INTELLECTUAL PROPERTY CODE  Collective work - work created by 2 or more
natural persons at the initiative and under the
 What the term INTELLECTUAL PROPERTY consists
of: CTP-GLIP
1. Copyright and related rights;
2. Trademarks and Service Marks;
3. Patents;
4. Geographic indications;
5. Layout designs of integrated circuits;
6. Industrial designs;
7. Protection of undisclosed information.
 Geographical indications - indications which identify a
good as originating in the territory or a region or locality
in that territory, where a given quality, reputation or
other characteristics of the good is essentially attributable
to its geographical origin.
 Example: Tuba from Leyte/Samar.
 Protection of Undisclosed Information - natural and
legal persons shall have the possibility of preventing
information lawfully within their control from being
disclosed to, acquired by, or used by others without their
consent in a manner contrary to honest commercial
practices, so long as the information: SCS
1. Is Secret, in the sense that it is not generally known
among or readily accessible to persons within the
circles that normally deal with the kind of
information or question;
2. Has Commercial value because it is secret; and
3. Has been Subject to reasonable steps by the person
lawfully in control of the information, to keep it
secret.
 Trademark - 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.
 Trade name - the name or designation identifying or
distinguishing an enterprise (under the jurisdiction of
DTI).
 Copyright - confined to literary and artistic works, which
are original intellectual creations in the literary and
artistic domain protected from the moment of creation.
 Patentable inventions - refer to any technical
solution of a problem in any field of human activity
which is (1) new, (2) involves an inventive step, and (3)
is industrially applicable.
 While registration of other intellectual properties are with
the IPO, copyrighted works are still deposited with the
National Library and the Supreme Court. However,
the IPO (thru the Bureau of Copyright) exercises original
jurisdiction over disputes relating to the terms of a
license involving the author’s rights.
 The IPO now has enforcement functions supported by
other government agencies. It also has visitorial powers.
COPYRIGHT
 Right over literary and artistic works, which are Original
intellectual creations in the Literary and artistic domain
Protected from the moment of creation ROLP.
 Author - natural person who created the work.
direction of another, with the understanding that it
will be disclosed by the latter under his own name
and that the contributing natural persons will not be
identified.
 Joint work - work prepared by 2 or more authors
with the intention that their contributions be
merged into inseparable or interdependent parts of
a unitary whole.
 Work of applied art - an artistic creation with
utilitarian functions or incorporated in a useful
article, whether made by hand or produced on an
industrial scale.
 Performers - actors, signers, musicians, dancers,
and other persons who act, sing, declaim, play in,
interpret, or otherwise perform literary and artistic
work.
 Rights over copyrights are conferred from the
moment of CREATION.
 The work is DEEMED CREATED if something
original is expressed in a fixed manner.
 Who owns the copyright?
 One creator - creator, his heirs or assigns owns
the copyright.
 Joint creation - co-authors shall be the original
owners of the copyright and, in the absence of
agreement, their rights shall be governed by the
rules on co-ownership.
 Exception: When work of joint authorship
consists of parts that can be used
separately and the author of each part
can be identified, the author of each part
shall be the original owner of the copyright in
the part that he has created.
 Commissioned work - person commissioning
owns the work; ownership of copyright remains with
the creator, unless there is a written stipulation to
the contrary.
 Audio-visual work - producer for purposes of
exhibition; for all other purposes, the producer, the
author of the work, the film director, the scenario
author, the composer, and the photographic
director pads-cp are the owners.
 Pseudonyms and anonymous works - the
publisher shall be presumed to be the
representative of the author, unless the author is
undisputably known.
 Employee’s work during course of
employment -
a. Employer - if the result of regular functions of
duty;
b. Employee - if result is not part of his duties.
 DURATION OF COPYRIGHT
 Literary artistic works and derivative works -
during the lifetime of the creator and for 50 years
after death.
  Joint creation - economic rights shall be protected
during the lifetime of the last surviving author and
for 50 years after the death of the last surviving
author.
 Anonymous or pseudonymous work - till the
end of 50 years following the date of their first
publication. The 50-year duration commences from
January 1 following the date of publication.
 Photographic works - 50 years from the
publication of the work, or from making it
unpublished.
 Work of applied art - 25 years from the date of
making.
 Broadcast - 20 years from date of broadcast.
