Notes On Copyright and Intellectual Property Law (Philippines)

Copyright & Intellectual Property Law Notes by DMG
Atty. Galacgac’s lectures UC Law 2020
Law: RA 8293 (Intellectual Property Code) as amended

Those with 🦊 are Tatang’s favorite/most repeated topics.
🦊
What are the objectives of the Intellectual Property Code?
The Intellectual Property Code aims to:
1. Recognize that an effective intellectual and industrial
property system is vital to the development of domestic
and creative activity, facilitates transfer of technology,
attracts foreign investments, and ensures market access
for our products.
2. Protect and secure the exclusive rights of scientists,
inventors, artists and other gifted citizens to their
intellectual property and creations
3. Promote the diffusion of knowledge and information for the
promotion of national development and progress and the
common good.
4. Streamline administrative procedures of registering
patents, trademarks and copyright, to liberalize the
registration on the transfer of technology, and to enhance
the enforcement of intellectual property rights in the
Philippines.
—State policies (Sec 2, RA 8293)
Reciprocity Rule & Reverse Reciprocity Rule

The Reciprocity rule applies when:
1. A person is: (a) a national of; or (b) domiciled in; or (c) has
a real and effective industrial establishment in a foreign
country; and
2. Such foreign country is: (a) a party, together with the
Philippines, to any convention, treaty or agreement relating
to intellectual property rights or the repression of unfair
competition; or (b) extends reciprocal rights to nationals of
the Philippines by law.
The rule states that this person is entitled to benefits, to the extent
necessary to give effect to any provision of the convention, treaty,
or reciprocal law, in addition to the rights granted under RA 8293.
—Sec 3, RA 8293
On the other hand, the Reverse Reciprocity rule applies when:
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Disclaimer: Absolute correctness of these notes is not guaranteed. When in doubt, verify.
The legal provisions are not verbatim; they have been reworded/rewritten according to how
I understood them. Feel free to share. / dianegarduce@gmail.com
1. A condition, restriction, limitation, diminution, requirement,

penalty, or any similar burden, is imposed by a foreign law
on a Philippine national; and
2. The Philippine national is seeking protection of intellectual
property rights in that foreign country.
The rule states that such burden shall reciprocally be enforceable
upon nationals of that foreign country who are within Philippine
jurisdiction. —Sec 231, RA 8293
🦊Distinguishing the two rules:

1. As to who it applies, the rule of reciprocity applies to a
person who is a national or resident of, or an owner of an
industrial establishment in a foreign country, while the
reverse reciprocity rule applies to a foreign national in
Philippine jurisdiction.
2. As to what it enforces, the rule of reciprocity grants
benefits, while the reverse reciprocity rule imposes
burdens.
3. As to when it applies, the rule of reciprocity applies when
both the foreign country and the Philippines are parties to a
treaty, convention, or agreement involving intellectual
property rights, or when the foreign country grants
reciprocal rights to Philippine nationals. The reverse
reciprocity rule, meanwhile, applies when a foreign country
imposes burdens upon a Philippine national is seeking
intellectual property protection in that foreign country.
🦊
Technology Transfer Arrangement
It is an agreement involving:
1. the transfer of systematic knowledge for the: (a)
manufacture of a product; (b) application of a process; or
(c) rendering of a service, including management
contracts; and
2. the transfer, assignment, or licensing of all forms of
intellectual property rights, including licensing of computer
software developed for mass market. —Sec 4.2, RA 8293
It is a licensing contract between an intellectual property right
owner (the licensor) and a second party (the licensee) who has
granted the authority to commercially exploit the same intellectual
property right under specified terms and conditions. —Salao
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What are the rights under RA 8293?

The term “intellectual property rights” under RA 8293 consists of:
1. Copyright and Related Rights;
2. Trademarks and Service Marks;
3. Geographic Indications;
4. Industrial Designs;
5. Patents;
6. Layout-Designs (Topographies) of Integrated Circuits; and
7. Protection of Undisclosed Information (n, TRIPS).
—Sec 4.1, RA 8293
Intellectual Property Office

There are 7 bureaus under the IPO, namely:
1. Bureau of Patents;
2. Bureau of Trademarks;
3. Bureau of Legal Affairs;
4. The Documentation, Information and Technology Transfer
Bureau (DITT) — in charge of VLAs;
5. The Management Information System and EDP Bureau;
6. The Administrative, Financial and Personnel Services
Bureaus; and
7. The Bureaus of Copyright and Other Related Rights.
—Sec 6, RA 8293, as amended by RA 10372
The Director General of the IPO and his Deputies have the
following functions:
1. Manage and direct the activities of the IPO;
2. Exercise exclusive appellate jurisdiction over all decisions
rendered by the Director of Legal Affairs, the Director of
Patents, the Director of Trademarks, the Director of
Copyright, and the Director of the Documentation,
Information and Technology Transfer Bureau (DITT);
a. The decisions in respect of the decision of the
Director of Patents, the Director of Trademarks,
and Director of Copyright are further appealable to
the Court of Appeals in accordance with the rules of
Court; and
b. The decisions in respect of the decisions of the
Director of the DITT Bureau are appealable to the
Secretary of Trade and Industry.
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3. Undertake enforcement functions supported by concerned

agencies such as the PNP, NBI, the Bureau of Customs,
the Optical Media Board, and the local government units;
4. Conduct visits during reasonable hours to establishments
and businesses engaging in activities violating intellectual
property rights and provisions of this act based on report,
information or complaint received by the office; and
5. Such other functions in furtherance of protecting
intellectual property rights and the objectives of the Code.
—Sec 7, RA 8293, as amended by RA 10372
🦊Case—Pearl & Dean v. Shoemart (2003)

On the difference between a patent, a copyright, and a
trademark.
Facts: Pearl & Dean (P&D) is a corporation engaged in the

manufacturing of “light boxes”. These are advertising display units.
P&D secured a Certificate of Copyright Registration from the

National Library (there was no Bureau of Copyrights yet at the
time). The light boxes were marketed under the trademark “Poster
Ads”.
From 1981 to 1988, Metro Industrial Services (MIS) was P&D’s

manufacturer for its light boxes.
In 1985, P&D negotiated with Shoemart Inc. (now SM) for the
lease and installation of their light boxes in SM North EDSA. But
since it was still under construction, SM offered SM Makati and
SM Cubao instead. Only the contract fort SM Makati was returned
signed.
However, in 1986, SM informed P&D that it was rescinding the

contract, on the ground of non-performance. P&D protested this,
saying that the rescission was without basis.
In 1988, MIS offered to construct light boxes for SM. SM approved

the proposal for 10 light boxes. After that, SM engaged the
services of another company, EYD Rainbow Advertising Corp., to
make 300 units of light boxes.
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P&D then found out about the exact copies of its product. It wrote
to SM, enjoining them to cease using the light boxes and asking
for compensatory damages amounting to P20 million.
Upon receipt of the letter, SM suspended the lease of 224 light

boxes. Claiming that SM failed to meet its demands, P&D filed a
case for infringement of trademark and copyright, unfair
competition, and damages.
Contention of SM: It independently developed its poster panels

using common techniques and available technology. Moreover,
P&D’s trademark (“Poster Ads”) was only for stationeries, and
even that is a generic term which should not have been
appropriated as a trademark.
The RTC ruled in favor of P&D, but the CA reversed the decision
and ruled in favor of SM.
Issues:
1. If the engineering or technical drawings of a light box are
granted copyright protection by the National Library, is the
light box ipso facto also protected? —Ruling: No.
2. Should the light box be registered separately by a patent
through the IPO? —Ruling: Yes.
3. Can the owner of a registered trademark legally prevent
others from using such trademark if it is a mere
abbreviation of a term descriptive of his goods, services, or
business? —Ruling: No.
SC’s Decision: There was no infringement of intellectual property

rights. Case decided in favor of SM. What P&D should’ve
instituted was a case for unfair competition, not copyright
infringement.
Reasons:
1. No. Copyright, in the strict sense of the term, is purely a
statutory right. Being a mere statutory grant, the rights are
limited to what the statute confers. It may be obtained and
enjoyed only according to the terms and conditions
specified in the statute. Hence, it can cover only the works
falling within the statutory enumeration or description.
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Here, the Copyright Certificate of P&D stated that it was for a

class “O” work which, under the law, covers prints, illustrations, ad
copies, labels, tags, and box wraps. A copyright can only protect
literary and artistic works. It cannot cover light boxes.
2. Yes, a separate patent 🦊

should’ve been sought.
Trademark, copyright, and patents are different intellectual
property rights that cannot be interchanged with one
another.
A trademark is any visible sign capable of distinguishing the

goods (trademark) or services (service mark) of an enterprise. On
the other hand, copyright is confined to protecting literary and
artistic works which are original intellectual creations. Patents
cover patentable inventions, which are technical solutions of a
problem in any field of human activity which is new, involves an
inventive step, and is industrially applicable.
3. No. The certificate of registration issued by the Director of

Patents can confer the exclusive right to use its own
symbol only to those goods specified in the certificate,
subject to any conditions and limitations specified in the
certificate. One who has adopted and used a trademark on
his goods cannot prevent the adoption and use of the
same trademark by others for products which are of a
different description.
Other important pronunciations in Pearl & Dean:
No patent, no protection — An inventor does not have a

common law right to a monopoly of his invention. He has the right
to use and sell his invention, but if he voluntarily discloses it, like
when he offers it for sale, the world is free to copy and use it with
impunity.
To be able to effectively and legally preclude others from copying

and profiting from his invention, a patent is a primordial
requirement. No patent, no protection.
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A patent will give him the right to prevent others from making,
selling, or using his invention. But an actual patent has to be
applied for and issued first. There can be no infringement until a
patent has been issued.
In this case, P&D revealed their light boxes fully to the public by
submitting the engineering drawings to the National Library.
The ultimate goal of a patent system is to bring new designs and

technologies into the public domain through disclosure. Ideas,
once disclosed to the public without the protection of a valid
patent, are subject to appropriation without significant restraint.
The law attempts to strike an ideal balance between two

interests: (1) encouraging the creation and sharing (through
disclosure) of new, useful, and non-obvious advances in
technology and design for the public’s benefit; and (2) protecting
the rights of the inventors behind such advances.
The inventor may keep his invention secret and reap its fruits
indefinitely. If he chooses to disclose it, which will consequently be
a benefit to the community, a patent is granted in his favor. This
will give him an exclusive enjoyment for a certain period. Upon the
expiration of that period, the knowledge of the invention inures to
the people, who are then enabled to practice it and profit by its
use.
The patent law has a three-fold purpose:

1. To foster and reward invention;
2. To promote disclosures of inventions to stimulate further
innovation and to permit the public to practice the invention
once the patent expires; and
3. To ensure that ideas in the public domain remain there for
the free use of the public.
Copyright protects the book; patent protects whatever

art/object that may be described in the book — The use of the
art is a different thing from a publication of the book explaining it.
The copyright of a book on bookkeeping cannot secure the
exclusive right to make, sell and use account books prepared
upon the plan set forth in such book.
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In this case, the light box of P&D was not patented. Hence, it is
open and free to the use of the public.
Only the engineering drawings and descriptions of the light box is

protected by copyright. The description of the art in a book, though
entitled to the benefit of copyright, lays no foundation for an
exclusive claim to the art itself. The object of the drawings is
explanation; the object of the light box is use. The former may be
secured by copyright. The latter can only be secured by a patent.
PATENTS .
Definition
An invention patent is a government-issued grant, bestowing an
exclusive right to an inventor over a product or process that
satisfies the elements of patentability, namely, that it is a technical
solution, that it is new, that it involves an inventive step, and that it
is industrially applicable.
A patent is an exclusive right that allows the inventor to exclude

others from making, using, or selling the product of his invention
during the life of the patent. The patent owner can also:
1. Give other parties permission to use his invention on
mutually agreed terms; and
2. Sell his invention right to someone else, who then
becomes the owner of the patent.
—ipophil.gov.ph
What is a patent? What rights does it confer? 🦊

