INTELLECTUA

L PROPERTY
RIGHTS (IPR)
Commercial Law Review

CATHERINE B. PANTI
Intellectual Property
Any product or creation of
the human mind
Intellectual Property
Rights
“The State shall protect and secure
the exclusive rights of scientists,
inventors, artists, and other gifted
citizens to their intellectual property
and creations, particularly when
beneficial to the people, for such
periods as may be provided by law.”

- Section 13, Article XIV of the

Constitution
Republic Act No. 8293

 Governing law on Intellectual

Property Rights
 Categories of IP Rights
INDUSTRIAL COPYRIGHT AND
PROPERTY RIGHTS RELATED RIGHTS
Trademark Literary and Artistic
Patent Works
Utility Model Derivative Works
Industrial Design
Geogrpahical
Indication
A. INDUSTRIAL PROPERTY
RIGHTS
1. Trademark
 Any visible sign capable of
distinguishing the goods (trademark)
of an enterprise and shall include a
stamped or marked container of
goods (Sec. 121.1, IPR Code)

 Protectedfor 10 years and renewable

every ten years
Right granted
Exclusive right to prevent all
third parties from using in the
course of trade identical or
similar signs
2. Patent
 Anytechnical solution of a problem in
any field of human activity which is
new, involves an inventive step and is
industrially applicable (Sec. 21, IP
Code)

 Term:20 years from the filing date of

the application (Sec. 54, IP Code)
 Rights Granted (Sec. 71)
 Could be a product or a process

 PRODUCT: To restrain, prohibit and prevent any

unauthorized person or entity from making,
using, offering for sale, selling or importing such
product
 PROCESS: To restraint, prevent or prohibit any
unauthorized person/entity from using the
process and from manufacturing, dealing in,
using, selling or offering for sale, or importing
any product obtained directlty or indirectly from
such process
 Right to assign, or transfer by succession the
 FIRST TO FILE RULE
 Iftwo or more persons have made the
invention separately and independently of
each other, the right to the patent shall
belong to the person who filed an
application for such invention, or where
two or more applications are filed for the
same invention, to the applicant who has
the earliest filing date or, the earliest
priority date (Sec. 29, IP Code)
Are these
patentable?
 3. UTILITY MODEL
 Models of implement or tools of any industrial
product even if not possessed of the quality of
invention but which is of practical utility
(Sundiang)
 An invention qualifies for registration as a
utility if it is new and industrially applicable.
(Sec. 109.1, IP Code)

 Term: Seven (7) years after the date of the

filing, without any possibility of renewal (Sec.
109.3, IP Code)
 4. INDUSTRIAL DESIGN
 Anycomposition of lines or colors or any
three-dimensional form, whether or not
asociated 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 (Sec. 112, IP
Code)

 Term:Five (5 years) from filing date of the

application and may be renewed for not more
than two (2) consecutive periods of 5 years
(Sec. 118)
5. Geographical
Indication
A sign used on products that have
a specific geographical origin and
possess qualities or a reputation
that are due to that origin
 GI protectible as Collective
Mark
 Collective Mark
- Any visible sign designated as such in
the application of registration and
capable of distinguishing the origin or
any other common characteristic,
including the quality of goods or services
of different enterprises which use the
sign under the control of the registered
owner of the collective mark.
 6. Layout Design of
Integrated Circuits
 The three dimensional disposition,
however expressed, of the elements,at
least one of twhich is an active element,
and of some or all of the
interconnections of an integrated circuit,
or such three-dimensional disposition
prepared for an integrated circuit
intended for manufacture.
(Sec 112.3,as amended by Sec 1, R.A.
9150)
7. Undisclosed Information
(Trade Secrets)
 Any confidential business
information which provides an
enterprise a competitive edge and
is kept secret.
Trade Secrets
 Per IPOPHL IRR
1. Confidential information
2. Has commercial value
3. Subjected to reasonable steps to
keep it secret
4. No formal registration procedure
required
B. COPYRIGHT AND
RELATED RIGHTS
 Five things to remember
about copyright
1. Copyright protects expression, not ideas.
2. Copyright is automatically protected from the
moment of creation.
3. Copyright comprises a bundle of private and
exclusive economic and moral rights, subject to
limitations and exceptions.
4. Economic rights may be transferred or licensed
completely or partially permanently or
temporarily.
5. Infringement of the author’s bundle of rights may
be committed unintentionally.
1. While ideas are
not protected by
copyright, the
expression of such
ideas are
Joaquin vs Drilon
(1999)
 BJ Productions Inc. Was the holder of
copyright over the show Rhoda and Me. It
holds rights over the show’s format and
style of presentation.
 In 1991, BJPI president Francisco Joaquin
saw on TV- RPN 9’s show It’s a Date, a
show which appears to have the same
format as Rhoda and Me
 Rhoda and Me It’s a Date
1. Unmarried participatn of one Same
gender (searcher) appears on one
side of a divider while three (3)
unmarried participants of the other
gender are on the other side of the
divider.