 COPYRIGHTABLE OBJECTS:
I. Literary and artistic works: BALL-MOD3-
CLIP3
1. Books, pamphlets, articles and other writings;
2. AV works and cinematographic works;
3. Lectures, sermons, addresses, dissertations
prepared for oral delivery;
4. Letters;
5. Musical compositions;
6. Original ornamental designs or models for
articles of manufacture, and other works of
applied art;
7. Dramatic or dramatico-musical compositions,
choreographic works or entertainment in dumb
shows;
8. Drawing, painting, architecture, sculpture,
engraving, lithography, or other works of art,
models or designs for works of art;
9. Drawings or plastic works of a scientific or
technical character;
10. Computer programs;
11. Literary, scholarly scientific and artistic works;
12. Illustrations, maps, plans, sketches, charts,
and 3D works relative to geography,
topography, architecture, or science;
13. Photographic works;
14. Pictorial illustrations and advertisements;
15. Periodicals and newspapers.
 The author of speeches, lectures, sermons,
addresses, and dissertations shall have the
exclusive right of making a collection of his
works.
II. Derivative works: DC
a) Dramatizations, translations, adaptations,
abridgments, arrangements, and alterations of
literary or artistic works; and
b) Collection of literary, scholarly or artistic
works, and compilations of data and other
materials which are original by reason of the
selection or coordination arrangement of their
contents.
 UNPROTECTED WORKS:
1. Idea, procedure, system, method or operation,
concept, principle, discovery or mere date as such,
even if expressed, explained, illustrated or
embodied in a work;
 The format of a television game show is not
subject to a copyright.
2. News of the day and other miscellaneous facts
having the character of mere items of press
informations;
3. Official text of legislative, administrative, or legal
nature, and its official translation;
4. Government work
 However, prior approval of government agency
or office wherein the work is created shall be
necessary for exploitation of such work for
profit.
 No prior approval or conditions shall be
required for the use of any purpose of statues,
rules and regulations, and speeches, lectures,
sermons, addresses, and dissertation,
pronounced, read, or rendered in courts of
justice, before administrative agencies, in
deliberative assemblies, and in meetings of
public character.
 Kho v. CA - Trade name and container of a
medicated cream is the proper subject of a
trademark. Hence, copyright and patent registration
of the name and container would not guarantee the
registrant the right to exclusive use of the same, not
being the proper subjects thereof.
 Olaño v. Co - Copyright does not give exclusive
right to the art disclosed, but only to the expression.
Copyright over an illustration of a hatch door does
not protect the hatch door itself in copyright.
 Pearl and Dean v. SM - Copyright registration
over a drawing or pictorial illustration which depicts
light boxes or box-type electrical devices protects
the drawing, but not the light box depicted therein.
 RIGHTS OF AUTHORS
I. ECONOMIC RIGHTS - consist of the exclusive
right to Carry out, Authorize, or Prevent CAP the
following acts: PRRD-FPC
a) Public display of the original or a copy of the
work;
b) Reproduction of the work or substantial
portion thereof;
c) Rental of the original or a copy of an AV or
cinematographic work;
d) Dramatization, adaptation, translation,
abridgment, transformation, arrangement
datata of the work;
e) First public distribution of the original and each
copy of the work;
f) Public performance of the work;
g) Communication to the public of the work.
II. MORAL RIGHTS: AORA
a. Require Attribution of the authorship of the
work to him, in a prominent way on copies,
and with the public use of the work;
b. Object to distortion, mutilation or modification
of, or other derogatory action in relation to his
work, prejudicial to his honor or reputation;
c. Restrain the use of his name with respect to
any work not of his own creation or in a
distorted version of his work;
d. Make Alterations of his work prior to, or to
withhold it from publication.
 PUBLISHER’S RIGHT - the right to publish granted by
the author, his heirs, or assigns.
  The publisher shall have a copyright consisting
merely of the right of reproduction of the
typographical arrangement of the published
edition of the work.
 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. But such writer or artist retains
his copyright on the piece.
 FAIR USE doctrine - Fair use is a privilege to use the
copyrighted material in a reasonable manner without the
consent of the copyright owner or as copying the them or
ideas rather than their expression.
 The purpose of the use of a copyrighted work must
be for: CC-NTC
1. Criticism;
2. Comment;
3. News reporting;
4. Teaching;
5. Multiple Copies for classroom use, scholarship,
research and similar purposes.
 Factors to consider whether use is fair or not:
PANE
1. Purpose and character of the use;
2. Amount and substantiality of the portions
used;
3. Nature of the copyrighted work;
4. Effect of the use upon the potential market of
the copyrighted work.
 Broadcasting organizations are expressly granted
the right of rebroadcasting their broadcast
under Sec. 211.1 of the IPL. Rebroadcasting is
included in what is known NEIGHBORING
RIGHTS over the broadcast. Neighboring rights are
rights neighboring to copyright like the right to
rebroadcast.