1. If the subject matter is a product, a patent confers the right
to restrain, prohibit, and prevent any unauthorized person
or entity from (MUOSI) making, using, offering for sale,
selling, or importing the product.
2. If the subject matter is a process, a patent confers the right
to restrain, prohibit, and prevent any unauthorized person
or entity from (MDUSOI) manufacturing, dealing, using,
selling, offering for sale, or importing any product obtained
from such process, directly or indirectly.
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3. The owner also has the right to: (a) assign the patent; or
(b) transfer it by succession; and (c) conclude licensing
contracts for the same.
—Sec 71, RA 8293
FAQs from IPO website:

—from https://www.ipophil.gov.ph/faq/patent/
1. Can an idea of a new invention be patented? — No, an
idea of a new invention alone cannot be patented. To
qualify for patent protection, an invention has to be applied
to a product or process. For an invention to be patentable,
it should meet the three criteria: it must be new, it involves
an inventive step, and it is industrially applicable.
2. Can I obtain a patent for a product design? — It is not
possible to obtain patent protection for the mere outward
appearance of an article, that is, a shape configuration,
pattern or ornamentation because a patent protects the
functional application of a product. Instead, an Industrial
Design registration may be a more appropriate option.
However, if the outward appearance has a functional
application as opposed to a mere visual purpose, it may be
possible to obtain patent protection, subject to the
patentability requirements of novelty, inventive step and
industrial application.
3. Why is it important to apply for a grant of a patent? —
A patent is an exclusive right that gives the inventor the
right to exclude others from making, using, or selling the
product of his invention during the life of the patent. Patent
owners may also give permission to, or license, other
parties to use their inventions on mutually agreed terms.
Owners may also sell their invention rights to someone
else, who then becomes the new owner of the patent.
4. Can I still commercialize or use my invention without a
patent? — Yes, you can commercialize or use your
invention without patent protection. However, once your
invention is made known to the public, you may not be able
to obtain a patent if you decide to apply for protection later
because your invention can no longer be considered new.
Elements of Patentability 🦊
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An invention is patentable when all of the following are present:

1. It is a technical solution of a problem in any human activity;
2. It is new;
3. It has an inventive step; and
4. It is industrially applicable.
An invention is new, or has novelty, if it does not form part of a

prior art.
A prior art consists of: (a) everything made available to the
public anywhere in the world; or (b) the whole contents of
an earlier application for a patent, utility model, or industrial
design registration, published by the IPO, filed or effective
in the Philippines.
An inventive step is something that is not obvious to a person

skilled in the art, at the time of filing/priority date.
In the case of drugs and medicines, there is no inventive
step if the invention results from:
(a) the mere discovery of a new form or new property
of a known substance which does not result in the
enhancement of the known efficacy of that
substance;
(b) the mere discovery of any new property or new use
for a known substance; or
(c) the mere use of a known process unless such
known process results in a new product that
employs at least one new reactant.
Industrial applicability means the invention can be produced and

used in any industry.
—Sec 21, 23, 24, 26, and 27, RA 8293
Which inventions cannot be the subject of a patent?

The following are non-patentable inventions: (DSM-PAA)
1. Discoveries, scientific theories and mathematical methods;
In the case of drugs and medicines, these are not
patentable:
🦊
(a) mere discovery of a new form or property of a
known substance, not resulting in the
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enhancement of the known efficacy of that

substance;
(b) mere discovery of any new property or use for a
known substance;
(c) mere use of a known process unless such known
🦊
process results in a new product that employs at
least one new reactant.
2. Schemes, rules and methods of performing mental acts,
playing games or doing business, and programs for
computers;
3. Methods for treatment of the human or animal body by
surgery or therapy and diagnostic methods practiced on
the human or animal body;
4. Plant varieties, animal breeds, or essentially biological
processes for the production of plants or animals;
🦊
5. Aesthetic creations; and
6. Anything which is contrary to public order or morality.
—Sec 22, RA 8293
Non-Prejudicial Disclosure 🦊
An applicant will not be prejudiced on the ground of lack of novelty
by the disclosure of information contained in the application during
the 12 months preceding the filing date or priority date, if such
disclosure was made by:
(1) The inventor (“Inventor" also means any person who,
on the filing date, had the right to the patent.);
(2) A patent office and the information was contained:
(a) in another application filed by the inventor and
should not have been disclosed by the office; or
(b) in an application filed without the knowledge or
consent of the inventor by a third party which
obtained the information directly or indirectly from
the inventor; or
(3) A third party which obtained the information directly or
indirectly from the inventor.
—Sec 25, RA 8293
**Thus, before applying for a patent, the prospective applicant

should first: (1) make sure his invention is patentable; and (2)
check if it has been previously disclosed.
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Who may apply for a patent?

Any person, natural or juridical, may apply for a patent. If the
applicant is not the inventor, the IPO shall require him to submit a
proof of authority to apply for the patent. —Rule 500, IRR
The right to a patent belongs to the inventor, his heirs, or his

assigns. When 2 or more persons have jointly made an invention,
the right to a patent shall belong to them jointly. —Rule 300, IRR
The application may be filed by the actual inventor or in the name

of his heirs, legal representatives, or assigns. —Rule 301, IRR
Patent application process
—ipophil.gov.ph
Requirements in applying for a patent and securing of a filing

date
—Sec 32-52, RA 8293
1. Filing Date Requirements — The filing date of a patent
🦊
application shall be the date of receipt by the Office of the
following elements: (I-I-DC)
a. An express or implicit indication that a Philippine
patent is sought;
b. Information identifying the applicant; and
c. Description of the invention and one or more
claims.
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If any of these elements is not submitted within the period

set by the Regulations, the application is considered
withdrawn.
2. The Office will examine whether the patent application

satisfies the requirements for the grant of filing date. If not,
the applicant is given an opportunity to correct the
deficiencies in accordance with the IRR.
- If the application does not contain all the
requirements, the filing date should be that date
when all the elements are received.
- Under the IRR, if the deficiencies are not remedied
within 2 months from the date on which the
application was initially presented to the Office, the
application shall be considered withdrawn.
3. Grant of filing date and payment of required fees —

Payment must be made within 1 month after the filing date,
otherwise, the application is deemed forfeited.
4. Formality Examination — The applicant shall comply with

the formal requirements* within the prescribed period,
otherwise the application shall be considered withdrawn.
🦊
*Application — It may be in Filipino or English. It must
contain: (RDD-CA)
a. A request for the grant of a patent, which shall
contain:
i. a petition for the grant of the patent;
ii. the name and other data of the applicant,
the inventor, and the agent; and
iii. the title of the invention.
🦊
b. A description of the invention, which must be:
i. Disclosed in a manner sufficiently clear
and complete for it to be carried out by a
person ordinarily skilled in the art; and
ii. In case of a microbiological process or its
product, where the use of a microorganism
cannot be sufficiently disclosed in a way
that would enable a person skilled in the art
to carry out the invention, and such material
is not available to the public, the application
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shall be supplemented by a deposit of such

material with an international depository
institution.
c. Drawings necessary for the understanding of the
invention;
d. One or more claims, which should:
i. define the matter for which protection is
sought;
ii. be clear and concise; and
iii. be supported by the description;
e. An abstract, which serves for technical information,
and which should:
i. consist of a concise summary of the
disclosure of the invention, preferably not
more than 150 words;
ii. be drafted in a way which allows the clear
understanding of the technical problem, the
gist of the solution of that problem through
the invention, and the principal use or uses
of the invention.
5. Classification and Search — An application that has

complied with the formal requirements shall be classified
and a search shall be conducted to determine the prior art.
6. Publication of Patent Application — 18 months from 🦊

the filing/priority date, the application shall be published in
the IPO Gazette together with a search document citing
any documents that reflect prior art.
Publication is a matter of right. It cannot be withheld. The

only exception is when the Director General, subject to the
approval or concurrence of the Secretary of Trade and
Industry, prohibits or restricts the application’s publication,
if it would be prejudicial to national security and interests.
Once published, it is as if the patent is granted. The

patentee will now enjoy confidentiality.
Inspection by third parties - Any interested party may inspect

the application documents filed with the IPO. This may only be
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done after publication because an unpublished patent application

and all related documents shall be confidential and not be made
available for inspection without the consent of the applicant.
After publication, the applicant shall have the right to file a civil
action for infringement (Section 76)* against any person who,
without his authorization, exercised any of the rights conferred by
a patent (Section 71, ibid).
*Section 76: The making, using, offering for sale, selling, or
importing a patented product or a product obtained directly
or indirectly from a patented process, or the use of a
patented process without the authorization of the patentee
constitutes patent infringement.
🦊This right of action may be exercised, provided that:

(a) The person had actual knowledge that the invention was
the subject matter of a published application; or the person
received written notice of it; and
(b) The action may not be filed until after the grant of a patent
on the published application; and
(c) The action should be filed within 4 years from the
commission of the acts.
But this right of action shall not apply to instances covered by:
(a) Sections 72.1 and 72.4 (Limitations of Patent Rights)
(b) Section 74 (Use of Invention by Government);
(c) Section 93.6 (Compulsory Licensing); and
(d) Section 93-A (Procedures on Issuance of a Special
Compulsory License under the TRIPS Agreement).
🦊Case: Kawasaki v Eastworld (June 15, 2015)

(digest from Hechanova.com.ph)
This is an action for design patent infringement and unfair

competition filed by Kawasaki Heavy Industries and Kawasaki
Motors (Phils) Corp. against Eastworld Motor Industries Corp.
In April 2008, Kawasaki released its Fury 125 motorcycle, which

bore its registered industrial designs. Kawasaki later learned that
Eastworld had manufactured and was selling motorcycles branded
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as Sapphire 125, which Kawasaki claimed bore and incorporated

nearly all of Kawasaki’s registered patent elements.
Eastworld, on its part, alleged that contrary to Kawasaki’s claims,

the industrial design for Sapphire 125 is covered by the certificate
of registration number 3-2009-000062 under its name, and that
Kawasaki failed to file and adverse information to its design
application when it was published. Thus, there can be no
infringement for using and selling its own patented products.
The Bureau of Legal Affairs (BLA) of the IPOPHL issued decision

number 2015-09 on June 15, 2015 ruling that there is no patent
infringement and finding in favour of Eastworld.
The IP Code defines patent infringement as “the making, using,

offering for sale, selling or importing a patented product or a
product obtained directly or indirectly from a patented process or
the use a patented process without the authorization of the
patented constitutes patent infringement”.
According to the BLA, a crucial element of infringement is that the

use of the design is without the authorization of the registrant.
Considering the Eastworld’s Sapphire 125 is based on its own
registered industrial design, it does not need authorization from
Kawasaki to produce and sell Sapphire 125.
The BLA also noted that Kawasaki did not file a petition to cancel
Eastworld’s registration number 3-2009-000062. The invalidity of
Eastworld’s design registration should have been brought as a
direct action for cancellation as provided under Article 120 of the
IP Code.
Going into the substantive issue of whether Eastworld’s design is

the same as that of Kawasaki, the BLA noted that using the
ordinary observer’s test, the overall design of Sapphire 125 is not
identical nor substantially similar to Kawasaki’s Fury design: “the
locations of the muffler, signal light and daylight lamp may be
similar, but this aspect is generic. The ornamental designs of the
gear indicator, speed meter design, location of the fuel cock,
headlight, brake disk are not the same. The engine stop switch is
even absent in Sapphire 125. The design of the side cover bears
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the mark “Motorstar” which distinguishes it instantly from the other

motorcycles. The products in the instant case are motorcycles
which consumers meticulously assess and compare with each
other while keeping in mind that it has features or parts which
although it appears to be similar are necessarily present because
they serve or are necessitated by a technical function. As such,
taking into consideration the contour, shape and holistic design,
there is no identity of design.”
On the issue of unfair competition, the BLA held that unfair

competition cannot be applied in the case of patent infringement.
Citing the Supreme Court’s ruling in the case of Kenneth Roy
Savage/K Angeline Export Trading v Judge Aproniano Taypin,
which held: “There is evidently no mention of any crime of unfair
competition involving design patents in the controlling provisions
on Unfair Competition. It is therefore unclear whether the crime
exists at all, for the enactment of RA 8293 did not result in the
reenactment of Act 189 of the Revised Penal Code.” Moreover,
there was no bad faith on Eastworld’s part and, as shown above,
consumers can easily distinguish one product from the other.
7. Request for Substantive Examination - Within 6 months from

the date of publication, there must be a written request to
determine whether a patent application met the requirements and
the fees have been paid on time.
If no such written request is given, the application is deemed

withdrawn. Withdrawal of the request for examination shall be
irrevocable and shall not authorize the refund of any fee.
8. Grant of Patent
Who grants the patent application? It is the patent examiner.

