections are integrally formed in and/or on a piece of material, and which is intended to perform an electronic function; and 3. Sec. 112(3): Layout-Design is 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 an integrated circuit intended for manufacture. 4. What is Not Protected Sec. 113.2: Industrial designs dictated essentially by technical or functional considerations to obtain technical result or those contrary to public order, health or morals shall not be protected.
C. CONDITIONS OF PROTECTION
1. Substantive Requirements Sec. 113.1: Only industrial designs that are: (a) new; or (b) ornamental shall be protected under IP Code.
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a. Sec. 113.3: Only layout-designs of integrated circuits that are original shall benefit from protection under this Act. Layout-design shall be considered original if it is result of its creator's own intellectual effort and is not commonplace among creators of layout-designs and manufacturers of integrated circuits at time of its creation. b. Sec. 113.4: Layout-design consisting of combination of elements and interconnections that are commonplace shall be protected only if combination, taken as whole, is original. 2. Formal Requirements/Procedure for Application and Grant of ID a. Application Secs. 114 to 115 b. Examination Sec. 116 c. Registration Sec. 117

1. Rights for Industrial Designs Sec. 119.1: Same as Patents 2. Rights Conferred to the Owner of a Layout-Design Registration Sec. 119.4: Owner of layout-design registration shall enjoy following rights: a. to reproduce, whether by incorporation in integrated circuit or otherwise, registered layout-design in its entirety or any part thereof, except act of reproducing any part that does not comply with requirement of originality; and b. to sell or otherwise distribute for commercial purposes registered layout design, article or integrated circuit in which registered layoutdesign is incorporated.
F. LIMITATION OR EXEMPTIONS TO SCOPE OF PROTECTION

1. Limitations of Industrial Design Rights Sec. 119.1: Same as Patent 2. Limitations of Layout Rights Sec. 119.5: Owner of layout design has no right to prevent third parties from reproducing, selling or otherwise distributing for commercial purposes registered layout-design in following circumstances: a. Reproduction of registered layout-design for private purposes or for the sole purpose of evaluation, analysis, research or teaching; b. Act is performed in respect of layout-design created on basis of such analysis or evaluation and which is itself original in meaning as provided herein;
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c. Act is performed in respect of registered lay-out-design, or in respect of integrated circuit in which such layout-design is incorporated, that has been put on market by or with consent of right holder; d. In respect of integrated circuit where person performing or ordering such an act did not know and had no reasonable ground to know when acquiring integrated circuit or the article incorporating such integrated circuit, that it incorporated an unlawfully reproduced layout-design: Provided, however, That after time that such person has received sufficient notice that layout-design was unlawfully reproduced, that person may perform any of said acts only with respect to stock on hand or ordered before such time and shall be liable to pay to right holder a sum equivalent to at least 5% of net sales or such other reasonable royalty as would be payable under freely negotiated license in respect of such layout-design; or e. Act is performed in respect of identical layout-design which is original and has been created independently by third party. 3. Sec. 119.2: If essential elements of industrial design which is subject of application have been obtained from creation of another person without his consent, protection under this Chapter cannot be invoked against injured party.
D. DURATION OF PROTECTION
1. Sec. 118.1: Registration of industrial design shall be for period of 5 years from filing date of application, subject to renewal for not more than 2 consecutive periods of 5 years each. 2. Sec. 118.5: Registration of layout-design shall be valid for period of 10 years, without renewal, and such validity to be counted from tdate of commencement of protection accorded to layout-design.
E. CANCELLATION OF REGISTRATION
1. Sec. 120.1: Cancellation of Design Registration8 At any time during term of industrial design registration, any person upon payment of required fee, may petition Director of Legal Affairs to cancel industrial design on any of following grounds: a. If subject matter of industrial design is not registerable within terms of Secs. 112 and 113; b. If subject matter is not new; or
Sec. 120.2 provides that, Where the grounds for cancellation relate to a part of the industrial design, cancellation may be effected to such extent only. The restriction may be effected in the form of an alteration of the effected features of the design.
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c. If subject matter of industrial design extends beyond content of application as originally filed. 3. Sec. 120.3: Cancellation of Layout-Design of Integrated Circuits9 Any interested person may petition that registration of layout-design be canceled on ground that: a. Layout-design is not protectable under IP Code; b. Right holder is not entitled to protection under IP Code; or c. Application for registration of layout-design, was not filed within 2 years from its first commercial exploitation anywhere in the world.
IV. TRADEMARKS
1. Registrable Mark Sec. 121.1: Any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods. 2. Non-Registrable Marks Sec. 123.1:10 A mark cannot be registered if it: a. Consists of immoral, deceptive or scandalous matter, or matter which may disparage or falsely suggest connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute; b. Consists of flag or coat of arms or other insignia of the Philippines or any of its political subdivisions, or of any foreign nation, or any simulation thereof; c. Consists of name, portrait or signature identifying a particular living individual except by his written consent, or name, signature, or portrait of deceased President of Philippines, during life of his widow, if any, except by written consent of widow; d. Is identical with registered mark belonging to different proprietor or mark with an earlier filing or priority date, in respect of: i. Same goods or services, or ii. Closely related goods or services, or
Sec. 120.3 further provides that, Where the grounds for cancellation are established with respect only to a part of the layout-design, only the corresponding part of the registration shall be canceled. Any canceled layout-design registration or part thereof, shall be regarded as null and void from the beginning and may be expunged from the records of the Intellectual Property Office. Reference to all canceled layout-design registration shall be published in the IPO Gazette. 10 Sec. 123.3. of the IP Code provides that: 123.3. The nature of the goods to which the mark is applied will not constitute an obstacle to registration.
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iii. If it nearly resembles such mark as to be likely to deceive or cause confusion; e. Is identical with, or confusingly similar to, or constitutes translation of a mark which is considered by competent authority of Philippines to be well-known internationally and in Philippines, whether or not it is registered here, as being already the mark of person other than applicant for registration, and used for identical or similar goods or services: Provided, That in determining whether mark is well-known, account shall be taken of knowledge of relevant sector of public, rather than of public at large, including knowledge in Philippines which has been obtained as a result of promotion of mark; f. Is identical with, or confusingly similar to, or constitutes translation of mark considered well-known in accordance with preceding paragraph, which is registered in 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 mark in relation to those goods or services would indicate connection between those goods or services, and owner of registered mark: Provided further, That interests of owner of registered mark are likely to be damaged by such use; g. Is likely to mislead public, particularly as to nature, quality, characteristics or geographical origin of goods or services; h. Consists exclusively of signs that are generic for 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; 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 goods or rendering of services, or other characteristics of goods or services; k. Consists of shapes that may be necessitated by technical factors or by nature of goods themselves or factors that affect their intrinsic value; l. Consists of color alone, unless defined by given form; or m. Is contrary to public order or morality. n. Is the emblem, official seal, or name of United Nations, whether in its full or abbreviated form.11 3. Secondary Meaning Sec. 123.2: As regards signs or devices mentioned in paragraphs (j), (k), and (l), nothing shall prevent registration of any such sign or device which has become distinctive in relation to goods for which registration is requested as result of use that have been
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Sec. 1 of Republic Act No. 226.
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made of it in commerce in Philippines. IPO may accept as prima facie evidence that mark has become distinctive, as used in connection with applicants goods or services in commerce, proof of substantially exclusive and continuous use thereof by applicant in commerce in Philippines for 5 years before date on which claim of distinctiveness is made.
1. Substantive Requirements: Registration Sec. 122: Rights in mark acquired through registration made validly in accordance with IP Code. Note: Actual prior use not condition for registration of trademark. 2. Formal Requirements/Procedure for Application a. Trademark Application Secs. 124 to 130 b. Procedure Upon Application: i. Sec. 132: Application Number and Filing Date ii. Sec. 133: Examination and Publication iii. Sec. 134: Opposition iv. Sec. 135: Notice and Hearing c. Registration of Trademark: i. Sec. 136: Issuance and Publication of Certificate ii. Sec. 137: Registration of Mark and Issuance of a Certificate to the Owner or his Assignee iii. Sec. 138: Certificates of Registration d. Actions After Registration: i. Sec. 139: Publication of Registered Marks; Inspection of Register ii. Sec. 140: Cancellation upon Application by Registrant; Amendment or Disclaimer of Registration iii. Sec. 141: Sealed and Certified Copies as Evidence iv. Sec. 142: Correction of Mistakes Made by the Office v. Sec. 143: Correction of Mistakes Made by Applicant vi. Sec. 144: Classification of Goods and Services
C. OWNERSHIP
1. Registrant Sec. 122: Rights in a mark acquired through registration made validly in accordance with IP Code.
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2. Priority Right Sec. 131: a. Sec. 131.1: Application for registration of mark filed in Philippines by person referred to in Section 3, and who previously duly filed application for registration of same mark in one of those countries, shall be considered as filed as of day application was first filed in foreign country. b. Sec. 131.2: No registration of a mark in Philippines by person described in this section shall be granted until such mark has been registered in country of origin of applicant. c. Sec. 131.3: Nothing in this section shall entitle owner of registration granted under this section to sue for acts committed prior to date on which his mark was registered in this country: Provided, That, notwithstanding foregoing, owner of well-known mark as defined in Sec. 123.1(e) of IP Code, that is not registered in Philippines, may, against identical or confusingly similar mark, oppose its registration, or petition cancellation of its registration or sue for unfair competition, without prejudice to availing himself of other remedies provided for under the law. d. Sec. 131.4: In like manner and subject to the same conditions and requirements, right provided in this Section may be based upon subsequent regularly filed application in 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 any rights outstanding, and has not served, nor thereafter shall serve, as basis for claiming right of priority.
D. TRANSFER OF OWNERSHIP
1. Assignment and Transfer of Application and Registration Sec. 149 a. Sec. 149.1: Application for registration of mark, or its registration, may be assigned or transferred with or without transfer of business using the mark. b. Sec. 149.2: Such assignment or transfer shall, however, be null and void if it is liable to mislead public, particularly as regards nature, source, manufacturing process, characteristics, or suitability for their purpose, of goods or services to which mark is applied. c. Sec. 149.3: Assignment of application for registration of mark, or of its registration, shall be in writing and require signatures of contracting parties. Transfers by mergers or other forms of succession may be made by any document supporting such transfer. d. Sec. 149.4: Assignments and transfers of registration of marks shall be recorded at IPO on payment of prescribed fee; assignment and 23
transfers of applications for registration shall, on payment of same fee, be provisionally recorded, and mark, when registered, shall be in name of assignee or transferee. e. Sec. 149.5: Assignments and transfers shall have no effect against third parties until they are recorded at IPO. 2. License Contracts Sec. 150 a. Sec. 150.1: Any license contract concerning the registration of mark, or application therefor, shall provide for effective control by licensor of quality of goods or services of licensee in connection with which mark is used. If license contract does not provide for such quality control, or if such quality control is not effectively carried out, license contract shall not be valid. b. Sec. 150.2: License contract shall be submitted to IPO which shall keep its contents confidential but shall record it and publish reference thereto. License contract shall have no effect against third parties until such recording is effected. The Regulations shall fix procedure for recording of license contract.