 Decompilation is the reproduction of the code and
translation of the forms of a computer program to
achieve the interoperatability of an independently
created computer program with other programs.
 It may also constitute fair use under the
criteria enumerated above to the extent that
such decompilation is done for the purpose of
obtaining the information necessary to achieve
interoperatability.
 COPYRIGHT INFRINGEMENT
 How made? When there is PIRACY or
SUBSTANTIAL REPRODUCTION.
 If so much is taken that the value of the
original work is substantially diminished, or the
labors of the original author are substantially,
and to an injurious extent, appropriated by
another.
 A person infringes a right protected under this
Act when one: DIB
1. Directly commits infringement;
2. Induces, causes, or materially contributes
to the infringing of another, with
knowledge of the infringing activity;
3. Benefits from the infringing activity of
another person if the person benefiting
has been given notice of such activity
and has the right and ability to
control the activities of the other
person.
 ABSCBN v. Gozon - Knowledge of
infringement is material only when a person is
charged of aiding or abetting a copyright
infringement. The liability for copyright
infringement is in the nature of strict liability.
It does not require mens rea (intent) or culpa
(fault or negligence).
 Technological measures - technology,
device, or component that, in the normal
course of its operation, restricts acts in respect
of a work, performance or sound recording,
which are not authorized by the authors,
performers or producers. Example:
Jailbreaking or Rooting phones.
 Its circumvention does not by itself
constitute infringement. However, such
circumvention may increase the penalty
for infringement of copyright, provided
that such infringement is first established.
 The law does not distinguish if the letters are
handwritten or in electronic form. Messages are
protected works under the IPC.
TRADEMARKS
 Trademark - any visible sign capable of distinguishing
the goods or services of an enterprise, and shall include a
stamped or marked container of goods.
 Tradename - name or designation identifying or
distinguishing an enterprise. (there is no need to
register trade names in order to secure protection
for them.)
 Requirements: VC
1. There must be a Visible sign.
2. It must be Capable of distinguishing the goods
of an enterprise.
 COLLECTIVE MARK - any visible sign designated as
such in the application for registration and capable of
distinguishing the origin or any other common
characteristic.
 Functions of Trademarks/Service Marks: IGA
1. Indicate the origin of goods to which they are
attached;
2. Guarantee the standard of quality of the goods;
3. Advertise the goods.
 How are marks acquired? The rights in a mark are
acquired thru registration with the IPO.
 Registration is NECESSARY before one can file an
action for infringement (of trademark).
But it is NOT NECESSARY for filing a case for
unfair competition or false designation of origin.
 Prior use in the Philippines is not required before
registration.
 However, there must be actual use after
registration.
 The registrant shall file a declaration of
actual use of the mark with evidence to
that effect within 3 years from the filing
 of the date of application, otherwise it
may be cancelled.  Rights conferred by registration of trademark: PEE
1. Prevent others fro use of the same mark for
 The registrant is required to file a identical goods or services in the course of trade.
declaration of actual use and evidence to 2. Exclusive use of the mark for one’s own goods and
that effect, or shall show valid reasons services;
for non-use within 1 year from the 5 th 3. Exclusive use of one’s already registered mark even
anniversary date of registration. for goods or services into which one’s own venture
expands, if used by others for dissimilar products is
 Registration is not important to protect the likely to damage the business interests of the first
goodwill that identifies in the mind of the public venturer.
the goods he manufactures or deals in.
 TRADEMARK INFRINGEMENT
 Right is acquired from the time of registration =  Elements: RRU-LW
filing date of application. 1. Registration of the trademark being infringed
 Filing date shall be the date on which the in the IPO;
IPO received the following indications and 2. Trademark or trade name is Reproduced,
elements: ERILI counterfeited, copied, or colorably imitated
1. Express or implicit indication that rccc by infringer;
registration of the mark is sought; 3. Infringing mark or trade name is Used in
2. Reproduction of the mark; connection with the sale, offering for sale, or
3. Identity of applicant; advertising of any goods, business or services,
4. List of goods or services for which or is applied to labels, etc. intended to be used
registration is sought; upon or in connection with such goods,
5. Indications sufficient to contact the business or services;
applicant or his representative. 4. It is Likely to cause confusion or mistake or to
deceive purchasers or others as to the goods
 The right may also be protected from or services, or as to the source or origin of
PRIORITY DATE. Subject to the rules on such goods or services;
reciprocity, where the application is filed in the 5. It is Without the consent of the trademark or
Philippines and the same applicant previously trade name owner.
filed an application in the countries covered by
the reciprocity rule, the application is deemed  In infringement of TRADE NAME, the same need
filed as of the day the application was first not be registered.
filed in the foreign country.