If the examiner decides to refuse to grant the application, the
decision shall be appealable to the Director of Patents.
9. Publication of Grant
What is the date of effectivity of the patent? 🦊

A patent shall take
effect on the date of the publication of its grant in the IPO Gazette.
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**Once the patent is effective, no one can question the patentee’s

rights under Section 71 (ibid, MOUSI and MDUSOI).
Unity of Invention
- The application shall relate: (a) to one invention only; or (b)
to a group of inventions forming a single general inventive
concept.
- The fact that a patent has been granted on an application
that did not comply with the requirement of unity of
invention shall not be a ground to cancel the patent.
—Sec 32, RA 8293
Disclosure
- The application shall disclose the invention in a manner
🦊
sufficiently clear and complete for it to be carried out by a
person having ordinary skills in the art.
- The test for enabling disclosure is whether the person to
whom it is addressed could, by following the directions
therein, put the invention into practice.
- The enabling disclosure shall contain a clear and detailed
description of at least one way of doing the invention using
working examples. It shall contain a sufficient and clear
disclosure of the technical features of the invention
including the manner or process of making, performing,
and using the same, leaving nothing to conjecture.
- In case of chemical substance and pharmaceutical subject
matter, the disclosure must include one or more
representative embodiments or working examples, a
description of the result of the pharmacological test in the
case of pharmaceutical subject matter, and all compounds
must include their claimed activity.
—Rule 405-406, IRR
🦊
Term of a patent
A patent has a life of 20 years from the filing date of the
application.
Starting in the fifth year (that is, upon the expiration of 4 years
from the date the application was published), it must be
maintained yearly.
—Sec 54, RA 8293
Page 18
How is a patent maintained?

- It is maintained through the payment of annual fees.
Payment may be made 3 months before the due date.
- If the annual fee is not paid, the patent application is
deemed withdrawn. It is considered lapsed the day after
the expiration of the period within which the annual fee is
due.
- There is a grace period of 6 months. It is granted upon
payment of surcharge for delayed payment.
—Sec 55, RA 8293
Are patent rights transmissible? May they be owned by more

than one person?
- Yes, and yes.
- The right to a patent belongs to the inventor, his heirs, or
his assigns.
- When two or more persons have jointly made an invention,
the right to a patent shall belong to them jointly.
—Sec 28, RA 8293
🦊First to File Rule

If two or more persons have made the invention separately and
independently of each other, the right to the patent belongs to:
(a) the person who filed an application for such invention; or
(b) if two or more applications are filed for the same invention,
to the applicant who has the earliest filing or priority date.
—Sec 29, RA 8293
🦊Right of Priority
It is a privilege granted to the owner of a foreign patent. The date
when that foreign patent was given a filing date will also be the
filing date insofar as the application of the provisions of RA 8293.
🦊
A local application shall be considered as filed as of the date of
filing the foreign application when these four requisites are
satisfied:
(1) A local patent application is filed by a person who has
previously applied for the same invention in another
country which affords similar privileges to Filipino citizens
Page 19
(i.e., a foreign country which grants reciprocity to Filipino

citizens);
(2) The local application expressly claims priority;
(3) The local application is filed within 12 months from the
priority date (the filing date of the earliest foreign
application); and
(4) A certified copy of the foreign application with an English
translation is filed within 6 months from the date of filing in
the Philippines.
—Sec 31, RA 8293
Surrender of Patent
The owner of the patent may surrender his patent or any claim
that forms part of the patent to the IPO for cancellation, provided
that he obtained the consent of all persons having grants,
licenses, right, title, or interest in the patent and the invention,
which have been recorded in the IPO.
A person may give notice to the IPO of his opposition to the

surrender of a patent. The Bureau shall notify the proprietor of the
patent and determine the question.
If the IPO is satisfied that the patent may properly be surrendered,

the patent owner may accept the offer. The patent ceases to have
effect starting on the day that the notice of his acceptance is
published in the IPO Gazette.
—Sec 56, RA 8293
Changes in Patents
The owner of a patent has the right to request the Bureau to make
the changes in the patent in order to:
(a) Limit the extent of the protection conferred by it;
(b) Correct obvious mistakes or clerical errors; and
(c) Correct mistakes or errors made in good faith.
If the change would broaden the extent of protection conferred by

the patent:
(a) No request may be made after the expiration of 2 years
from the grant of a patent;
(b) The change shall not affect the rights of any third party
which has relied on the patent, as published.
Page 20
No change in the patent shall be permitted if the change would

result in the disclosure in the patent going beyond the disclosure
contained in the application filed.
If, and to the extent to which the IPO changes the patent
according to this section, it shall publish the same.
—Sec 59, RA 8293
Cancellation of Patents
Any interested person may, upon payment of the required fee,
🦊
petition to cancel the patent, any claim, or parts of the claim, on
any of the following grounds: (NDC)
(a) That what is claimed as the invention is not new or
patentable;
(b) That the patent does not disclose the invention in a
manner sufficiently clear and complete for it to be carried
out by any person skilled in the art; or
(c) That the patent is contrary to public order or morality.
If the grounds for cancellation relate to some of the claims or parts

of the claim, cancellation may be effected to such extent only.
—Sec 61, RA 8293
The petition for cancellation shall:

(1) Be in writing;
(2) Be verified by the petitioner or by any person in his behalf
who knows the facts;
(3) Specify the grounds upon which it is based;
(4) Include a statement of the facts to be relied upon;
(5) Be filed with the IPO; and
(6) Have attachments of copies of printed publications, patents
of other countries, and other supporting documents
mentioned in the petition, together with the translation in
English.
—Sec 62, RA 8293
Who can file a petition for cancellation? Any interested person.
Process of cancellation of patent:

(1) Filing of a petition for cancellation and payment of fees;
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(2) Notice of hearing — The Director of Legal Affairs will

serve notice of the filing upon the patentee and all persons
having recorded grants, licenses, or any other right, title or
interest in the patent and the invention; and notice of the
date of hearing. Notice of the filing of the petition will be
🦊
published in the IPO Gazette. —Sec 63, RA 8293
(3) Committee of Three — In cases involving highly
technical issues, any party may file a motion to have the
Director of Legal Affairs order that the petition be heard
and decided by a committee of three. This Committee is
composed of the Director of Legal Affairs as chairman and
2 members who have the experience or expertise in the
field of technology to which the patent sought to be
cancelled relates.
(4) The Committee may either:
(a) order the patent or any specified claim cancelled, if
it finds that a case for cancellation has been
proved. Notice of the cancellation shall be
published in the IPO Gazette; or
(b) decide to maintain the patent as amended, if, taking
into consideration the amendment made by the
patentee during the cancellation proceedings, the
patent and invention meet the requirements under
RA 8293. In this case, the fee for printing of a new
patent must be paid within the time limit prescribed
in the Regulations, otherwise, the patent should be
revoked.
(5) The decision of the committee is appealable to the Director
General. Unless restrained by the Director General, the
decision or order to cancel shall be immediately executory
even pending appeal.
(6) Effect of Cancellation of Patent or Claim — The rights
conferred by the cancelled patent or claim shall terminate.
—Sec 63-66, RA 8293
Remedies of a person with a right to a patent

If a person referred to in Section 29 (First-to-file rule) other than
the applicant, is declared by final court order as the one having the
right to the patent, he has four remedies which he must avail
within 3 months after the finality of the decision:
Page 22
(1) Prosecute the application as his own application in place of

the applicant;
(2) File a new application in respect of the same invention;
(3) Request that the application be refused; or
(4) Seek cancellation of the patent, if one has already been
issued.
If he chooses to option (2) file a new application, the provisions of

Subsection 38.2 shall apply:
- If several independent inventions which do not form a
single general inventive concept are claimed in one
application, the Director may require that the application be
restricted to a single invention.
- A later application filed for an invention divided out shall be
considered as having been filed on the same day as the
first application
- The later application must be filed within 4 months after the
requirement to divide becomes final, or within such
additional time, not exceeding 4 months, as may be
granted.
- Each divisional application shall not go beyond the
disclosure in the initial application.
—Sec 67, RA 8293
Remedies of the True and Actual Inventor

If a person is deprived of the patent without his consent or through
fraud and he is declared by final court order to be the true and
actual inventor, he has two remedies:
(1) The court may order for his substitution as patentee; or
(2) The court may cancel the patent, and award actual and
other damages in his favor if warranted by the
circumstances. —Sec 68, RA 8293
The court shall furnish the IPO a copy of the order or decision
referred to in Sections 67 and 68. This shall be published in the
IPO Gazette within 3 months from the date such order or decision
became final and executory, and it shall be recorded in the
register of the IPO. —Sec 69, RA 8293
Page 23
The actions indicated in Sections 67 and 68 shall be filed within

one year from the date of publication made in accordance with
Sections 44 and 51, respectively:
- Section 44 (Publication of Patent Application): The patent
application shall be published in the IPO Gazette together
with a search document citing any documents that reflect
prior art, after the expiration of 18 months from the filing
date or priority date.
- Section 51 (Refusal of the Application): The final order of
refusal of the patent examiner to grant the patent shall be
appealable to the Director.
—Sec 70, RA 8293
🦊
Limitations of Patent Rights
These may be used as defenses in a case for infringement.
The owner of a patent has no right to prevent third parties from

performing, without his authorization, the acts referred to in
Section 71 (MUOSI, MDUSOI) in the following circumstances:
(MPEGIS - market, privately, experimental, government,
individual, ship)
(1) The patented product was used after it had already been
put on the Philippine market by the owner of the product,
or with his express consent.
- With regard to drugs and medicines, the limitation
on patent rights shall apply after a drug or medicine
has been introduced in the Philippines or anywhere
else in the world by the patent owner, or by any
party authorized to use the invention.
- But the right to import these drugs and medicines
shall be available to any government agency or any
private third party.
(2) The act is done privately and non-commercially, provided
that it does not significantly prejudice the economic
interests of the owner of the patent;
(3) The act is exclusively for experimental use of the invention
for scientific or educational purposes and such other
related activities.
(4) In the case of drugs and medicines, the act includes
testing, using, making or selling the invention including any
related data, solely for purposes reasonably related to the
Page 24
development and submission of information and issuance

of approvals by government regulatory agencies required
under any law of the Philippines or of another country that
regulates the manufacture, construction, use or sale of any
product
(5) The act consists of the preparation for individual cases, in
a pharmacy or by a medical professional, of a medicine in
accordance with a medical prescription or acts concerning
the medicine so prepared; and
(6) The invention is used in any ship, vessel, aircraft, or land
vehicle of any other country entering the territory of the
Philippines temporarily or accidentally, provided that the
invention is used exclusively for the needs of the ship,
vessel, aircraft, or land vehicle and not used for the
manufacturing of anything to be sold within the Philippines.
—Sec 72, RA 8293
🦊Prior User
Any prior user has the right to continue the use of the invention
within the territory where the patent produces its effect, when the
following conditions are satisfied:
(1) He was using the invention in good faith or has undertaken
serious preparations to use the invention in his enterprise
or business; and
(2) He was using the invention before the filing date or priority
date of the application.
The right of the prior user may only be transferred or assigned

together with his enterprise or business, or with that part of his
enterprise or business in which the use or preparations for use
have been made. —Sec 73, RA 8293
When does this arise? When 2 or more persons have the same
kind of invention and only one was able to obtain a patent.
🦊Doctrine of Equivalents
An infringement also takes place when a device appropriates a
prior invention by incorporating its innovative concept and,
although with some modification and change, performs
substantially the same function in substantially the same way to
achieve substantially the same result.
Page 25
🦊Case: Eveready (General Dry Batteries Inc. v Rayovac)