1. Sec. 147.1: Owner of registered mark shall have exclusive right to prevent all third parties not having owners consent from using in course of trade identical or similar signs or containers for goods or services which are identical or similar to those in respect of which trademark is registered where such use would result in likelihood of confusion. In case of use of identical sign for identical goods or services, likelihood of confusion shall be presumed. 2. Sec. 147.2: Exclusive right of owner of well-known mark defined in Sec. 123.1(e) which is registered in Philippines, shall extend to goods and services which are not similar to those in respect of which mark is registered: Provided, That use of that mark in relation to those goods or services would indicate connection between those goods or services and owner of registered mark: Provided, further, That interests of owner of registered mark are likely to be damaged by such use.
F. LIMITATION ON SCOPE OF TRADEMARK PROTECTION

1. Sec. 148: Use of Indications by Third Parties for Purposes Other than those for which the Mark is Used Registration of mark shall not confer on registered owner right to preclude third parties from using bona fide their names, addresses, pseudonyms, geographical name, or exact indications concerning kind, quality, quantity, destination, value, place of origin, or time of production or of supply, of their goods or services:
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Provided, That such use is confined to purposes of mere identification or information and cannot mislead public as to source of goods or services.
1. Sec. 145: Duration Certificate of registration shall remain in force for 10 years; Sec. 146: Renewal for periods of 10 years at its expiration. 2. Note: Sec. 145: Registrant shall file declaration of actual use and evidence to that effect, or shall show valid reasons based on existence of obstacles to such use, as prescribed by the Regulations, within 1 year from 5th anniversary of date of registration of mark. Otherwise, mark shall be removed from the Register by IPO.