2. The arrangement was done to

ensure that the seracher does not
see the searchees
 Rhoda and Me It’s a Date
1. Searcher asks a question to be Same
answered by each of the
searchees.

2. The purpose is to determing who

among the searchees is the most
compatible with the searcher.
Is It’s a Date an infringement of the
copyright of Rhoda and Me?
 Joaquin vs Drilon
(1999)
 The law in enumerating what are subject to
copyright, refers to finished wOrks and not to
concepts.
 The copyright does not extend to an idea,
procedure, process, system, method of
operation, concept, principle or discovery,
regardless of the form in which it is described,
explained, illustrated or embodied in such work.
 The copyright does not extend to the general
concept or format of its dating game show
Joaquin vs Drilon
(1999)
 What then is the subejct matter of
petitioner’s copyright?
- The Supreme Court is of the opinion
that petitioner BJPI’s copyright covers
audio-visual recordings of each episode
of Rhoda and Me
2. WHEN COPYRIGHT
VESTS
FROM THE MOMENT OF
CREATION

(No need for any formality for

protection particulary deposit and
registration)
When copyright vests
Works are protected by the
sole fact of their creation,
irrespective of the mode or
form of expression as well as
their content, quality and
purpose. (Sec. 172.2)
Sec. 218 Affidavit Evidence

 The affidavit shall be admitted in evidence

in any proceedings under thi Chapter and
shall be prima facie proof of the matters
therein stated until the contrary is provided
and the court before whch such affidavit is
produced shall assume that the affidavit
was made by or on behalf of the owner of
the copyright.
 QUESTION!
 Rudy is a fine arts student in a univeristy and is
roommates with Bernie. During his free time, Rudy
would paint and leave his finished works lying around
the boarding house.
 One day, Rudy saw one of his painting on display at
the university cafeteria. The cafeteria operator said
he purchased the painting from Bernie who
represented himself as its painter and owner.
 Rudy and the cafeteria operator immediately
confronted Bernie. While admitting that he did not do
the painting, bernie claimed ownership of its copyright
sice had already reistered it in his name with the
National Library as provided in the IP Code.
 Who owns the copyright to the painting?
 =
Originality
independent
creation +
creativity
Yellow pages

White pages
 Creativity
 There is nothing remotely creative about
aranging names alphabetically in a white
pages directory. It is an age-old practice,
firmly rooted in tradition and is so
commonplace that it has come to be
expected as a matter of course.
Feist Publication vs. Rural telephone
(499 U.S. 340, 111 S. Ct. 1282, 1991)
Requisite
for = originality
copyright +
protection copyrightable
subject
matter
Unprotected Subject
Matter (Sec. 175)
 Ideas, concepts, principle
 Procedure, system method or operation
 Discovery or mere data
 News, items of press information
 Official text translation of laws
 Works of the government
 Original literary and artistic works
 Original intellectual creations in the literary
and artistic domain protected from the
moment of their creation and shall include in
particular: ARTISTIC
LITERARY SCIENTIFIC
- Books, - Dramatic or dramatico- - illustrations, maps,
pamphlets, musical compositions, plans, sketches,
articles choreographic works charts and 3D works
- Periodicals and - Musical compositions related to
newspapers - Works of drawing, geography,
- Lectures, painting, architecture topography,
sermons, - Photographic works architecture and
addresses, - Audiovisual and science
dissertations cinematographic works - Computer programs
prepared for oral - Pictorial illustartions and
delivery advertisment
- Letters
Original Works
Derivative Works (Sec.
172.1)
 Dramatizations, translations, adaptations
and other alterations
 Collections of literary, scholarly or artistic
works; compilation of data
- collection/compilation must be original by
reason of the selection/arrangement of
contents
Derivative
Works
Protection and exploitation of
derivative works (Sec. 173.2)
 They are also protected as new (original)
works
 But the 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 work (negative rights)
 To secure or extend copyright in such original
works
TERM OF PROTECTION FOR
COPYRIGHT
Generally, lifetime of author
+ 50 years after death
3. Copyright comprises
a bundle of private and
exclusive economicand
moral rights subject to
limitations and
exceptions
 Private and exclusive
 Bundle of rights belongs to a
single person or group
 To the exclusion (through denial)
of others
Bundle of rights
Economic Rights Moral Rights
- A.k.a copyright - Highlight the
- Allow the owner to personal link
derive financial existing between
reward from the the author and
use and the work
exploitation of the Right to
work attribution
Right to maintain
integrity of work
Economic Rights (Sec. 177)
- exclusive right to authorize, prevent or carry out:
 Reproduction of the work or substantial portion of the
work
 Dramatization, translation, adaptation, abridgment,
arrangement or other transformation of the work
(adaptation)
 First public distribution of the original and each copy of
the work by sale or other forms of transfer of ownership
 Rental of the original or a copy
 Public display of the original or a copy of the work
 Public performance of the work
 Other communication to the public of the work
Is Copyright an
Absolute Right?
 Limitations to copyright
(Sec. 184-185, IP Code)
 Reproduction or distribution of published
articles or materials in a specialized format
exclusively for the use of the blind,
visually and reading impaired persons;
 By libraries when work is fragile or for
preservation;
 Fair use: for criticism, comment, news
reporting, teaching, scholarship, research and
similar purposes
Limitations to copyright
 The making of quotations from a published work if
they are compatible with fair use and ontly to the
extent justified for the purpose including quotations
from newspaper articles and periodicals in the form of
press summaries. Provided, that the source and the
name of the author, if appearing on the work are
mentioned; (Se 184.1b);
 The inclusion of a work in a publication, broadcast or
other communication to the 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 the source and the name of the
author, if appearing in the work are mentioned
(Sec 184.1e)
 Moral Rights (Sec. 193)
 Attribution or paternity
 To be named as the author
 To restrain the use of one’s name with
respect to distorted versions of the
work
o Integrity of the Work
 To make any alterations to own work
 To object to any distortion, mutilation
or other prejudicial modification
Moral Rights
 Non- transferrable
 Waivable, except when waiver allows other
 To use the name of the auhtor, or the 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 the literary or artistic reputation of
another author
 To use the name of the author with respect
to a work he did not create
 “Author” is the natural person who
has created the work (Sec 171.1)