Back in the day, the covers for Eveready dry cells were made of
“carton”. Another company manufactured new dry cells, this time
covered in metal. Eveready accuses the other company of
infringement. The accused company contends that the addition of
a metal cover is an inventive step, making its product different
from that already put up by Eveready.
Under the doctrine of equivalents, the contention of the accused

company must fail. Its “new” product performs substantially the
same function as the Eveready dry cells, in substantially the same
way, to achieve substantially the same result.
🦊Three important dates in Patents and their significance

1. Date of grant - An action for infringement may not be filed
until after the grant of a patent on the published application
and within 4 years from the commission of the acts
complained of. (Section 46)
2. The date of the publication of the grant of the patent is the
date of effectivity of patent; and
3. The filling date of the application is the date where we start
counting the 20-year life of a patent.
🦊 What are the possible defenses in a case for

infringement?
1. That the respondent is a prior user in good faith;
2. That there exists a ground for cancellation of the patent
(NDC); and
3. That the act is allowed under the limitations of patent rights
in the Intellectual Property Code (MPEGIS).
The doctrine of equivalents is not a defense. It actually
strengthens the case against the alleged infringer.
Infringement Action by a Foreign National

Any foreign national or juridical entity may bring an action for
infringement of patent, whether or not licensed to do business in
the Philippines, provided that:
(1) The foreign national or entity meets the requirements of
Section 3 (Reciprocity rule); and
Page 26
(2) The foreign national or entity is not engaged in business in

the Philippines, to which a patent has been granted or
assigned. —Sec 77, RA 8293
Burden of Proof
If the subject matter of a patent is a process for obtaining a
product, any identical product shall be presumed to have been
obtained through the use of the patented process if the product is
new or there is substantial likelihood that the identical product was
made by the process and the owner of the patent has been unable
despite reasonable efforts, to determine the process actually used.
In ordering the defendant to prove that the process to obtain the

identical product is different from the patented process, the court
shall adopt measures to protect, as far as practicable, his
manufacturing and business secrets.
—Sec 78, RA 8293
🦊
Case: Tañada v Angara
The burden of proof rests on the defendant (the one accused of
infringement), not the accuser.
In this case, Article 34 of the General Provisions and Basic

Principles of the Agreement on Trade-Related Aspects of
Intellectual Property Rights (TRIPS) was raised. It states that: for
the purposes of civil proceedings involving infringement of the
rights of the owner, if the subject matter of a patent is a process
for obtaining a product, the judicial authorities shall have the
authority to order the defendant to prove that the process to obtain
an identical product is different from the patented process.
When there is proof to the contrary, the legitimate interests of

defendants in protecting their manufacturing and business secrets
shall be taken into account.
The rule of disputable presumption states that a product shown to

be identical to one produced with the use of a patented process
shall be deemed to have been obtained by the illegal use of the
said patented process in the following situations:
(1) where the identical product obtained by the patented
process is new; or
Page 27
(2) where there is "substantial likelihood" that the identical

product was made with the use of the patented process but
the owner of the patent could not determine the exact
process used in obtaining such identical product.
Hence, the "burden of proof" contemplated by Article 34 should be

understood as the duty of the alleged patent infringer to overthrow
such presumption.
The producer of the identical product has to show that his product
was produced without the use of the patented process.
Note, however, that the patent owner cannot be said to have been
relieved of any burden (the case mentions that the patent owner
still has the “burden of proof”). The owner still has to introduce
evidence of: (a) the existence of the alleged identical product; (b)
the fact that it is "identical" to the genuine one produced by the
patented process; and (c) the fact of "newness" of the genuine
product or the fact of "substantial likelihood" that the identical
product was made by the patented process.
The Patent Law at the time (RA 165) also states: “Sec. 60.
Infringement. — Infringement of a design patent or of a patent for
utility model shall consist in unauthorized copying of the patented
design or utility model for the purpose of trade or industry in the
article or product and in the making, using or selling of the article
or product copying the patented design or utility model. Identity or
substantial identity with the patented design or utility model shall
constitute evidence of copying.”
Inventions Created Pursuant to a Commission

- General rule: The person who commissions the work shall
own the patent.
- Exception: When it is otherwise provided in the contract.
In case the employee made the invention in the course of his
employment contract, the patent shall belong to:
(a) The employee, if the inventive activity is not a part of his
regular duties, even if the employee uses the time, facilities
and materials of the employer.
Page 28
(b) The employer, if the invention is the result of the

performance of his regularly-assigned duties, unless there
is a contrary agreement, express or implied.
—Sec 32, RA 8293
Limitation of Action for Damages

No damages can be recovered for acts of infringement committed
more than 4 years before the institution of the action for
infringement.—Sec 79, RA 8293
VOLUNTARY LICENSE CONTRACT .
To encourage the transfer and dissemination of technology,

prevent or control practices and conditions that may in particular
cases constitute an abuse of intellectual property rights having an
adverse effect on competition and trade, all technology transfer
arrangements shall comply with the provisions of Chapter IX of RA
8293. —Sec 85, RA 8293
🦊Technology transfer arrangements (TTA) are contracts or

agreements involving the transfer of systematic knowledge for the
manufacture of a product, the application of a process, or
rendering of a service including management contracts; and the
transfer, assignment or licensing of all forms of intellectual
property rights, including licensing of computer software except
computer software developed for mass market.
**A voluntary licensing agreement is a type of TTA.
Where to file? IPO, Office of the Director General.
Jurisdiction to Settle Disputes on Royalties

The Director of the DITT Bureau shall exercise quasi-judicial
jurisdiction in the settlement of disputes between parties to a TTA
arising from technology transfer payments, including the fixing of
appropriate amount or rate of royalty. —Sec 86, RA 8293
🦊Prohibited Clauses
The following provisions are deemed prima facie to have an
adverse effect on competition and trade (except under the
exceptional cases in Section 91):
Page 29
(1) Those which impose upon the licensee the obligation to:
(a) acquire from a specific source capital goods,
intermediate products, raw materials, and other
technologies; or of
(b) permanently employ personnel indicated by the
licensor;
(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;
(3) Those that contain restrictions regarding the volume and
structure of production;
(4) Those that prohibit the use of competitive technologies in a
non-exclusive technology transfer agreement;
(5) Those that establish a full or partial purchase option in
favor of the licensor;
(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;
(7) Those that require payment of royalties to the owners of
patents for patents which are not used;
(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 products have already been granted;
(9) Those which restrict the use of the technology supplied
after the expiration of the TTA, except in cases of early
termination due to reasons attributable to the licensee;
(10) Those which require payments for patents and other
industrial property rights after their expiration, termination
arrangement;
(11) Those which require that the technology recipient shall
not contest the validity of any of the patents of the
technology supplier;
(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;
(13) Those which prevent the licensee from adapting the
imported technology to local conditions, or introducing
Page 30
innovation to it, as long as it does not impair the quality

standards prescribed by the licensor;
(14) Those which exempt the licensor for liability for non-
fulfillment of his responsibilities under the TTA and liability
arising from third party suits brought about by the use of
the licensed product or the licensed technology; and
(15) Other clauses with equivalent effects.
—Sec 87, RA 8293
🦊Mandatory Provisions
The following provisions shall be included in voluntary license
contracts:
(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;
(2) Continued access to improvements in techniques and
processes related to the technology shall be made
available during the period of the TTA;
(3) If the TTA provides 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
(4) The Philippine taxes on all payments relating to the TTA
shall be borne by the licensor.
—Sec 88, RA 8293
Rights of Licensor
He has the right to enter into as many VLAs as he wants, except
when the licensee is given the exclusive right to distribute the
invention.
In the absence of any contrary provision in the TTA, the grant of a

license shall not prevent the licensor from:
(1) granting further licenses to third person; or
(2) exploiting the subject matter of the TTA himself.
—Sec 89, RA 8293
Page 31
Rights of Licensee
The licensee is entitled to exploit the subject matter of the TTA
during its whole term.
—Sec 90, RA 8293
🦊 Exploitation includes all the acts under Section 71 (MUOSI,

MDUSOI).
Exceptional Cases
Exemption from any of the prohibited clauses and other
requirements may be allowed by the DITT Bureau after evaluation,
on a case by case basis, if the situation falls under an exceptional
or meritorious case where substantial benefits will accrue to the
economy, such as:
(1) high technology content;
(2) increase in foreign exchange earnings;
(3) employment generation (labor extensive enterprise);
(4) regional dispersal of industries and/or substitution with or
use of local raw materials; or
(5) in the case of Board of Investments, registered companies
with pioneer status.
—Sec 91, RA 8293
Non-Registration with the DITT Bureau

TTAs that conform with Sections 86 (jurisdiction) and 87
(prohibited clauses) need not be registered with the DITT Bureau.
Non-conformance with any of the provisions of Sections 87

(prohibited clauses) and 88 (mandatory clauses), however, shall
automatically render the TTA unenforceable, unless it is approved
and registered with the DITT Bureau under the provisions of
Section 91 (exceptional cases). —Sec 92, RA 8293
🦊A VLA need not be registered to be enforceable, as long as it

complies with the law. Either parties can demand performance of
each other’s obligations. The licensor has the right to demand for
payment of royalties. The licensee has the right to exploit.
What needs to be registered? A ny encumbrance or conveyance

of patents need to be registered with the IPO.
Page 32
Tatang’s example: M r. A conveyed his patent to X, with X paying

valuable consideration. X did not register the conveyance/sale
with the IPO. Later, A conveyed the same patent to another
person, Mr. Y, who also paid valuable consideration. Y was able to
have this registered right away. Who has the better right?
Y has the better right because he is the registered vendee. The

vendee has the duty to register the sale. (Apply the doctrine of
double sales.)
COMPULSORY LICENSING .
🦊Two kinds of Compulsory Licensing

1. Those granted under the 6 grounds in Section 93
2. Cross-licenses based on interdependence of patents under
Section 97, which are 2 licenses that cannot exist without
the other
First kind — Grounds for Compulsory Licensing

The Director General of the IPO may grant a license to exploit a
patented invention, e ven without the agreement of the patent
owner, in favor of any person who has shown his capability to
exploit the invention, under any of the following circumstances:
(1) National emergency or other circumstances of extreme
urgency;
(2) Where the public interest so requires;
Public interest may mean national security,
nutrition, health or the development of other vital
sectors of the national economy as determined by
the appropriate agency of the Government;
(3) Where a judicial or administrative body has determined
that the manner of exploitation by the owner of the patent
or his licensee is anti-competitive;
(4) In case of public non-commercial use of the patent by the
patentee, without satisfactory reason;
(5) If the patented invention is not being worked in the
Philippines on a commercial scale, although capable of
being worked, without satisfactory reason;
Importation of the patented article constitutes
working or using the patent;
Page 33
(6) Where the demand for patented drugs and medicines is

not being met to an adequate extent and on reasonable
terms, as determined by the Secretary of the Department
of Health.
—Sec 93, RA 8293
🦊Second kind — Compulsory License Based on

Interdependence of Patents
If the invention protected by a patent (second patent) cannot be
worked without infringing another patent (first patent) that was
granted on a prior application or benefiting from an earlier priority,
a compulsory license may be granted to the owner of the second
patent to the extent necessary for the working of his invention,
subject to the following conditions:
(1) The invention claimed in the second patent involves an
important technical advance of considerable economic
significance in relation to the first patent;
(2) The owner of the first patent shall be entitled to a
cross-license on reasonable terms to use the invention
claimed in the second patent;
(3) The use authorized in respect of the first patent shall be
non- assignable except with the assignment of the second
patent; and
(4) The terms and conditions of Sections 95 (reasonable
commercial terms), 96 (semi-conductor technology) and 98
to 100 (form and contents of petition, notice, terms and
conditions) of RA 8293.
—Sec 97, RA 8293
Special Compulsory License under the TRIPS Agreement