1. Sec. 156 Civil Action for Infringement. a. Definition: Sec. 155: Any person who shall, without consent of owner of registered mark: i. Sec. 155.1: Use in commerce any reproduction, counterfeit, copy, or colorable imitation of registered mark or same container or dominant feature thereof in connection sale, offering for sale, distribution, advertising of any goods or services including other preparatory steps necessary to carry out sale of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or ii. Sec. 155.2: Reproduce, counterfeit, copy or colorably imitate registered mark or dominant feature thereof and apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, shall be liable in civil action for infringement by the registrant for the remedies hereinafter set forth: Provided, That infringement takes place at moment any of acts stated in Sec. 155.1 or this section are committed regardless of whether there is actual sale of goods or services using infringing material. b. Tests to Determine Infringement: i. Dominancy Test Focuses on similarity of prevalent features of competing trademarks. If competing trademark contains main or essential or dominant features of another trademark by reason of which confusion and deception are likely to result, infringement takes place. 25
ii. Holistic Test Does not focus only on predominant words but considers also other features appearing in labels. Trademarks in their entirety as they appear in their respective labels are considered in relation to goods to which they are attached.. c. Jurisdiction with Regular Courts Sec. 163: All actions under Secs. 150, 155, 164, and 166 to 169 shall be brought before proper courts with appropriate jurisdiction under existing laws.12 d. Who May Bring Suit i. Sec. 156.1: Owner of registered mark may recover damages from any person who infringes his rights, and measure of damages suffered shall be either reasonable profit which complaining party would have made, had defendant not infringed his rights, or profit which defendant actually made out of infringement, or in event such measure of damages cannot be readily ascertained with reasonable certainty, then court may award as damages reasonable percentage based upon amount of gross sales of defendant or value of services in connection with which mark or trade name was used in infringement of rights of complaining party. ii. Sec. 160: Any foreign national or juridical person who meets requirements of Sec. 3 of IP Code and does not engage in business in Philippines may bring civil or administrative action hereunder for opposition, cancellation, infringement, unfair competition, or false designation of origin and false description, whether or not it is licensed to do business in Philippines under existing laws. e. Defenses i. Non-Registrability of Trademark Sec. 138: Certificate of registration of mark shall be merely prima facie evidence of validity of registration, registrants ownership of mark, and of registrants exclusive right to use same in connection with goods or services and those that are related thereto specified in certificate. ii. Equitable Principles Sec. 230: Equitable principles of laches, estoppel, and acquiescence may be applied in action for infringement of trademark. f. Limitations on Actions for Infringement:
Sec. 164 provides that, It shall be the duty of the clerks of such courts within one (1) month after the filing of any action, suit, or proceeding involving a mark registered under the provisions of this Act, to notify the Director in writing setting forth: the names and addresses of the litigants and designating the number of the registration or registrations and within one (1) month after the judgment is entered or an appeal is taken, the clerk of court shall give notice thereof to the Office, and the latter shall endorse the same upon the filewrapper of the said registration or registrations and incorporate the same as a part of the contents of said filewrapper.
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i. Prior User Sec. 159.1: Notwithstanding the provisions of Sec. 155 hereof, registered mark shall have no effect against any person who, before filing date or priority date, was using mark for purposes of his business or enterprise; Provided, That his right may only be transferred or assigned together with his enterprise or business or with part of his enterprise or business in which mark is used. ii. Innocent Infringer Sec. 159.2: Where infringer who is engaged solely in business of printing mark or other infringing materials for others is innocent infringer, owner of right infringed shall be entitled against such infringer only to injunction against future printing. iii. Publisher Sec. 159.3: Where infringement complained of is contained in or is part of paid advertisement in newspaper, magazine, or other similar periodical or in electronic communication, remedies of owner of right infringed as against publisher or distributor of such newspaper, magazine, or other similar periodical or electronic communication shall be limited to injunction against presentation of such advertising matter in future issues of such newspapers, magazines, or other similar periodicals or in future transmissions of such electronic communications. Limitations of this subparagraph shall apply only to innocent infringers: Provided, That such injunctive relief shall not be available to owner of right infringed with respect to an issue of newspaper, magazine, or other similar periodical or electronic communication containing infringing matter where restraining dissemination of such infringing matter in any particular issue of such periodical or in an electronic communication would delay delivery of such issue or transmission of such electronic communication is customarily conducted in accordance with sound business practice, and not due to any method or device adopted to evade this section or to prevent or delay issuance of injunction or restraining order with respect to such infringing matter. g. Reliefs Granted i. Damages (a) Sec. 156.3. In cases where actual intent to mislead the public or to defraud complainant is shown, in discretion of court, damages may be doubled. (b) Sec. 158: - In any suit for infringement, owner of registered mark shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation is likely to cause confusion, or to cause mistake, or to deceive. Such knowledge is presumed if registrant gives notice that his mark is registered by displaying with mark words "Registered Mark" or letter R within circle or if defendant had otherwise actual notice of registration. 27
ii. Injunction Sec. 156.4: Complainant, upon proper showing, may also be granted injunction. iii. Impounding Evidence Sec. 156.2: On application of complainant, court may impound during pendency of action, sales invoices and other documents evidencing sales. iv. Destruction of Infringing Materials Sec. 157: (a) Sec. 157.1: In any action arising under IP Code, in which violation of any right of owner of registered mark is established, court may order that goods found to be infringing be, without compensation of any sort, disposed of outside channels of commerce in such manner as to avoid any harm caused to right holder, or destroyed; and all labels, signs, prints, packages, wrappers, receptacles and advertisements in possession of defendant, bearing registered mark or trade name or any reproduction, counterfeit, copy or colorable imitation thereof, all plates, molds, matrices and other means of making the same, shall be delivered up and destroyed. (b) Sec. 157.2: In regard to counterfeit goods, simple removal of trademark affixed shall not be sufficient other than in exceptional cases which shall be determined by Regulations, to permit release of goods into channels of commerce. v. Mark Found Invalid May be Cancelled Sec. 161: In any action involving registered mark, court may determine right to registration, order cancellation of registration, in whole or in part, and otherwise rectify register with respect to registration of any party to action in exercise of this. Judgment and orders shall be certified by court to the Director, who shall make appropriate entry upon the records of the Bureau, and shall be controlled thereby. h. Prescription Sec. 226: No damages may be recovered for infringement of trademark after 4 years from time cause of action arose. 2. Sec. 168 Civil Action for Unfair Competition. a. Concepts: i. Protection of Goodwill Sec. 168.1: A person who has identified in mind of public goods he manufactures or deals in, his business or services from those of others, whether or not registered mark is employed, has property right in goodwill of said goods, business or services so identified, which will be protected in same manner as other property rights. ii. Definition of Unfair Competition Sec. 168.2: Any person who shall employ deception or any other means contrary to good faith by which he shall pass off the goods manufactured by him or in
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which he deals, or his business, or services for those of one having established such goodwill, or who shall commit any acts calculated to produce said result, shall be guilty of unfair competition, and shall be subject to an action therefor. iii. Acts of Unfair Competition Sec. 168.3: In particular, and without in any way limiting scope of protection against unfair competition, following shall be deemed guilty of unfair competition: (a) Any person who is selling his goods and gives them general appearance of goods of another manufacturer or dealer, either as to goods themselves or in wrapping of packages in which they are contained, or the devices or words thereon, or in any other feature of their appearance, which would be likely to influence purchasers to believe that goods offered are those of a manufacturer or dealer, other than actual manufacturer or dealer, or who otherwise clothes goods with such appearance as shall deceive public and defraud another of his legitimate trade, or any subsequent vendor of such goods or any agent of any vendor engaged in selling such goods with like purpose; (b) Any person who by any artifice, or device, or who employs any other means calculated to induce the false belief that such person is offering the services of another who has identified such services in mind of public; or (c) Any person who shall make any false statement in course of trade or who shall commit any other act contrary to good faith of nature calculated to discredit goods, business or services of another. b. Remedies Sec. 168.4: Remedies provided by Secs. 156, 157 and 161 shall apply mutatis mutandis. c. Distinctions Between Infringement and Unfair Competition: i. In infringement, prior registration of trademark necessary; in unfair competition, registration of trademark not necessary. ii. In infringement, fraudulent intent not necessary; competition, fraudulent intent is essential. in unfair
iii. Infringement of trademark is unauthorized use of trademark; Unfair competition is passing off ones goods as goods of another. 3. Sec. 162 Action for False or Fraudulent Declaration: Any person who shall procure registration in IPO of mark by false or fraudulent declaration or representation, whether oral or in writing, or by any false means, shall be liable in a civil action by any person injured thereby for any damages sustained in consequence thereof. 4. Sec. 169 Action for False Designations of Origin; False Description or Representation. 29
a. Sec. 169.1: Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which: i. is likely to cause confusion, or to cause mistake, or to deceive as to affiliation, connection, or association of such person with another person, or as to origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person; or ii. in commercial advertising or promotion, misrepresents nature, characteristics, qualities, or geographic origin of his or her or another persons goods, services, or commercial activities, shall be liable to a civil action for damages and injunction provided in Secs. 156 and 157 of IP Code by any person who believes that he or she is or likely to be damaged by such act. b. Sec. 169.2: Any goods marked or labeled in contravention of provisions of this Section shall not be imported into Philippines or admitted entry at any customhouse of Philippines. Owner, importer, or consignee of goods refused entry at any customhouse under this section may have any recourse under customs revenue laws or may have remedy given by IP Code in cases involving goods refused entry or seized. 5. Sec. 170 Criminal Prosecution: Independent of civil and administrative sanctions imposed by law, criminal penalty of imprisonment from 2 years to 5 years and a fine ranging from P50,000 to P200,000, shall be imposed on any person who is found guilty of committing any of acts mentioned in Secs 155, 168 and 169.1. 6. Sec. 151 Cancellation of Trademarks a. Grounds Sec. 151.1: Petition to cancel registration of mark under IP Code may be filed with Bureau of Legal Affairs by any person who believes that he is or will be damaged by registration of mark under IP Code as follows: i. Within 5 years from date of registration of mark under IP Code. ii. At any time, if registered mark becomes generic name for goods or services, or a portion thereof, for which it is registered, or has been abandoned, or its registration was obtained fraudulently or contrary to provisions of IP Code, or if registered mark is being used by, or with permission of, registrant so as to misrepresent source of goods or services on or in connection with which mark is used. If registered mark becomes generic name for less than all of goods or services for which it is registered, petition to cancel registration for only those goods or services may be filed. Registered mark shall not be deemed to be generic name of goods or services solely 30
because such mark is also used as name of or to identify unique product or service. Primary significance of registered mark to relevant public rather than purchaser motivation shall be test for determining whether registered mark has become generic name of goods or services on or in connection with which it has been used. iii. At any time, if registered owner of mark without legitimate reason fails to use mark within Philippines, or to cause it to be used in Philippines by virtue of license during an uninterrupted period of 3 years or longer. b. Concurrent Jurisdiction Sec. 151.2: Notwithstanding foregoing provisions, court or administrative agency vested with jurisdiction to hear and adjudicate any action to enforce the rights to registered mark shall likewise exercise jurisdiction to determine whether registration of said mark may be cancelled in accordance with IP Code. Filing of suit to enforce registered mark with proper court or agency shall exclude any other court or agency from assuming jurisdiction over subsequently filed petition to cancel same mark. On other hand, earlier filing of petition to cancel mark with Bureau of Legal Affairs shall not constitute prejudicial question that must be resolved before action to enforce rights to same registered mark may be decided. c. Other Provisions: i. Sec. 152: Non-use of a Mark When Excused. ii. Sec. 153: Requirements of Petition; Notice and Hearing. iii. Sec. 154: Cancellation of Registration.
V. TRADE NAMES
1. Registrable Trade Name Sec. 121.3: Name or designation identifying or distinguishing an enterprise. 2. Non-Registrable Marks Sec. 165.1: Name or designation may not be used as trade name if by its nature or use to which such name or designation may be put, it is contrary to public order or morals and if, in particular, it is liable to deceive trade circles or public as to nature of enterprise identified by that name. Examples: a. Consists of generic words b. Consists of geographical name; c. Legal Prohibitions: words that may not be used as trade name
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i. United Nations;13 ii. Bonded if not licensed under General Bonded Warehouse Act or established under Tariff and Customs Code;14 iii. Bank, Banking, Banker, Quasi-Bank, Quasi-Banking, Quasi-Banker, Savings and Loan Association, Trust Corporation, Trust Corporation, Trust Company unless authorized to as such by Monetary Board (MB);15 iv. Development Bank unless authorized to operate as such by MB;16 v. Financing Company, Leasing Company, Financing and Leasing Company, or Finance and Investment Company unless authorized as such by Securities and Exchange Commission;17 vi. Cooperative unless registered as cooperative;18 vii. Rural Bank unless authorized to operate as such by MB;19 and viii.National not used by any bank except Philippine National Bank.20 d. Confusing Similarity Sec. 165.2(b): Any subsequent use of trade name by third party, whether as trade name or mark or collective mark, or any such use of similar trade name or mark, likely to mislead public, shall be deemed unlawful.
1. Substantive Requirements Sec. 165.2(a): Notwithstanding any laws or regulations providing for any obligation to register trade names, such names shall be protected, even prior to or without registration, against any unlawful act committed by third parties.
C. TRANSFER OF OWNERSHIP
1. Sec. 165.4: Rules on assignment of trademarks are also applicable to assignment of trade names.
D. INFRINGEMENT AND REMEDIES