Source:
https://www.npr.org
/sections/thetwo-
way/2017/09/12/55
0417823/-animal-
rights-advocates-
photographer-
compromise-over-
ownership-of-
monkey-selfie
RULES ON OWNERSHIP OF
COPYRIGHT

CREATOR IS
OWNER
His heirs or
assigns

1. ONE
CREATOR
2. JOINT CREATION

CO-AUTHORS
ARE OWNERS
3. COMMISIONED WORK
PERSON
COMMISIONING
OWNS THE
WORK

OWNERSHIP OF
COPYRIGHT IS
WITH CREATOR
4. AUDIO-VISUAL WORK
PRODUCER=
EXHIBITION

OTHER
PURPOSES=
PRODUCER,
AUTHOR OF
SCENARIO,
COMPOSER, FILM
DIRECTOR AND
5. ANONYMOUS WORK

PUBLISHER=
REPRESENTATIVE
OF AUTHOR
6. EMPLOYEE’S WORK DURING
COURSE OF EMPLOYMENT

EMPLOYER IS
THE OWNER
INFRINGEMENT OF COPYRIGHT
(Sec. 126)
1. Directly committing an infringement
 Violating the exclusive right of owner to
authorize, prevent, carry out reproduction,
etc.)
2. Benefits from the infringing activity of another
person who commits an infringement
3. With knowledge of infringing activity, induces,
causes or materially contributes to the infringing
conduct of another
 Will an excuse of “no
copyright infringement
intended” exempt one from
liability?

No copyright
infringement intended
 Penalty for “Unintentional”
Infringement
 The court may reduce in its discretion
the award of statutory damages to
a sum of not more than Ten
Thousand Pesos (Php 10,000)
 Double damages awarded tothose
 Who circumvent effective
technological measures or
 Alter digital rights management
information
PLAGIARISM
“Deliberate and knowing
presentation of another person’s
original ideas or creative expression
as one’s own.”

- Blacks Law Dictionary

Plagiarism in the IP
Code
 The IP Code does not define plagiarism
 Closest concept: Infringement of
moral right to be attributed
- the author of the work shall
independently of the economic rights,
have the right to require that the
authorship of the works be attributed to
him xxx (Sec 193.1)
 Plagiarism vs Copyright
Infringement
Plagiarism Copyright Infringement
The use of another’s The unauthorized use of
information, language or writing copyrighted material in a
when done without proper manner that violates one of the
acknowledgment of the original copyright owner’s exclusive
source rights
Specific ct as it refers only to Broad term that describes a
using someone else’s work variety of acts (e.g. duplication,
without proper acknowledgment rewriting, performing a writte
work or doing anything which is
an exclusive right of a copyright
holder)
Copying need noe be Substantial
substantial
May exist even if none of the Copying must refer to the
same words are used to express expression of an idea
Thank you!

References:
1. Republic Act No. 8293
2. Commercial Law Review by Sundiang,
Part VII- Intellectual Property Code
3. 1987 Philippine Constitution
4. Discussions on IPR by Atty. Louie
Calvario, Attorney VI-Bureau of
Patents,IPO-PHL