The Director General of the IPO, upon the written
recommendation of the Secretary of the Department of Health,
shall, upon filing of a petition, grant a special compulsory license
for the importation of patented drugs and medicines.
- The special compulsory license is an additional special

alternative procedure to ensure access to quality
affordable medicines and shall be primarily for domestic
consumption.
- Adequate remuneration shall be paid to the patent owner
either by the exporting country or the importing country.
Page 34
- The compulsory license shall also contain a provision

directing the grantee to exercise reasonable measures to
prevent the re-exportation of the products imported.
This grant of a special compulsory license for patented drugs and

medicines shall be an exception to Sections 100.4 and 100.6:
- “100.4. Use of the subject matter of the license shall be
devoted predominantly for the supply of the Philippine
market: Provided, That this limitation shall not apply where
the grant of the license is based on the ground that the
patentee’s manner of exploiting the patent is determined
by judicial or administrative process, to be
anti-competitive.”
- “100.6. The patentee shall be paid adequate remuneration
taking into account the economic value of the grant or
authorization, except that in cases where the license was
granted to remedy a practice which was determined after
judicial or administrative process, to be anti-competitive,
the need to correct the anti-competitive practice may be
taken into account in fixing the amount of remuneration.”
- This grant of a special compulsory license for patented

drugs and medicine shall be immediately executory.
- No court, except the Supreme Court, shall issue any
temporary restraining order or preliminary injunction or
such other provisional remedies that will prevent the grant
of the special compulsory license.
- A compulsory license shall also be available for the
manufacture and export of drugs and medicines to any
country having insufficient or no manufacturing capacity in
the pharmaceutical sector to address public health
problems, as long as a compulsory license has been
granted by such country or such country has, by
notification or otherwise, allowed importation into its
jurisdiction of the patented drugs and medicines from the
Philippines in compliance with the TRIPS Agreement.
- The right to grant a special compulsory license shall not
limit or prejudice the rights, obligations and flexibilities
provided under the TRIPS Agreement and under Philippine
laws, particularly Section 72.1 (Using a patented product
which has been put on the market in the Philippines by the
Page 35
owner of the product, or with his express consent) and

Section 74 (Use of invention by the government).
- It is also without prejudice to the extent to which drugs and
medicines produced under a compulsory license can be
exported as allowed in the TRIPS Agreement and
applicable laws.
—Sec 93-A, RA 8293
Period for Filing a Petition for a Compulsory License

(1) If the ground is the fifth ground (“If the patented invention is
not being worked in the Philippines on a commercial scale,
although capable of being worked, without satisfactory
reason”), the license may not be applied before the
expiration of a period of 4 years from the date of filing of
the application or 3 years from the date of the patent,
whichever period expires last.
(2) All other grounds, except the first, may be applied for at
any time after the grant of the patent.
—Sec 94, RA 8293
Requirement to Obtain a License on Reasonable Commercial

Terms
A compulsory license shall only be granted after the petitioner has
made efforts to obtain authorization from the patent owner on
reasonable commercial terms and conditions but such efforts have
not been successful within a reasonable period of time.
This requirement shall not apply in any of the following cases:

(a) Where the petition for compulsory license seeks to remedy
a practice determined after judicial or administrative
process to be anti- competitive;
(b) In situations of national emergency or other circumstances
of extreme urgency;
(c) In cases of public non-commercial use; and
(d) In cases where the demand for the patented drugs and
medicines in the Philippines is not being met to an
adequate extent and on reasonable terms, as determined
by the Secretary of the Department of Health.
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In situations of national emergency or other circumstances of

extreme urgency, the right holder shall be notified as soon as
reasonably practicable.
In the case of public non-commercial use, where the government

or contractor, without making a patent search, knows or has
demonstrable grounds to know that a valid patent is or will be
used by or for the government, the right holder shall be informed
promptly.
Where the demand for the patented drugs and medicines in the
Philippines is not being met to an adequate extent and on
reasonable terms, as determined by the Secretary of the
Department of Health, the right holder shall be informed promptly.
—Sec 95, RA 8293
Compulsory Licensing of Patents Involving Semi-Conductor

Technology
In the case of compulsory licensing of patents involving
semiconductor technology, the license may only be granted:
(a) in case of public non-commercial use; or
(b) to remedy a practice determined after judicial or
administrative process to be anti-competitive.
—Sec 96, RA 8293
Form and Contents of Petition

The petition for compulsory licensing must:
(1) Be in writing;
(2) Be verified by the petitioner;
(3) Be accompanied by payment of the required filing fee;
(4) Contain the name and address of the petitioner as well as
those of the respondents, the number and date of issue of
the patent in connection with which compulsory license is
sought, the name of the patentee, the title of the invention,
the statutory grounds upon which compulsory license is
sought, the ultimate facts constituting the petitioner's cause
of action, and the relief prayed for. —Sec 98, RA 8293
Notice of Hearing
Upon filing of a petition, the Director of Legal Affairs shall serve
notice of the filing and notice of hearing upon the (1) patent owner;
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and (2) all persons having grants or licenses, or any other right,
title or interest in and to the patent and invention covered as
appears of record in the Office.
In every case, the notice shall be published by the said Office in a

newspaper of general circulation, once a week for 3 consecutive
weeks and once in the IPO Gazette at applicant’s expense.
—Sec 99, RA 8293
Terms and Conditions of Compulsory License

The basic terms and conditions, including the rate of royalties, of a
compulsory license shall be fixed by the Director of Legal Affairs
subject to the following conditions:
(1) The scope and duration of such license shall be limited to
the purpose for which it was authorized;
(2) The license shall be non-exclusive;
(3) The license shall be non-assignable, except with that part
of the enterprise or business with which the invention is
being exploited;
(4) Use of the subject matter of the license shall be devoted
predominantly for the supply of the Philippine market;
But this limitation shall not apply where the grant of
the license is based on the ground that the
patentee’s manner of exploiting the patent is
determined by judicial or administrative process, to
be anti-competitive.
(5) The license may be terminated upon proper showing that
circumstances which led to its grant have ceased to exist
and are unlikely to recur;
Adequate protection shall be afforded to the
legitimate interest of the licensee; and
(6) The patentee shall be paid adequate remuneration taking
into account the economic value of the grant or
authorization, except that in cases where the license was
granted to remedy a practice which was determined after
judicial or administrative process, to be anti-competitive,
the need to correct the anti-competitive practice may be
taken into account in fixing the amount of remuneration.
—Sec 100, RA 8293
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Amendment of Compulsory License

Upon the request of the patentee or the licensee, the Director of
Legal Affairs (DLA) may amend the decision granting the
compulsory license, upon proper showing of new facts or
circumstances justifying such amendment.
Cancellation of Compulsory License

Upon the request of the patentee, the DLA may cancel the
compulsory license:
(a) If the ground for the grant of the compulsory license no
longer exists and is unlikely to recur;
(b) if the licensee has neither begun to supply the domestic
market nor made serious preparation therefor;
(c) if the licensee has not complied with the prescribed
terms of the license;
Surrender of Compulsory License

The licensee may surrender the license by a written declaration
submitted to the Office.
The DLA shall cause the amendment, surrender, or cancellation in

the Register, notify the patentee, and/or the licensee, and cause
notice thereof to be published in the IPO Gazette.
—Sec 101, RA 8293
Licensee’s Exemption from Liability

Any person who works a patented product, substance and/or
process under a license shall be free from any liability for
infringement
In the case of voluntary licensing, no collusion with the licensor

shall be proven. This is without prejudice to the right of the rightful
owner of the patent to recover from the licensor whatever he may
have received as royalties under the license.
—Sec 102, RA 8293
🦊Royalties v Just Compensation

Royalties are paid in voluntary licensing contracts. Compensation
is paid in compulsory licenses.
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Why should there be just compensation? If there would be no just

compensation paid to the patent owners, it would be confiscatory
and would be violative of a person’s right to his property.
Transmission of Rights
Patents or applications for patents and invention to which they
relate, shall be protected in the same way as the rights of other
property under the Civil Code.
Inventions and any right, title or interest in and to patents and

inventions covered thereby, may be assigned or transmitted by:
(a) inheritance; or
(b) bequest; or
(c) a license contract.
—Sec 103, RA 8293
Assignment of Inventions
An assignment may be of:
(1) the entire right, title or interest in and to the patent and the
invention covered thereby; or
(2) an undivided share of the entire patent and invention, in
which event the parties become joint owners thereof.
An assignment may also be limited to a specified territory.
—Sec 104, RA 8293
Form of Assignment
The assignment must be
(1) in writing;
(2) acknowledged before a notary public or other officer
authorized to administer oath or perform notarial acts; and
(3) certified under the hand and official seal of the notary or
such other officer.
—Sec 105, RA 8293
Recording
The Office shall record assignments, licenses and other
instruments relating to the transmission of any right, title or interest
in and to inventions, and patents or application for patents or
inventions to which they relate, which are presented in due form to
the Office for registration, in books and records kept for the
purpose.
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The original documents together with a signed duplicate thereof

shall be filed, and the contents thereof should be kept confidential.
If the original is not available, an authenticated copy thereof in
duplicate may be filed. Upon recording, the Office shall retain the
duplicate, return the original or the authenticated copy to the party
who filed the same and notice of the recording shall be published
in the IPO Gazette.
Such instruments shall be void as against any subsequent

purchaser or mortgagee for valuable consideration and without
notice, unless, it is so recorded in the Office, within 3 months from
the date of said instrument, or prior to the subsequent purchase or
mortgage. —Sec 106, RA 8293
Rights of Joint Owners

If two (2) or more persons jointly own a patent and the invention
covered thereby, either by the issuance of the patent in their joint
favor or by reason of the assignment of an undivided share in the
patent and invention or by reason of the succession in title to such
share, each of the joint owners shall be entitled to personally
make, use, sell, or import the invention for his own profit.
But neither of the joint owners shall be entitled to grant licenses or

to assign his right, title or interest or any part without the consent
of the other owner or owners, or without proportionally dividing the
proceeds with such other owner or owners.
—Sec 107, RA 8293
UTILITY MODEL .
Definition
A Utility Model is a protection option, which is designed to protect
innovations that are not sufficiently inventive to meet the inventive
threshold required for standard patents application.
It may be any useful machine, implement, tools, product,

composition, process, improvement or part of the same, that is of
practical utility, novelty and industrial applicability.
—https://www.ipophil.gov.ph/faq/utility-model/
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🦊What is the difference between a patent and a utility

model?
They differ in one element: the inventive step.
Any technical solution which is new, has an inventive step, and is

industrially applicable is a patentable invention. Any technical
solution of a problem in any field of human activity which is new
and industrially applicable is a registrable utility model.
An inventive step exists when an aspect of the invention is not

obvious to a person skilled in the art.
Case—Ching v Salinas (G.R. No. 161295 June 29, 2005)

A utility model may be, or may relate to, a product, or process, or
an improvement of any of the aforesaid.
Essentially, a utility model refers to an invention in the mechanical

field. This is the reason why its object is sometimes described as a
device or useful object.
A utility model varies from an invention, on at least three aspects:

(1) the requisite of "inventive step" is not required;
(2) the maximum term of protection is only 7 years, compared
to a patent which is 20 years, both reckoned from the date
of the application; and
(3) the provisions on utility model dispense with its substantive
examination and prefer for a less complicated system.
FAQs from IPO website

—https://www.ipophil.gov.ph/faq/utility-model/
1. Why is it important to register a utility model?
A utility model allows the right holder to prevent others
from commercially using the protected invention, without
his authorization. Compared with patents, it is relatively
inexpensive and easier to obtain.
2. How different are utility models from inventions?
A patent requires an inventive step while a utility model
does not. Patent application requires substantive
examination after publication whereas a utility model
application is readily registered without undergoing
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substantive examination after meeting all formality

requirements.
Tatang’s example: Two Flashlights

A flashlight that works through dry cells already exists and is
patented. Another person invented a flashlight that can be
charged, such that it doesn’t need disposable dry cells to work, it
only needs to be plugged to an electrical outlet. It can store energy
in its body.
Is the second type of flashlight patentable? Yes, the second type

of flashlight is patentable. The new way of storing energy is an
inventive step.
But the two patents would now be interdependent. The inventor of

the second type of flashlight should file for a compulsory license
(cross-license) to be able to manufacture his version.
Applicability of Provisions Relating to Patents

Subject to the special provisions for utility models (under Section
109), the provisions governing patents shall apply, mutatis
mutandis, to the registration of utility models.
Where the right to a patent conflicts with the right to a utility model
registration in the case referred to in the First-to-file Rule (Section
29), the said rule shall apply as if the word "patent" were replaced
by the words "patent or utility model registration”.
—Sec 108, RA 8293
Special Provisions Relating to Utility Models

- An invention qualifies for registration as a utility model if it
is new and industrially applicable.
- Section 21, "Patentable Inventions", shall apply except the
reference to inventive step as a condition of protection.
- Sections 43 to 49 shall not apply in the case of applications
for registration of a utility model.
- SEC. 43. Classification and Search
- SEC. 44. Publication of Patent Application
- SEC. 45. Confidentiality Before Publication
- SEC. 46. Rights Conferred by a Patent Application
After Publication.
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- SEC. 47. Observation by Third Parties.