1. Sec. 165.3: Remedies for infringement of trademarks are also applicable to infringement of trade names.
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R.A. No. 226, Sec. 1. R.A. No. 247, Sec. 3. 15 R.A. No. 8791, Sec. 64. 16 R.A. No. 4093, Sec. 16. 17 R.A. No. 5980, Sec. 14(c), as amended by R.A. No. 8556. 18 R.A. No. 6938, Sec. 124(1); R.A. No. 6939, Sec. 14. 19 R.A. No. 7353, Sec. 28. 20 Revised Charter of Philippine National Bank, Sec. 35.
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VI. COPYRIGHT
1. Original Works Sec. 172.1: Literary and Artistic Works. Original intellectual creations in literary and artistic domain protected from moment of their creation.21 2. Derivative Works Sec. 173.1: Following derivative works shall also be protected by copyright:22 a. Sec. 173.1(a): Dramatizations, translations, adaptations, abridgments, arrangements, and other alterations of literary or artistic works; and b. Sec. 173.1(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. c. Sec. 174: Published Edition of Work In addition to right to publish granted by author, his heirs or assigns, publisher shall have a copy right consisting merely of right of reproduction of typographical arrangement of published edition of work.
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Under Sec. 172.1 of the IP Code, Literary and Artistic Works shall include in particular: (a) Books, pamphlets, articles and other writings; (b) Periodicals and newspapers; (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 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. 22 Sec. 173.2 of the IP Code provides that: The works referred to in paragraphs (a) and (b) of Subsection 173.1 shall be protected as a new works: Provided however, That such new work shall not affect the force of any subsisting copyright upon the original works employed or any part thereof, or be construed to imply any right to such use of the original works, or to secure or extend copyright in such original works.
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3. Works Not Protected a. Sec. 175: Unprotected Subject Matter Any idea, procedure, system method or operation, concept, principle, discovery or mere data as such, even if they are expressed, explained, illustrated or embodied in a work; news of the day and other miscellaneous facts having character of mere items of press information; or any official text of legislative, administrative or legal nature, as well as any official translation thereof. b. Sec. 176.1: Works of the Government of the Philippines. No copyright shall subsist in any work of Government of Philippines.23
1. Substantive Requirements Sec. 172.2: Works are protected by sole fact of their creation, irrespective of their mode or form of expression, as well as of their content, quality and purpose. 2. Formal Requirements Sec. 191 (Registration and Deposit with National Library and the Supreme Court Library); Sec. 192 (Notice of Copyright).
C. OWNERSHIP
1. The Author Sec. 178. Copyright ownership shall be governed by following rules: a. Sec. 178.1: For original literary and artistic works author; b. Sec. 178.5: For audiovisual work producer, author of scenario, composer music, film director, and author of work so adapted;24
Sec. 176 of the IP Code further provides that: 176.1. x x x. However, prior approval of the government agency or office wherein the work is created shall be necessary for exploitation of such work for profit. Such agency or office may, among other things, impose as a condition the payment of royalties. No prior approval or conditions shall be required for the use of any purpose of statutes, rules and regulations, and speeches, lectures, sermons, addresses, and dissertations, pronounced, read or rendered in courts of justice, before administrative agencies, in deliberative assemblies and in meetings of public character. 176.2. The Author of speeches, lectures, sermons, addresses, and dissertations mentioned in the preceding paragraphs shall have the exclusive right of making a collection of his works. 176.3. Notwithstanding the foregoing provisions, the Government is not precluded from receiving and holding copyrights transferred to it by assignment, bequest or otherwise; nor shall publication or republication by the government in a public document of any work in which copy right is subsisting be taken to cause any abridgment or annulment of the copyright or to authorize any use or appropriation of such work without the consent of the copyright owners. 24 Section 178.5 further provides: However, subject to contrary or other stipulations among the creators, the producers shall exercise the copyright to an extent required for the exhibition of the work in any manner, except for the right to collect performing license fees for the performance of musical compositions, with or without
23
34
c. Sec. 178.6: For letters writer, subject to the provisions of Art. 723, Civil Code; and d. Sec. 179: For anonymous and pseudonymous works publishers deemed to represent authors, unless contrary appears, or pseudonyms or adopted name leaves no doubts as to authors identity, or if author discloses his identity. 2. Joint Works/Works Created by Several Persons Sec. 178.2: a. General Rule: For works of joint authorship co-authors (in absence of agreement, their rights governed by rules on co-ownership). b. Exception: If parts can be used separately and author of each part can be identified author of each part for part that he created; 3. Works Made for Hire a. Sec. 178.3: For work created by author during and in the course of his employment: i. Employee, if creation of work is not part of his regular duties even if employee uses time, facilities and materials of employer; or ii. Employer, if work is result of performance of his regularly-assigned duties, unless contrary agreement, express or implied. b. Sec. 178.4: For work commissioned by person other than employer of author and who pays for it and work is made in pursuance of commission, person who commissioned work shall have ownership of work, but creator retains copyright, unless contrary written stipulation.
D. TRANSFER
1. Assignment of Copyright a. Sec. 180: Rights of Assignee. i. Sec. 180.1. Copyright may be assigned in whole or in part. Within scope of assignment, assignee is entitled to all rights and remedies which assignor had with respect to copyright. ii,. Sec. 180.2. Copyright is not deemed assigned inter vivos in whole or in part unless there is written indication of such intention. b. Sec. 181: Copyright and Material Object Copyright is distinct from property in material object subject to it. Consequently, transfer or assignment of copyright shall not itself constitute transfer of material object. Nor shall transfer or assignment of sole copy or of one or several copies of work imply transfer or assignment of copyright. 2. License Sec. 180.3: Submission of literary, photographic or artistic work to newspaper, magazine or periodical for publication shall constitute only
words, which are incorporated into the work; and
35
license to make single publication unless greater right is expressly granted. If 2 or more persons jointly own a copyright or any part thereof, neither of owners shall be entitled to grant licenses without prior written consent of other owner or owners. 3. Other Provisions a. Sec. 182: Filing of Assignment of License. b. Sec. 183: Designation of Society Copyright owners or their heirs may designate society of artists, writers or composers to enforce their economic rights and moral rights on their behalf.