 Types of Confusion
 MARKS THAT CANNOT BE REGISTERED: DISC-GC- Confusion of GOODS Confusion of BUSINESS
FIN When an otherwise prudent When the goods of the
1. Descriptive marks; purchaser is induced to parties are different but the
2. Immoral, deceptive or scandalous matter; purchase one product in the defendant’s products can
3. Shapes; belief that he is purchasing reasonably be assumed to
4. Color by itself; another, in which case, originate from the plaintiff,
5. Generic terms for goods or services; defendant’s goods are then thus deceiving the public into
6. Customary sign in everyday language; bought as the plaintiff’s and believing that there is some
7. Flag or coat of arms or insignia of the Philippines or its poor quality reflects badly connection between the
of any foreign nation; on the plaintiff’s reputation. plaintiff and defendant which,
8. Identical with a registered mark belonging to a in fact, does not exist.
different proprietor or a mark with an earlier filing
or priority date, in respect of: src  TESTS
a) The Same goods or services; or DOMINANCY TEST HOLLISTIC TEST
b) Closely related goods or services; or Focuses on the similarity of Requires that the entirety of
c) If it nearly Resembles such a mark as to likely the prevalent features of the the marks in question be
to deceive or cause confusion. competing trademarks which considered in resolving
9. Name, portrait or signature identifying a particular might cause confusion or confusing similarity.
living individual, except by his written consent, or deception, and thus
that of a deceased president, during the life of his infringement.
widow, if any, except by written consent of the
widow. If the competing trademark
contains the main, essential
 Doctrine of SECONDARY MEANING - A generic or or dominant features of
descriptive mark may later acquire the character of another, and confusion or
distinctiveness and can later be registered if it acquires a deception is likely to
meaning which is different from its ordinary connotation. result, infringement takes
 For this to happen, there must be exclusive and place.
continuous use for a period of at least 5
years.  In the Philippines, dominancy test is the controlling
test.
 Generic terms may also be registered as trademarks
if they are used in an arbitrary or fanciful  AURAL EFFECTS/IDEM SONANS RULE - in relation to
manner. dominancy test, the aural effects of the words and letters
 contained in the marks should be considered in with the IPO where the total damages claimed are
determining the issue of confusing similarity. not less than P200,000.

 The use of identical marks does not, by itself, lead to

a conclusion that there is trademark infringement if they
are not used for identical, similar or related goods.
 In the case of an internationally well-known mark,
the IPC provides that other persons or entities cannot
use them even for unrelated goods.
 Republic Gas Corp. V. Petron - mere unauthorized
use of container bearing a registered trademark in
connection with the sale, distribution or advertising of
goods or services which is likely to cause confusion,
mistake or deception among buyers or consumers can be
considered as trademark infringement. (use of another’s
LPC containers)
UNFAIR COMPETITION
 Involves employing deception or any other means
contrary to good faith by which a person passes of
his goods or business or services for those of one
who has already established GOODWILL thereto.
 Elements: CF
1. Confusing similarity in the general appearance
of the goods;
2. Fraud or intent to deceive the public and
defraud a competitor.
PATENTS
 Patentable inventions refer to any technical solution of
a problem in any field of human activity which is
(1) new, (2) involves an inventive step, and (3)
industrially applicable.
 Requisites: TIN
1. a Technical solution of any problem in any
field of human activity;
2. It must be Industrially applicable;
3. It must be a Novel invention.
 In the case of DRUGS AND MEDICINES, there is no
inventive step if invention results from: DDU
1. Mere Discovery of a new form or new property of a
known substance which does not result in
enhancement of the known efficacy of that
substance;
2. Mere Discovery of any new property or new use for
a known substance;
3. Mere Use of a known process, unless such known
process results in a new product that employs at
least one new reactant.

INFRINGEMENT OF UNFAIR COMPETITION  Novel - must not form part of a prior art.
TRADEMARK  Prior art - (1) made available to the public
There is unauthorized use of Involves passing off of one’s anywhere in the world before the filing date or
trademark. goods as those of another. priority date; (2) forms part of an application
Not necessary to establish Necessary to establish whether for patent, utility model or industrial
fraudulent intent. fraudulent intent. design, effective in the Phil.