- SEC. 48. Request for Substantive Examination
- SEC. 49. Amendment of Application
Term of a utility model: A utility model registration shall expire,

without any possibility of renewal, at the end of the 7th year after
the date of the filing of the application.
Grounds for cancellation of a utility model

1. That the claimed invention does not qualify for registration
as a utility model and does not meet the requirements of
registrability:
a. Subsection 109.1 (new and industrially applicable)
b. Sections 22 (non-patentable inventions), 23
(novelty), 24 (prior art), and 27 (industrial
applicability);
2. That the description and the claims do not comply with the
prescribed requirements;
3. That any drawing which is necessary for the understanding
of the invention has not been furnished;
4. That the owner of the utility model registration is not the
inventor or his successor in title.
—Sec 109, RA 8293
Conversion to Application for Registration of Utility Model

- An application for a patent may be converted into an
application for registration of a utility model, at any time
before the grant or refusal of a patent.
- It will be accorded the filing date of the initial application.
- An application may be converted only once.
—Sec 110, RA 8293
Parallel applications
There is a prohibition against parallel applications, that is, when an
applicant files 2 applications for the same subject, one for utility
model registration and the other for the grant of a patent, whether
simultaneously or consecutively.
In case an applicant does this, only the application with the prior
filing date or priority date shall be considered for examination, and
all other applications shall be deemed forfeited.
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—Sec 111, RA 8293
INDUSTRIAL DESIGN .
An Industrial Design is any composition of lines or colors or any

three-dimensional form, whether or not associated with lines or
colors. Such composition or form gives a special appearance to
and can serve as a pattern for an industrial product or handicraft.
Example: Toblerone, Kisses
**If it is not possible to obtain a patent for the mere outward

appearance of an article, that is, a shape configuration, pattern or
ornamentation (because a patent protects the functional
application of a product), an Industrial Design registration may be
a more appropriate option.
However, if the outward appearance has a functional application
as opposed to a mere visual purpose, it may be possible to obtain
patent protection, subject to the patentability requirements of
novelty, inventive step and industrial application.
—IPO website
FAQs from IPO website

—https://www.ipophil.gov.ph/services/industrial-design/
What is an industrial design?

An industrial design is the ornamental or aesthetic aspect of an
article. Design, in this sense, may be 3D features (shape or
surface of an article), or the 2D features (patterns or lines of
color). Handicrafts, jewelry, vehicles, appliances - the subject of
industrial designs range from fashion to industrial goods.
What are the benefits of registering?

The owner of a registered industrial design has the right to prevent
third parties from making, selling or importing articles bearing or
embodying a design which is a copy, or substantially a copy, of
the protected design, for commercial purposes.
Eligibility
In order to be registrable, an industrial design must be a new or
original creation.
Page 45
Extent of protection
In order to be protected, industrial designs should be
non-functional. This means that an industrial design is primarily of
an aesthetic nature and any technical features of the article to
which it is applied are not protected.
The following industrial designs are not registrable

1. Industrial designs that are dictated essentially by technical
or functional considerations to obtain a technical result;
2. Industrial designs which are mere schemes of surface
ornamentations existing separately from the industrial
product or handicraft; and
3. Industrial designs which are contrary to public order,
health, or morals.
Term
The registration for an industrial design is for a period of 5 years
from the filing date of the application.
The registration of an industrial design may be renewed for not

more than 2 consecutive periods of 5 years each by paying a
renewal fee. The fee should be paid within a year of the expiration
of the registration.
**Industrial design registrations are governed by some of the

same provisions that apply to patents.
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.
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.
Page 46
COPYRIGHT .
What are copyrights?

Copyright or economic rights consist of the exclusive right to carry
out, authorize or prevent the following acts: (RD-FR-PPO)
1. Reproduction of the work or substantial portion of the work;
2. Dramatization, translation, adaptation, abridgment,
arrangement or other transformation of the work;
3. The first public distribution of the original and each copy of
the work by sale or other forms of transfer of ownership;
4. Rental of the original or a copy of an audiovisual or
cinematographic work, a work embodied in a sound
recording, a computer program, a compilation of data and
other materials or a musical work in graphic form,
irrespective of the ownership of the original or the copy
which is the subject of the rental;
5. Public display of the original or a copy of the work;
6. Public performance of the work; and
7. Other communication to the public of the work.
—Sec 177, RA 8293
What may be the subject of copyright?

Copyright protects both original and derivative works.
(1) “Original work” refers to every production in the literary,
scholarly, scientific, and artistic domain.
(The literary and artistic works include: books and other
writings, music, paintings, sculptures, movies, photos,
ornamental designs, computer programs, and other items
listed in Sec 172, RA 8293)
(2) “Derivative work” refers to works based upon one or more
preexisting works. It includes:
(a) dramatizations, translations, adaptations,
abridgments, arrangements, and other alterations
of literary/artistic works; and
(b) collections of literary, scholarly or artistic works,
and compilations of data and other materials, which
are original by reason of selection, coordination,
and arrangement of contents. —Sec 173, RA 8293
What may not?

No protection shall extend to:
Page 47
(1) Any idea, procedure, system, method or operation,

concept, principle, discovery or mere data, even if they are
expressed, explained, illustrated or embodied in a work;
(2) News of the day and other miscellaneous facts having the
character of mere items of press information;
(3) Any official text of a legislative, administrative or legal
nature, as well as any official translation; and
(4) Any work of the Government of the Philippines.
—Sec 175-176, RA 8293
In the case of works by the government:

- Prior approval of the government agency or office where
the work is created is necessary for exploitation of such
work for profit. Such agency may impose royalties.
- No prior approval or conditions shall be required for the
use 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.
- The Government is not precluded from receiving and
holding copyrights transferred to it by assignment, bequest
or otherwise.
- Publication or republication by the government in a public
document of any copyrighted work would neither annul the
copyright, nor authorize its use or appropriation without the
consent of the copyright owner.
Case—Santos v. McCullough (1964)
Facts: Santos designed former Ambassador Felino Neri’s personal

Christmas cards in 1959. The design depicts "a Philippine rural
Christmas time scene consisting of a woman and a child in a nipa
hut adorned with a star-shaped lantern and a man astride a
carabao, beside a tree, underneath which appears the plaintiff's
pen name, Malang."
The following year, McCullough Printing Company (MPC)

displayed the very design in its album of Christmas cards and
offered it for sale.
Page 48
This prompted Santos to file an action for damages under Articles

721 and 722 of the Civil Code, allegedly for the unauthorized use,
adoption and appropriation by MPC of Santos’ intellectual creation
or artistic design for a Christmas Card. Santos claimed to have
suffered moral damages because it has placed his professional
integrity and ethics under serious question and caused him grave
embarrassment before Ambassador Neri.
MPC’s contentions: The design claimed does not contain a clear

notice that it belonged to Santos, and that he prohibits other from
using it; and the design has been published but does not contain a
notice of copyright;
The RTC ruled against Santos, because he did not choose to

protect his intellectual creation by a copyright. The lack of
copyright converts the property to one of public domain. Since his
name appears in each of the copies, MPC cannot be said to have
pirated or plagiarized the work.
The court held that as a general proposition, the artist acquires

ownership of the product of his art. At the time of its creation, he
has absolute dominion over it. To help the author protect his
rights, the copyright law was enacted. In intellectual creations, a
distinction must be made between two classes of property rights:
1. the fact of authorship; and
2. the right to publish and/or distribute copies of the creation.
The artist cannot be divested of the first, but the second would
only be protected if a copyright has been applied for.
Issue: Whether Santos is entitled to protection, even though he

has not copyrighted his design.
SC’s decision: No. Santos is not entitled to protection.
The copyright law at the time states that an intellectual creation

should be copyrighted 30 days after its publication, if made in
Manila, or within 60 days if made elsewhere. Failure to do so
renders the creation public property.
Here, the design was never copyrighted.
Page 49
Moreover, the publication of the card was general, not limited. It

has been held that when there has been an offer to sell a dress
manufactured in accordance with an original design which is not
protected by either a copyright or a patent, the owner of the
original design is divested of his common law rights by virtue of
the publication of a 'copy' and thereafter anyone is free to copy the
design of the dress.
In this case, when Ambassador Neri distributed 800 copies of the

design, Santos lost control of his design and the necessary
implication was that there had been a general publication, there
having been no showing of a clear indication that a limited
publication was intended.
The author of a literary composition has a right to its first

publication. He has a right to determine whether it shall be
published at all, and if published, when, where, by whom, and in
what form. This exclusive right is confined to the first publication.
Once published, it is dedicated to the public, and the author loses
the exclusive right to control subsequent publication by others,
unless the work is placed under the protection of the copyright
law.
Notes from IPO website:
—https://www.ipophil.gov.ph/services/copyright/
Copyright is the legal protection extended to the owner of the

rights in an original work.
What are the benefits of copyrighting your work?

Copyright laws grant authors, artists and other creators automatic
protection for their literary and artistic creations, from the moment
they create it. The creators of works protected by copyright hold
the exclusive right to use or authorize others to use the work on
agreed terms.
The right holder of a work can authorize or prohibit its reproduction

in all forms, including print form and sound recording, public
performance and communication to the public, broadcasting,
translation into other languages, and adaptation, such as from a
novel to a screenplay for a film.
Page 50
Is it required to deposit the work with the IPO?

No. Recordation or deposit of works isn’t necessary but authors
and artists may opt to execute an affidavit of ownership with the
National Library or the IPOPHL for the issuance of recordation and
deposit.
Who owns the copyright?

—Sec 178, RA8293
(1) In the case of original literary and artistic works, the author
holds the copyright to it. An “author" is the natural person
who has created the work.
(2) If the work was jointly authored, the co-authors are the
original copyright owners. In the absence of an agreement,
rules of co-ownership apply. But if the work’s parts can be
used separately, and the corresponding authors for each
part can be identified, then each author has copyright over
his/her own part.
(3) In the case of work created during and in the course of
employment:
(a) The employee owns the copyright if the creation
was not part of his regular duties, even if the
employee used the employer’s resources.
(b) The employer owns the copyright if the work was
the result of the performance of regular duties,
unless there is a contrary agreement.
(4) In case the work was commissioned by a third person (not
employer) who pays for it, that third person owns the work,
but the copyright remains with the creator.
(5) In the case of audiovisual work, the copyright belongs to
the producer, author of a scenario, music composer, film
director, and author of the work so adapted. But the
producer may exercise this copyright to an extent required
for the work’s exhibition, except the right to collect license
fees for the performance of musical compositions
incorporated into the work.
(6) In the case of letters, the copyright belongs to the writer.
Anonymous/Pseudonymous Works
General rule: The publishers shall be deemed to represent the
authors of works published anonymously or via pseudonyms.
Exceptions:
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(1) If the contrary appears;

(2) If the pseudonym or adopted name leaves no doubts as to
the author’s identity; or
(3) If the author of the anonymous works discloses his identity.
—Sec 179, RA 8293
What are two types of rights under copyright?