1. Moral Rights: a. Scope Sec. 193: Author of work shall, independently of economic rights in Sec. 177 or grant of an assignment or license with respect to such right, have right: i. Sec. 193.1: To require that authorship of works be attributed to him, in particular, right that his name, as far as practicable, be indicated in prominent way on copies, and in connection with public use of his work; ii. Sec. 193.2: To make any alterations of his work prior to, or to withhold it from publication; iii. Sec. 193.3: To object to any distortion, mutilation or other modification of, or other derogatory action in relation to, his work which would be prejudicial to his honor or reputation; and iv. Sec. 193.4: To restrain use of his name with respect to any work not of his own creation or in distorted version of his work. b. Sec. 194: Breach of Contract Author cannot be compelled to perform his contract to create work or for publication of his work already in existence. However, he may be held liable for damages for breach of such contract. c. Sec. 195: Waiver of Moral Rights Author may waive his rights mentioned in Sec. 193 by written instrument, but no such waiver shall be valid where its effects is to permit another: i. Sec. 195.1: To use name of author, or title of his work, or otherwise to make use of his reputation with respect to any version or adaptation of his work which, because of alterations therein, would substantially tend to injure literary or artistic reputation of another author; or ii. Sec. 195.2: To use name of author with respect to a work he did not create.
36
d. Sec. 196: Contribution to Collective Work When author contributes to collective work, his right to have his contribution attributed to him is deemed waived unless he expressly reserves it. e. Sec. 197: Editing, Arranging and Adaptation of Work In absence of contrary stipulation at time author licenses or permits another to use his work, necessary editing, arranging or adaptation of such work, for publication, broadcast, use in motion picture, dramatization, or mechanical or electrical reproduction in accordance with reasonable and customary standards or requirements of medium in which work is to be used, shall not be deemed to contravene author's rights secured by this Chapter. Nor shall complete destruction of work unconditionally transferred by author be deemed to violate such rights. 2. Exploitation Rights a. Economic Rights Sec. 177: Copyright or economic rights shall consist of exclusive right to carry out, authorize or prevent following acts: i. Sec. 177.1: Reproduction of work or substantial portion of work; ii. Sec. 177.2: Dramatization, translation, adaptation, abridgment, arrangement or other transformation of work; iii. Sec. 177.3: First public distribution of original and each copy of work by sale or other forms of transfer of ownership; iv. Sec. 177.4: Rental of original or a copy of audiovisual or cinematographic work, work embodied in sound recording, computer program, compilation of data and other materials or musical work in graphic form, irrespective of ownership of original or copy which is subject of rental; v. Sec. 177.5: Public display of original or copy of work; vi. Sec. 177.6: Public performance of work; and vii. Sec. 177.7: Other communication to public of work. b. Other Rights i. Droit de Suite Sec. 200:25 Subsequent Sale or Lease of Work. In every sale or lease of original work of painting or sculpture or of original manuscript of writer or composer, subsequent to first disposition thereof by author, author or his heirs shall have inalienable right to participate in gross proceeds of ale or lease to extent of 5%. This right shall exist during lifetime of author and for 50 years after his death.
25
Sec. 201 of the IP Code provides that: Sec. 201. Works Not Covered. - The provisions of this Chapter shall not apply to prints, etchings, engravings, works of applied art, or works of similar kind wherein the author primarily derives gain from the proceeds of reproductions.
37
ii. Work of Architecture Sec. 186: Copyright in work of architecture shall include right to control erection of any building which reproduces whole or substantial part of work either in its original form or in any form recognizably derived from original; Provided, That copyright in any such work shall not include right to control reconstruction or rehabilitation in same style as original of building to which copyright relates.
F. LIMITATION OR EXEMPTIONS TO SCOPE OF COPYRIGHT PROTECTION

1. Limitation of Copyright Sec. 184.1: Following acts shall not constitute infringement of copyright:26 a. Recitation or performance of work, once it has been lawfully made accessible to public, if done privately and free of charge or if made strictly for charitable or religious institution or society; b. Making of quotations from published work if they are compatible with fair use and only to extent justified for the purpose, including quotations from newspaper articles and periodicals in form of press summaries: Provided, That source and name of author, if appearing on work, are mentioned; c. Reproduction or communication to public by mass media of articles on current political, social, economic, scientific or religious topic, lectures, addresses and other works of same nature, which are delivered in public if such use is for information purposes and has not been expressly reserved: Provided, That source is clearly indicated; d. Reproduction and communication to public of literary, scientific or artistic works as part of reports of current events by means of photography, cinematography or broadcasting to extent necessary for the purpose; e. Inclusion of work in publication, broadcast, or other communication to public, sound recording or film, if such inclusion is made by way of illustration for teaching purposes and is compatible with fair use: Provided, That source and name of author, if appearing in work, are mentioned; f. Recording made in schools, universities, or educational institutions of work included in broadcast for use of such schools, universities or educational institutions: Provided, That such recording must be deleted within reasonable period after they were first broadcast: Provided, further, That such recording may not be made from audiovisual works
26
Sec. 184.2 of the IP Code provides that: The provisions of this section shall be interpreted in such a way as to allow the work to be used in a manner which does not conflict with the normal exploitation of the work and does not unreasonably prejudice the right holder's legitimate interest.
38
which are part of general cinema repertoire of feature films except for brief excerpts of work; g. Making of ephemeral recordings by broadcasting organization by means of its own facilities and for use in its own broadcast; h. Use made of work by or under direction or control of Government, by National Library or by educational, scientific or professional institutions where such use is in public interest and is compatible with fair use; i. Public performance or communication to public of work, in place where no admission fee is charged in respect of such public performance or communication, by club or institution for charitable or educational purpose only, whose aim is not profit making, subject to such other limitations as may be provided in Regulations; j. Public display of original or copy of work not made by means of film, slide, television image or otherwise on screen or by means of any other device or process: Provided, That either work has been published, or, that original or copy displayed has been sold, given away or otherwise transferred to another person by author or his successor in title; and k. Any use made of a work for purpose of any judicial proceedings or for giving of professional advice by legal practitioner. 2. Fair Use Sec. 185.1: Fair use of copyrighted work for criticism, comment, news reporting, teaching including multiple copies for classroom use, scholarship, research, and similar purposes is not infringement of copyright.27 In determining whether use made of work in any particular case is fair use, factors to be considered shall include: a. Purpose and character of use, including whether such use is of commercial nature or is for non-profit education purposes; b. Nature of copyrighted work; c. Amount and substantiality of portion used in relation to copyrighted work as a whole; and d. Effect of use upon potential market for or value of copyrighted work.28
27
Sec. 185.1 further provides that: Decompilation, which is understood here to be the 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. 28 Sec. 185.2 of the IP Code provides that: 185.2 The fact that a work is unpublished shall not by itself bar a finding of fair use if such finding is made upon consideration of all the above factors.
39
3. Reproduction of Published Works Sec. 187.1:29 Private reproduction of published work in single copy, where reproduction is made by natural person exclusively for research and private study, shall be permitted, without authorization of owner of copyright in work. 4. Repographic Reproduction by Libraries Sec. 188.1:30 Any library or archive whose activities are not for profit may, without authorization of author of copyright owner, make single copy of work by reprographic reproduction: a. Where work by reason of its fragile character or rarity cannot be lent to user in its original form; b. Where works are isolated articles contained in composite works or brief portions of other published works and reproduction is necessary to supply them; when this is considered expedient, to person requesting their loan for purposes of research or study instead of lending volumes or booklets which contain them; and c. Where making of such copy is in order to preserve and, if necessary in event that it is lost, destroyed or rendered unusable, replace a copy, or to replace, in permanent collection of another similar library or archive, copy which has been lost, destroyed or rendered unusable and copies are not available with publisher. 5. Reproduction of Computer Programmes Sec. 189.1:31 Reproduction in 1 back-up copy or adaptation of computer program shall be permitted, without authorization of author of, or other owner of copyright in, a
29
Sec. 187.2 of the IP Code provides that: 187.2. The permission granted under Subsection 187.1 shall not extend to the reproduction of: (a) A work of architecture in form of building or other construction; (b) An entire book, or a substantial past thereof, or of a musical work in which graphics form by reprographic means; (c) A compilation of data and other materials; (d) A computer program except as provided in Section 189; and (e) Any work in cases where reproduction would unreasonably conflict with a normal exploitation of the work or would otherwise unreasonably prejudice the legitimate interests of the author. 30 Section 188.2 of the IP Code provides that: 188.2. Notwithstanding the above provisions, it shall not be permissible to produce a volume of a work published in several volumes or to produce missing tomes or pages of magazines or similar works, unless the volume, tome or part is out of stock; Provided, That every library which, by law, is entitled to receive copies of a printed work, shall be entitled, when special reasons so require, to reproduce a copy of a published work which is considered necessary for the collection of the library but which is out of stock. 31 Sec. 189.2 and 189.3 of the IP Code provides that: 189.2. No copy or adaptation mentioned in this Section shall be used for any purpose other than the ones determined in this Section, and any such copy or adaptation shall be destroyed in the event that continued possession of the copy of the computer program ceases to be lawful. 189.3. This provision shall be without prejudice to the application of Section 185 whenever appropriate.
40
computer program, by lawful owner of that computer program: Provided, That copy or adaptation is necessary for: a. Use of computer program in conjunction with computer for the purpose, and to extent, for which computer program has been obtained; and b. Archival purposes, and, for replacement of lawfully owned copy of computer program in event that lawfully obtained copy of computer program is lost, destroyed or rendered unusable. 6. Importation for Personal Purposes Sec. 190.1:32 Importation of copy of work by individual for his personal purposes shall be permitted without authorization of author of, or other owner of copyright in, work under following circumstances: a. When copies of work are not available in Philippines and: i. Not more than 1 copy at one time is imported for strictly individual use only; or ii. Importation is by authority of and for the use of Philippine Government; or iii. Importation, consisting of not more than 3 such copies or likenesses in any one invoice, is not for sale but for use only of any religious, charitable, or educational society or institution duly incorporated or registered, or is for encouragement of fine arts, or for any state school, college, university, or free public library in Philippines. b. When such copies form parts of libraries and personal baggage belonging to persons or families arriving from foreign countries and are not intended for sale: Provided, That such copies do not exceed 3.
32
Sec. 190.2 and 190.3 of the IP Code provides that: 190.2. Copies imported as allowed by this Section may not lawfully be used in any way to violate the rights of owner the copyright or annul or limit the protection secured by this Act, and such unlawful use shall be deemed an infringement and shall be punishable as such without prejudice to the proprietors right of action. 190.3. Subject to the approval of the Secretary of Finance, the Commissioner of Customs is hereby empowered to make rules and regulations for preventing the importation of articles the importation of which is prohibited under this Section and under treaties and conventions to which the Philippines may be a party and for seizing and condemning and disposing of the same in case they are discovered after they have been imported.
41
1. Moral Rights Sec. 198.1: Rights of an author under this chapter shall last during lifetime of author and for 50 years after his death and shall not be assignable or subject to license. Person or persons to be charged with posthumous enforcement of these rights shall be named in writing to be filed with National Library. In default of such person or persons, such enforcement shall devolve upon either author's heirs, and in default of heirs, Director of National Library. 2. Economic Rights Sec. 213.1: Subject to provisions of Secs. 213.2 to 213.6, copyright in works under Secs. 172 and 173 shall be protected during life of author and for 50 years after his death. This rule also applies to posthumous works. a. Sec. 213.2: If works of joint authorship, economic rights protected during life of last surviving author and for 50 years after his death b. Sec. 213.3: If anonymous or pseudonymous works, copyright protected for 50 years from date on which work was first lawfully published; Provided, That where, before expiration of said period, authors identity is revelaed or is no longer in doubt, provisions of Secs. 213.1 and 213.2 shall apply; Provided, further, That such works if not published before shall be protected for 50 years counted from making of work. c. Sec. 213.4: If works of applied art, protection shall be for period of 25 years from date of making. d. Sec. 213.5: If photographic works, protection shall be for 50 years from publication of work and, if unpublished, for 50 years from making. e. Sec. 213.6: If audio-visual works, including those produced by process analogous to photography or any process for making audio-visual recordings, protection shall be for 50 years from date of publication and, if unpublished, from date of making.