(1) Economic rights that enable the author to earn from his
work, and gives him control over the use of it, like:
(a) Reproduction of the work or a substantial part;
(b) Dramatization, translation, adaptation;
(c) First public distribution of the original and each
copy of the work by sale or transfer of ownership;
(d) Rental;
(e) Public display;
(f) Public performance;
(g) Other communication to the public of the work (like
broadcasting, rebroadcasting, cable, satellite, or
wireless means);
(2) Moral rights that govern the author’s connection to his
work:
(a) Right of Attribution as author;
(b) Right of Alteration and withholding of publication;
(c) Right of Integrity (object to any prejudicial
distortion); and
(d) Right to restrain use of his name.
—Sec 193, RA 8293
Rules in the transfer, assignment, and licensing of copyrights

—Sec 180-183, RA 8293
- May copyrights be transferred to another person? Yes.
- The copyright may be assigned or licensed in whole or in
part. The assignee or licensee would be entitled to all the
rights and remedies (within the scope of license).
- There must be a written indication of such assignment.
- The submission of a literary, photographic or artistic work
to a newspaper, magazine or periodical for publication
shall constitute only a license to make a single publication,
unless a greater right is expressly granted.
Page 52
- If 2 more persons jointly own a copyright, none of the

owners are entitled to grant licenses without the prior
written consent of the other owners.
- The copyright owner has the right to regular statements of
accounts from the assignee or the licensee with regard to
assigned or licensed work.
- The copyright is distinct from the property in the material
object subject to it. Consequently, the transfer, assignment
or licensing of the copyright shall not itself constitute a
transfer of the material object. Nor shall a transfer or
assignment of the sole copy or of one or several copies of
the work imply transfer, assignment or licensing of the
copyright.
- The owners of copyright and related rights or their heirs
may designate a society of artists, writers, composers and
other right-holders to collectively manage their economic or
moral rights on their behalf. Before these societies may
enforce the rights, they shall first secure the necessary
accreditation from the IPO.
What are the limitations of copyright?

Copyright protection is not intended to give the copyright owner
absolute control over all possible exploitation of his work.
The law provides for limitations (“statutory fair uses”) on the

economic rights of authors. These acts do not constitute copyright
infringement even if done without the consent of the copyright
holder:
(1) The recitation or performance of a work, once it has been
lawfully made accessible to the public, if done privately and
free of charge or if made strictly for a charitable or religious
institution or society;
(2) The making of quotations from a published work if they are
compatible with fair use and only to the extent justified for
the purpose, but the source and the name of the author
must be mentioned;
(3) The reproduction or communication to the public by mass
media for information purposes, provided that the source is
clearly indicated;
(4) The reproduction and communication to the public of
literary, scientific, or artistic works as part of reports of
Page 53
current events by means of photography, cinematography

or broadcasting to the extent necessary for the purpose;
(5) 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, but the source
and the name of the author must be mentioned;
(6) The recording made in schools, universities, or educational
institutions of a work included in a broadcast, but the
recording must be deleted within a reasonable period after
they were first broadcast, and it may not be made from
audiovisual works which are part of the general cinema
repertoire of feature films except for brief excerpts of the
work;
(7) The making of ephemeral (temporary) recordings by a
broadcasting organization by means of its own facilities
and for use in its own broadcast;
(8) The use of a work by or under the direction or control of
the Government, National Library, or an educational,
scientific or professional institution where such use is in the
public interest and is compatible with fair use;
(9) The public performance or the communication to the public
of a work, in a place where no admission fee is charged by
a club or institution for charitable or educational purpose;
(10) Public display of the work, provided that the work has
been published, or that the original or the copy displayed
has been sold, given away, or transferred to another
person by the author or his successor in title;
(11) For the purpose of any judicial proceedings or for the
giving of professional advice by a legal practitioner; and
(12) The reproduction or distribution of published articles or
materials in a specialized format exclusively for the use of
the blind, visually- and reading-impaired persons, on a
nonprofit basis.
—Sec 184, RA 8293
What is fair use?

The fair use of a copyrighted work for criticism, comment, news
reporting, teaching, scholarship, research, and similar purposes is
not an infringement of copyright.
Page 54
In determining whether there is fair use, the factors are:

(1) The purpose and character of the use, including whether
such use is of a commercial nature or is for non-profit
educational purposes;
(2) The nature of the copyrighted work;
(3) The amount and substantiality of the portion used in
relation to the copyrighted work as a whole; and
(4) The effect of the use upon the potential market for or value
of the copyrighted work. —Sec 185, RA 8293
Is there a copyright law on the internet?

Yes. The Philippines had acceded to the WIPO Copyright Treaty
and WIPO Performances and Phonograms Treaty, collectively
known as the “WIPO Internet Treaties”, in March 2002. The
treaties entered into force here on October 4, 2002. The Internet
Treaties were formulated to update and improve the protection
afforded by the existing copyright treaties. They ensure that the
copyright holders will continue to be protected when their works
are disseminated through the Internet. —IPO
Term - How long does a copyright last?

—Sec 213 & 215, RA 8293
- General rule: Works with copyright shall be protected
during the life of the author and for 50 years after his/her
death.
- For jointly-authors works, it shall subsist during the life of
the last surviving author and 50 years after his/her death.
- In the case of anonymous/pseudonymous works, the
copyright shall be for 50 years from the date of first lawful
publication. But if the author reveals his/her identity before
the end of those 50 years, then the general rule applies.
- In case of works of applied art, the protection shall be for
25 years from the date of making. (A "work of applied art"
is an artistic creation with utilitarian functions or
incorporated in a useful article, whether made by hand or
produced on an industrial scale.)
- In case of photographic works and audio-visual works,
protection shall be for 50 years from publication. If
unpublished, protection shall be for 50 years from the
making.
Page 55
- For performances not incorporated in sound recordings,

the performers and producers are granted 50 years
protection from the end of the year of performance.
- For sound or image and sound recordings and
performances incorporated there, protection shall be for 50
years from the end of the year of its recording.
What constitutes copyright violation?

Copyright infringement occurs when there is a violation of the
economic rights granted to the copyright owner, or to the owners
of related rights. It may also consist in aiding or abetting such
infringement. —IPO
Under Sec 216, RA 8293, a person is a copyright infringer when

he/she:
(1) Directly commits an infringement;
(2) Benefits from the activity of the person who commits the
infringement; or
(3) Induces, causes, or materially contributes to, the
infringement (with knowledge of the activity).
Copyright infringement & Remedies

—Sec 216-219, RA 8293
A person who infringes a copyright is liable:
(1) To an injunction;
(2) To pay the copyright holder damages, legal costs, and
other expenses, as well as the profits he/she made (actual
damages and profits);
(3) To deliver sales invoice and other documents alleged to
infringe a copyright;
(4) To deliver all infringing copies, devices, molds, plates, and
other means used for copying; and
(5) To pay moral and exemplary damages, if deemed proper.
Instead of actual damages and profits, the copyright owner also

has an option, before final judgment, to recover statutory
damages in a sum equivalent to the filing fee but not less than
50,000. This may be reduced to not more than 10,000 if the
infringer was not aware or had no reason to believe that his/her
act constituted infringement.
Page 56
An affidavit by or on behalf of the copyright owner, stating the: (a)

existence of the copyright; (b) the fact that he/she owns thee
copyright; and (c) copy of the work annexed, shall be prima facie
proof of the matters stated.
Presumption of authorship
The natural person whose name is indicated on the work in the
usual manner shall be presumed to be the author of the work, in
the absence of contrary proof.
TRADEMARK .
A trademark is a word, a group of words, sign, symbol, logo or a

combination thereof that identifies and differentiates the source of
the goods or services of one entity from those of others.
—https://www.ipophil.gov.ph/services/trademark/
A mark means 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.
A trade name means the name or designation identifying or

distinguishing an enterprise.
Benefits
(1) A trademark protects a business’ brand identity in the
marketplace and gives it a competitive edge.
(2) Registration of it gives the owner the exclusive rights to
prevent others from using or exploiting the mark in any
way.
(3) Aside from being a source-identifier, differentiator, quality
indicator, and an advertising device, a protective mark may
also bring another stream of income to the owner through
licensing or franchising to third parties.
Why should I register my trademark immediately?

The Philippine trademark system follows a first-to-file rule,
meaning, the rights to the trademark is given to the party who first
filed the mark. The minimum requirements to secure a filing date
for a trademark application are:
Page 57
(a) An express or implicit indication that the registration of a

mark is sought;
(b) The identity of the applicant; 
(c) Contact details of the applicant or its agent/representative;
(d) A reproduction of the mark; and 
(e) The list of the goods or service.
—https://www.ipophil.gov.ph/services/trademark/
A certificate of registration of a mark shall be prima facie

evidence of the validity of the registration, the registrant’s
ownership of the mark, and of the registrant’s exclusive right to
use the same in connection with the goods or services and those
that are related, as specified in the certificate.
—Sec 138, RA 8293
The owner of a registered mark shall have the exclusive right to

prevent all third parties not having the owner’s consent from using:
(a) identical or similar signs; or (b) containers for goods or
services which are identical or similar, where such use would
result in a likelihood of confusion.
In case of the use of an identical sign for identical goods or

services, a likelihood of confusion shall be presumed.
The exclusive right of the owner of a well-known mark registered

in the Philippines shall extend to goods and services which are not
similar to those in respect of which the mark is registered,
provided that:
(a) the use of that mark would indicate a connection between
those goods or services and the owner of the registered
mark; and
(b) the interests of the owner of the registered mark are likely
to be damaged by such use.
—Sec 147, RA 8293
What may & may not be registered?

Generally, the distinctiveness of the mark is the key point of
consideration. The law doesn’t state which marks are registrable
but it enumerates which cannot.
In Section 123, RA 8293, a mark cannot be registered if it:

Page 58
(1) Consists of immoral, deceptive or scandalous matter, or

matter which may disparage or falsely suggest a
connection with persons, living or dead, institutions,
beliefs, or national symbols, or bring them into contempt or
disrepute;
(2) Consists of the 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;
(3) Consists of a name, portrait or signature identifying a
particular living individual except by his written consent, or
the name, signature, or portrait of a deceased President of
the Philippines, during the life of his widow, if any, except
by written consent of the widow;
(4) Is identical with a registered mark belonging to a different
proprietor or a mark with an earlier filing or priority date, in
respect of:
(a) The same goods or services, or
(b) Closely related goods or services, or
(c) If it nearly resembles such a mark as to be likely to
deceive or cause confusion;
(5) Is identical with, or confusingly similar to, or constitutes a
translation of a mark which is considered by the competent
authority of the Philippines to be well-known internationally
and in the Philippines, whether or not it is registered here,
as being already the mark of a person other than the
applicant for registration, and used for identical or similar
goods or services;
(6) Is identical with, or confusingly similar to, or constitutes a
translation of a mark considered well-known, which is
registered in the Philippines with respect to goods or
services which are not similar to those with respect to
which registration is applied for, if the use of the mark
would indicate a connection between those goods or
services, and the owner of the registered mark, and the
interests of the owner of the registered mark are likely to
be damaged by such use;
(7) Is likely to mislead the public, particularly as to the nature,
quality, characteristics or geographical origin of the goods
or services;
(8) Consists exclusively of signs that are generic for the goods
or services that they seek to identify;
Page 59
(9) 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;
(10) Consists exclusively of signs or of indications that may
serve in trade to designate the kind, quality, quantity,
intended purpose, value, geographical origin, time or
production of the goods or rendering of the services, or
other characteristics of the goods or services;
(11) Consists of shapes that may be necessitated by
technical factors or by the nature of the goods themselves
or factors that affect their intrinsic value;
(12) Consists of color alone, unless defined by a given form;
or (13) Is contrary to public order or morality.
Term — A trademark can be protected in perpetuity if regularly