1. Sec. 216 Civil Action for Infringement a. Definition: Doing by any person, without consent of owner of copyright, of anything sole right to do which is conferred by state on owner of copyright. b. Tests to Determine Infringement: Copying When ordinary observer comparing works can readily see that one was copied from other. c. Jurisdiction with Regular Courts Sec. 225
42
d. Defenses i. Ignorance and lack of intention NOT defense ii. Loss of rights (sale, waiver, making work public) iii. Prescription e. Presumptions i. Sec. 218: Affidavit Evidence ii. Sec. 219: Presumption of Authorship iii. Sec. 220: International Registration of Work f. Reliefs Granted Sec. 216.1: Any person infringing right protected under IP Code shall be liable: i. Damages (a) Sec. 216.1(b): Pay to copyright proprietor or his assigns or heirs such actual damages, including legal costs and other expenses, as he may have incurred due to infringement as well as profits infringer may have made due to such infringement, and in proving profits plaintiff shall be required to prove sales only and defendant shall be required to prove every element of cost which he claims, or, in lieu of actual damages and profits, such damages which to court shall appear to be just and shall not be regarded as penalty. (b) Sec. 216.1(e): Such other terms and conditions, including payment of moral and exemplary damages, which court may deem proper, wise and equitable x x x even in event of acquittal in criminal case. ii. Injunction (a) Sec. 216.1(a): To injunction restraining such infringement. Court may also order defendant to desist from infringement, among others, to prevent entry into channels of commerce of imported goods that involve infringement, immediately after customs clearance of such goods. iii. Impounding/Seizure of Infringing Materials (a) Sec. 216.1(c): Deliver under oath, for impounding during the pendency of the action, upon such terms and conditions as the court may prescribe, sales invoices and other documents evidencing sales, all articles and their packaging alleged to infringe a copyright and implements for making them. (b) Sec. 216.2: In infringement action, court shall also have power to order seizure and impounding of any article which may serve as evidence in court proceedings.
43
iv. Destruction of Infringing Materials (a) Sec. 216.1(e): Such other terms and conditions which court may deem proper, wise and equitable, and destruction of infringing copies of work even in event of acquittal in criminal case. (b) Sec. 21.6.1(d): Deliver under oath for destruction without any compensation all infringing copies or devices, as well as all plates, molds, or other means for making such infringing copies as the court may order. g. Prescription Sec. 226: No damages may be recovered under IP Code after 4 years from time cause of action arose. 2. Sec. 217 Criminal Action for Infringement a. Sec. 217.1: Any person infringing any right secured by provisions of Part IV of IP Code or aiding or abetting such infringement shall be guilty of crime punishable by: i. For First Offense: Imprisonment of 1 year to 3 years plus a fine ranging from P50,000 to P150,000; ii. For Second Offense: Imprisonment of 3 years and 1 day to 6 years plus a fine ranging from P150,000 to P500,000; iii. For Third and Subsequent Offense: Imprisonment of 6 years and 1 day to 9 years plus a fine ranging from P500,000 to P1,500,000; and iv. In all cases, subsidiary imprisonment in cases of insolvency. b. Sec. 217.3: Any person who at time when copyright subsists in work has in his possession an article which he knows, or ought to know, to be an infringing copy of the work for purpose of: (a) Selling, letting for hire, or by way of trade offering or exposing for sale, or hire, the article; (b) Distributing the article for purpose of trade, or for any other purpose to extent that will prejudice rights of copyright owner in work; or (c) Trade exhibit of article in public, shall be guilty of an offense and shall be liable on conviction to imprisonment and fine as above mentioned.
I. POINTS OF ATTACHMENT
1. Sec. 221.1: Protection afforded by IP Code to copyrightable works under Secs. 172 and 173 shall apply to: a. Works of authors who are nationals of, or have their habitual residence in Philippines; b. Audio-visual works producer of which has his headquarters or habitual residence in Philippines; c. Works of architecture erected in Philippines or other artistic works incorporated in building or other structure located in Philippines; 44
d. Works first published in Philippines; and e. Works first published in another country but also published in Philippines within thirty days, irrespective of nationality or residence of authors. 2. Sec. 221.2: Provisions of IP Code shall also apply to works that are to be protected by virtue of and in accordance with any international convention or other international agreement to which Philippines is a party.
VII. NEIGHBORING RIGHTS

A. RIGHTS OF PERFORMERS
1. Scope of Rights a. Moral Rights Sec. 204.1: Independently of performer's economic rights, performer, shall, as regards his live aural performances or performances fixed in sound recordings, have right to claim to be identified as performer of his performances, except where omission is dictated by manner of use of performance, and to object to any distortion, mutilation or other modification of his performances that would be prejudicial to his reputation. b. Exclusive Rights Sec. 203: Subject to provisions of Sec. 212, performers shall enjoy following exclusive rights: i. Sec. 203.1: As regards their performances, right of authorizing: (a) Broadcasting and other communication to public of their performance; and (b) Fixation of their unfixed performance. ii. Sec. 203.2: Right of authorizing direct or indirect reproduction of their performances fixed in sound recordings, in any manner or form; iii. Sec. 203.3: Subject to provisions of Sec. 206, right of authorizing first public distribution of original and copies of their performance fixed in sound recording through sale or rental or other forms of transfer of ownership; iv. Sec. 203.4: Right of authorizing commercial rental to public of original and copies of their performances fixed in sound recordings, even after distribution of them by, or pursuant to authorization by performer; and v. Sec. 203.5: Right of authorizing making available to public of their performances fixed in sound recordings, by wire or wireless means,
45
in such way that members of public may access them from place and time individually chosen by them. c. Droit de Suite Sec. 206: Unless otherwise provided in contract, in every communication to public or broadcast of performance subsequent to first communication or broadcast thereof by broadcasting organization, performer shall be entitled to additional remuneration equivalent to at least 5% of original compensation he or she received for first communication or broadcast. d. Contract Terms Sec. 207: Nothing in this Chapter shall be construed to deprive performers of right to agree by contracts on terms and conditions more favorable for them in respect of any use of their performance. 2. Limitations on Rights a. Sec. 212: Secs. 203, 208 and 209 shall not apply where acts referred to in those Secs. Relate to: i. Sec. 212.1: Use by natural person exclusively for his own personal purposes; ii. Sec. 212.2: Using short excerpts for reporting current events; iii. Sec. 212.3: Use solely for purpose of teaching or for scientific research; and iv. Sec. 212.4: Fair use of broadcast subject to conditions under Sec. 185. b. Sec. 205.1: Subject to provisions of Sec. 206, once performer has authorized broadcasting or fixation of his performance, provisions of Sec. 203 shall have no further application. c. Sec. 205.2: Provisions of Sec. 184 (Limitations on Copyright) and Sec. 185 (Fair Use of Copyrighted Work) shall apply mutatis mutandis to performers. 3. Duration of Protection a. Moral Rights Sec. 204.2: Rights granted to performer in accordance with Sec. 204.1 shall be maintained and exercised 50 years after his death, by his heirs, and in default of heirs, government, where protection is claimed. b. Exclusive Rights Sec. 215.1: Rights granted to performers and producers of sound recordings under IP Code shall expire: i. For performances not incorporated in recordings, 50 years from end of year in which performance took place; and ii. For sound and image and sound recordings and performances incorporated therein, 50 years from end of year in which recording took place. 46
4. Infringement and Remedies Secs. 216 to 220: Same as Copyright 5. Points of Attachment a. Sec. 222: Provisions of IP Code on protection of performers shall apply to: i. Sec. 222.1: Performers who are nationals of Philippines; ii. Sec. 222.2: Performers who are not nationals of Philippines, but whose performances: (a) Take place in Philippines; or (b) Are incorporated in sound recordings protected under IP Code; or (c) Which has not been fixed in sound recording but are carried by broadcast qualifying for protection under IP Code. b. Sec. 224.2: Provisions of IP Code shall also apply to performers who, and to producers of sound recordings and broadcasting organizations which, are to be protected by virtue of and in accordance with any international convention or other international agreement to which Philippines is a party.
B. RIGHTS OF PRODUCERS OF SOUND RECORDINGS

1. Scope of Rights a. Exclusive Rights Sec. 208: Subject to provisions of Sec. 212, producers of sound recordings shall enjoy following exclusive rights: i. Sec. 208.1: Right to authorize direct or indirect reproduction of their sound recordings, in any manner or form; the placing of these reproductions in market and right of rental or lending; ii. Sec. 208.2: Right to authorize first public distribution of original and copies of their sound recordings through sale or rental or other forms of transfer of ownership; and iii. Sec. 208.3: Right to authorize commercial rental to public of original and copies of their sound recordings, even after distribution of them by, or pursuant to authorization by producer. b. Communication to Public Sec. 209: If sound recording published for commercial purposes, or reproduction of such sound recording, is used directly for broadcasting or for other communication to public, or is publicly performed with intention of making and enhancing profit, a single equitable remuneration for performer or performers, and producer of sound recording shall be paid by user to both performers and producer, who, in absence of any agreement shall share equally.
47
2. Limitations on Rights a. Sec. 212: Secs. 203, 208 and 209 shall not apply where acts referred to in those Secs. Relate to: i. Sec. 212.1: Use by natural person exclusively for his own personal purposes; ii. Sec. 212.2: Using short excerpts for reporting current events; iii. Sec. 212.3: Use solely for purpose of teaching or for scientific research; and iv. Sec. 212.4: Fair use of broadcast subject to conditions under Sec. 185. b. Sec. 210: Sec. 184 (Limitations on Copyright) and Sec. 185 (Fair Use of Copyrighted Work) shall apply mutatis mutandis to producer of sound recordings. 3. Duration of Protection a. Exclusive Rights Sec. 215.1: Rights granted to performers and producers of sound recordings under IP Code shall expire: i. For performances not incorporated in recordings, 50 years from end of year in which performance took place; and ii. For sound and image and sound recordings and performances incorporated therein, 50 years from end of year in which recording took place. 4. Infringement and Remedies Secs. 216 to 220: Same as Copyright 5. Points of Attachment a. Sec. 223: Provisions of IP Code on protection of sound recordings shall apply to i. Sec. 223.1: Sound recordings producers of which are nationals of Philippines; ii. Sec. 223.2: Sound recordings first published in Philippines. b. Sec. 224.2: Provisions of IP Code shall also apply to performers who, and to producers of sound recordings and broadcasting organizations which, are to be protected by virtue of and in accordance with any international convention or other international agreement to which Philippines is a party.
48
C. RIGHTS OF BROADCASTING ORGANIZATIONS

1. Scope of Rights a. Exclusive Rights Sec. 211: Subject to provisions of Sec. 212, broadcasting organizations shall enjoy exclusive right to carry out, authorize or prevent any of following acts: i. Sec. 211.1: Rebroadcasting of their broadcasts; ii. Sec. 211.2: Recording in any manner, including making of films or use of video tape, of their broadcasts for purpose of communication to public of television broadcasts of the same; and iii. Sec. 211.3: Use of such records for fresh transmissions or for fresh recording. 2. Duration of Protection a. Exclusive Rights Sec. 215.2: In case of broadcasts, term shall be 20 years from date broadcast took place. Extended term shall be applied only to old works with subsisting protection under prior law. 3. Infringement and Remedies Secs. 216 to 220: Same as Copyright 4. Points of Attachment a. Sec. 224.1: Provisions of IP Code on protection of sound recordings shall apply to: i. Sec. 224.1(a): Broadcasts of broadcasting organizations the headquarters of which are situated in Philippines; and ii. Sec. 224.1(b): Broadcasts transmitted from transmitters situated in Philippines. b. Sec. 224.2: Provisions of IP Code shall also apply to performers who, and to producers of sound recordings and broadcasting organizations which, are to be protected by virtue of and in accordance with any international convention or other international agreement to which Philippines is a party.
49

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FEU INSTITUTE OF LAW

COMMERCIAL LAW REVIEW INTELLECTUAL PROPERTY CODE

ATTY. ALEXANDER C. DY 3 TRIMESTER, SY 2011-2012

E. SCOPE OF EXCLUSIVE RIGHTS

F. LIMITATION OR EXEMPTIONS TO SCOPE OF PATENT PROTECTION

H. INFRINGEMENT AND REMEDIES

II. UTILITY MODELS

B. SUBJECT MATTER OF PROTECTION

G. PROHIBITIONS AGAINST FILING PARALLEL APPLICATIONS

III. INDUSTRIAL DESIGNS

B. SUBJECT MATTER OF PROTECTION

E. SCOPE OF EXCLUSIVE RIGHTS

F. LIMITATION OR EXEMPTIONS TO SCOPE OF PROTECTION

Sec. 1 of Republic Act No. 226.

E. SCOPE OF EXCLUSIVE RIGHTS

F. LIMITATION ON SCOPE OF TRADEMARK PROTECTION

H. INFRINGEMENT AND REMEDIES

D. INFRINGEMENT AND REMEDIES

E. SCOPE OF EXCLUSIVE RIGHTS

F. LIMITATION OR EXEMPTIONS TO SCOPE OF COPYRIGHT PROTECTION

H. INFRINGEMENT AND REMEDIES

VII. NEIGHBORING RIGHTS

B. RIGHTS OF PRODUCERS OF SOUND RECORDINGS

C. RIGHTS OF BROADCASTING ORGANIZATIONS

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