monitored and properly maintained. The period of protection is 10
years from the date of issuance and is renewable for a period of
10 years at a time. —IPO
Under Sec 145, RA 8293, the registrant must file a declaration of

actual use and evidence to that effect; or show valid reasons
based on the existence of obstacles to such use, within 1 year
from the 5th anniversary of the date of the registration of the mark.
Otherwise, the mark shall be removed from the Register.
Process of trademark registration
Page 60
Trademark v Patent
—Write-up from https://www.ipophil.gov.ph/news/trademarks-patents-two-sides-of-the-same-coin/
The general public think of trademarks and patents more by what

they have in common (which is granting exclusive rights to its
owner) than what sets them apart. But their key difference in
function and scope, while both grant protection, make them two
sides of the same coin.
The difference between a patent and a trademark can best be

imagined as the difference between an adhesive sheet material
and a Post-It® Notes.
Patents cover inventions, which are technical solutions to a

problem. In the Philippines, patent applications are subject to
requirements under the law, namely novelty, involvement of an
inventive step, and industrial applicability. After thorough
evaluation, applications that meet these thresholds are issued
''Letters Patent Certificates". Patents protect the product or
process which provides a technical solution to a problem in any
field of human activity, like new and inventive adhesive sheet
materials. What about trademarks?
Page 61
If the 3M Company's "pressure-sensitive adhesive sheet material",

being a technological solution, was granted a patent (now
expired) in the United States, how is a Post-It (the trademark,
which is still in force) different?
A trademark's main function is to identify the source of a good or a

service, thereby establishing the link between the good/service
and the business offering it.
In establishing that link, the trade or service mark becomes the
face and identity of the business. Certain values like service
excellence, or a certain standard in an industry comes to be
associated with that trade or service mark.
In other products, other notable examples are: Advil being the

registered trademark of the anti-inflammatory active ingredient of
Ibuprofen, while Band-Aid is the trademark for the once-patented
adhesive bandages, invented by an employee of Johnson and
Johnson.
In the Philippines, the IPOPHL's Bureau of Trademark is the

agency tasked to receive applications for these marks, and if they
meet the test of distinctiveness and other requirements of the law,
the agency may issue them "Certificates of Registration".
Page 62
With these two IP rights protecting different aspects of the same

good or service, it would be inappropriate to say words can be
patented.
Trademark Infringement
—Sec 155-158, RA 8293
A person is a trademark infringer if he does any of the following
acts without the consent of the owner of the registered mark:
(1) Commercial use of any reproduction, counterfeit, copy, or
colorable imitation of a registered mark, or the same
container, or a dominant feature, and such use is likely to
cause confusion, or to cause mistake, or to deceive; or
(2) Reproducing, counterfeiting, copying or colorably imitating
a registered mark or a dominant feature, and applying it to
labels, signs, prints, packages, wrappers, receptacles or
advertisements intended to be used in commerce.
**Those acts on their own already constitute infringement,

regardless of whether there was actual sale of goods or services
using the infringing material.
The owner of a registered mark may recover damages from any

person who infringes his rights. Upon proper showing, he/she may
also be granted injunction.
In order to be entitled to recover profits or damages, it must be

shown that 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: (a) if the registrant gives
notice that his mark is registered by displaying the words
"Registered Mark" or the letter R within a circle; or (b) if the
defendant had otherwise actual notice of the registration.
The measure for damages is either:

(1) The reasonable profit which the complaining party would
have made, had the defendant not infringed his rights; or
(2) The profit which the defendant actually made out of the
infringement; or
If either cannot be ascertained with reasonable certainty, the
measure may be a reasonable percentage based on the gross
Page 63
sales of the defendant or the value of the services where the mark
or trade name was used.
In cases where actual intent to mislead the public or to defraud the

complainant is shown, at the discretion of the court, the damages
may be doubled.
The court has the power to order that the infringing materials be
destroyed, or be disposed of outside the channels of commerce,
without any compensation, in such a manner as to avoid any harm
caused to the right holder.
Unfair competition
The essential elements of an action for unfair competition are:
(1) confusing similarity in the general appearance of the
goods; and
(2) intent to deceive the public and defraud a competitor.
The intent to deceive and defraud may be inferred from the
similarity of the appearance of the goods as offered for sale to the
public. Actual fraudulent intent need not be shown.
—In-n-out Burger Inc. vs Sehwani, Incorporated and/or Benita’s
Frites G.R. No. 179127, December 24, 2008
The test to determine whether there is similarity and

likelihood of confusion (and thus, infringement)
There are 2 tests: (1) the dominancy test; (2) and the holistic test.
The dominancy test focuses on the similarity of the prevalent

features of the competing trademarks that might cause confusion
or deception. Trademarks would be considered confusingly similar
with each other if an ordinary purchaser could conclude an
association or relation between the marks.
The holistic test requires the court to consider the entirety of the
marks as applied to the products, including the labels and
packaging. For example, in one case, the SC held that the only
logical conclusion deducible from the defendant’s choice of the
trade name ‘’MACJOY’’ is that they would want to “ride” on the
established reputation and goodwill of MCDONALD’S.
—McDonald’s Corp v Macjoy Fastfood Corp, G.R. NO. 166115,
Feb. 2, 2007
Page 64
The Dominancy Test focuses on the similarity of the prevalent

features of the competing trademarks that might cause confusion
and deception, thus constituting infringement.
If the competing trademark contains the main, essential and

dominant features of another, and confusion or deception is likely
to result, infringement takes place.
Duplication or imitation is not necessary; nor is it necessary that

the infringing label should suggest an effort to imitate.
The question is whether the use of the marks involved is likely to

cause confusion or mistake in the mind of the public or to deceive
purchasers.
Courts will consider more the aural and visual impressions created
by the marks in the public mind, giving little weight to factors like
prices, quality, sales outlets, and market segments.
In contrast, the Holistic Test entails a consideration of the entirety

of the marks as applied to the products, including the labels and
packaging, in determining confusing similarity. The discerning eye
of the observer must focus not only on the predominant words but
also on the other features appearing on both labels in order that
the observer may draw his conclusion whether one is confusingly
similar to the other.
—Prosource International v Horphag Research Management,
G.R. No. 180073, November 25, 2009
——
Other cases on Trademark and Trade names

(Digests by Doris Tampis, downloaded from Scribd):
https://drive.google.com/file/d/1FR1JddARq8983w9160EqnCYWw
bZrlYse/view?usp=drivesdk
Compilation of cases involving Copyright

(Compilation by Arellano University, 2014, from Academia.edu):
https://drive.google.com/file/d/1Qhb1jBnmtQm_KaZcR8u9t9tLPg3
VR9Tx/view?usp=drivesdk
Page 65

Notes On Copyright and Intellectual Property Law (Philippines)

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Copyright & Intellectual Property Law Notes by DMG

Atty. Galacgac’s lectures UC Law 2020

Law: RA 8293 (Intellectual Property Code) as amended

Reciprocity Rule & Reverse Reciprocity Rule

On the other hand, the Reverse Reciprocity rule applies when:

1. A condition, restriction, limitation, diminution, requirement,

🦊Distinguishing the two rules:

What are the rights under RA 8293?

Intellectual Property Office

3. Undertake enforcement functions supported by concerned

🦊​Case—Pearl & Dean v. Shoemart (2003)

Facts: ​Pearl & Dean (P&D) is a corporation engaged in the

P&D secured a Certificate of Copyright Registration from the

From 1981 to 1988, Metro Industrial Services (MIS) was P&D’s

However, in 1986, SM informed P&D that it was rescinding the

In 1988, MIS offered to construct light boxes for SM. SM approved

Upon receipt of the letter, SM suspended the lease of 224 light

Contention of SM:​ It independently developed its poster panels

SC’s Decision:​ There was no infringement of intellectual property

Here, the Copyright Certificate of P&D stated that it was for a

2. Yes, a separate patent 🦊

A ​trademark​ is any visible sign capable of distinguishing the

3. No. The certificate of registration issued by the Director of

Other important pronunciations in Pearl & Dean:

No patent, no protection ​— An inventor does not have a

To be able to effectively and legally preclude others from copying

The ultimate goal of a patent system is to bring new designs and

The law attempts to strike an ideal ​balance between two

The patent law has a ​three-fold purpose​:

Copyright protects the book; patent protects whatever

Only the engineering drawings and descriptions of the light box is

A patent is an exclusive right that ​allows the inventor to exclude

What is a patent? What rights does it confer? ​ 🦊

FAQs from IPO website:

An invention is patentable when all of the following are present:

An invention is ​new​, or has novelty, if it does not form part of a

An ​inventive step​ is something that is not obvious to a person

Industrial applicability​ means the invention can be produced and

Which inventions cannot be the subject of a patent?

enhancement​ of the known efficacy of that

**Thus, before applying for a patent, the prospective applicant

Who may apply for a patent?

The right to a patent belongs to the inventor, his heirs, or his

The application may be filed by the actual inventor or in the name

Patent application process

Requirements in applying for a patent and securing of a filing

1. Filing Date Requirements​ — The filing date of a patent

If any of these elements is not submitted within the period

2. The Office will examine whether the patent application

3. Grant of filing date and payment of required fees ​—

4. Formality Examination​ — The applicant shall comply with

shall be supplemented by a ​deposit​ of such

5. Classification and Search ​— An application that has

6. Publication of Patent Application​ — ​18 months​ from 🦊

Publication is a matter of right​. It cannot be withheld. The

Once published, it is as if the patent is granted​. The

Inspection by third parties​ - Any interested party may inspect

done after publication because an unpublished patent application

🦊This right of action may be exercised, provided that:

🦊​Case: Kawasaki v Eastworld (June 15, 2015)

This is an action for design patent infringement and unfair

In April 2008, Kawasaki released its Fury 125 motorcycle, which

as Sapphire 125, which Kawasaki claimed bore and incorporated

🦊Case—Pearl & Dean v. Shoemart (2003)

Facts: Pearl & Dean (P&D) is a corporation engaged in the

Contention of SM: It independently developed its poster panels

SC’s Decision: There was no infringement of intellectual property

A trademark is any visible sign capable of distinguishing the

No patent, no protection — An inventor does not have a

The law attempts to strike an ideal balance between two

The patent law has a three-fold purpose:

A patent is an exclusive right that allows the inventor to exclude

What is a patent? What rights does it confer? 🦊

An invention is new, or has novelty, if it does not form part of a

An inventive step is something that is not obvious to a person

Industrial applicability means the invention can be produced and

enhancement of the known efficacy of that

1. Filing Date Requirements — The filing date of a patent

3. Grant of filing date and payment of required fees —

4. Formality Examination — The applicant shall comply with

shall be supplemented by a deposit of such

5. Classification and Search — An application that has

6. Publication of Patent Application — 18 months from 🦊

Publication is a matter of right. It cannot be withheld. The

Once published, it is as if the patent is granted. The

Inspection by third parties - Any interested party may inspect

🦊Case: Kawasaki v Eastworld (June 15, 2015)

According to the BLA, a crucial element of infringement is that the

7. Request for Substantive Examination - Within 6 months from

Who grants the patent application? It is the patent examiner.

What is the date of effectivity of the patent? 🦊

🦊First to File Rule

The petition for cancellation shall:

Who can file a petition for cancellation? Any interested person.

(2) Notice of hearing — The Director of Legal Affairs will

(1) Prosecute the application as his own application in place of

🦊Case: Eveready (General Dry Batteries Inc. v Rayovac)

🦊Three important dates in Patents and their significance

🦊 What are the possible defenses in a case for

The rule of disputable presumption states that a product shown to

(b) The employer, if the invention is the result of the

🦊Technology transfer arrangements (TTA) are contracts or

Where to file? IPO, Office of the Director General.

🦊A VLA need not be registered to be enforceable, as long as it

What needs to be registered? A ny encumbrance or conveyance

Tatang’s example: M r. A conveyed his patent to X, with X paying

🦊Two kinds of Compulsory Licensing

(6) Where the demand for patented drugs and medicines is

🦊Second kind — Compulsory License Based on

- The compulsory license shall also contain a provision