Registration of trademark is Registration of trademark is
necessary for the filing of an not necessary for the filing of  Industrial applicability - invention that can be
action. an action. produced and used in any industry.
Limited. Broader in scope.
Same class of goods or Different classes of goods or  PURPOSES OF PATENT LAW: FPE
services must be involved. services may be involved. 1. Foster and reward invention;
2. Promote disclosure of invention;
INTER PARTES TRADEMARK CASES 3. Ensure that ideas in the public domain remain there
1. Opposition against the registration of a mark; for the free use of the public.
2. Petition to cancel the registration of a mark.
 Classes of Patentable Inventions: UPP-IMN
 Opposition to application for registration: 1. Useful machine
 Ground: Registration will damage oppositor. 2. Product
 Venue: IPO 3. Process
 Period to File: Within 30 days after publication. 4. Improvement of 1, 2, and 3
5. Microorganism
 Cancellation 6. Non-biological and microbiological process
 Ground: Mark is confusingly similar.
 Venue: IPO  Non-Patentable Inventions: DST-P-CAD
 Period to File: Within 5 years from date of 1. Discoveries, scientific theories, mathematical
registration. method;
2. Schemes, rules, and methods of performing mental
 Cancellation acts, playing games, or doing business, and
 Grounds: GAU programs for computer;
1. Mark becomes Generic or descriptive; 3. Treatment methods of the human body or animal
2. Abandonment - failure to use it for an body by surgery or therapy, and diagnostic methods
uninterrupted period of 3 years. practiced on the human or animal body;
3. Mark is being Used to misrepresent the source 4. Plant varieties or animal breeds of essentially
of goods or services. biological process for the production of plants and
 Venue: IPO animals;
 Period to file: At any time. 5. Contrary to public order or morality;
6. Aesthetic creations (covered by copyright);
 An administrative complaint for violations of laws 7. Drugs and medicines stated in the instances above-
involving intellectual property rights can be filed mentioned.
 Person entitled to the right:
1. Inventor, his heirs or assigns;
2. When Two or more persons have jointly made an
invention, the right to a patent shall belong to them
jointly;
3. FIRST TO FILE RULE - if 2 or more persons have
made the invention separately and independently of
each other, the right to the patent shall belong to
the person who first filed an application for
such invention.
 If the applicant is not the inventor, the IPO shall
require the applicant to submit the inventor’s
authority.
 PREJUDICIAL DISCLOSURE - Whatever right one has
to the invention covered by the patent arises alone from
the application date.
 Thus, if the inventor voluntarily discloses it,
such as by offering it for sale, the world is free to
copy and use it with impunity.
 Ideas, once disclosed to the public without the
protection of a valid patent, are subject to
appropriation without significant restraint.
 NON-PREJUDICIAL DISCLOSURE - Any disclosure of
the invention made within 12 months before the filing
date does not prejudice the application if the disclosure is
made by:
1. Inventor himself; or
2. Patent office, when information of the latter was
contained:
a) in another application filed by the inventor that
should not have been disclosed by the office;
b) in a third person’s application filed without the
knowledge or consent of the inventor and the
third person obtained the information directly
from inventor; or
3. Third party - such party obtained the information
directly or indirectly from the inventor.
 TERM OF PATENT - 20 years from the filing date of
application.
 PATENT INFRINGEMENT
 It is the making, using, selling, offering for sale, or
importing musoi a patented product, or the use of
a patented process without the authorization of
the patentee.
 Steps in determining presence of
infringement:
1. Determine if there is literal infringement. If
there is, defendant is liable.
2. If there is none, apply doctrine of
equivalents.
 Literal Infringement - under this test, there is
infringement if one makes, uses or sells an item
that contains all the elements of the patent
claim. The test is satisfied in either of the
following:
a. Exactness rule - item that is being sold,
made or used conforms exactly to the patent
claim of another.
b. Additional rule - one makes, uses or sells an
item that has all the elements of the patent
claim of another plus other elements.
 Doctrine of equivalents - infringement also takes
place when a device appropriates a prior invention
by incorporating its innovative concept and,
although with some modification or change, (1)
performs substantially the same function (2) in
substantially the same way (3) to achieve
substantially the same result.
 It requires the satisfaction of the function-
means-and-result test.
COMPULSORY LICENSING of PATENT
 It is a license issued by the Director General of the IPO to
exploit a patented invention without the permission
of the patent holder, either by manufacture or thru
parallel importation.
 Grounds: NP-ND-JP
1. National emergency or extreme urgency;
2. Public interest, as determined by the
government, so requires;
3. Non-work in a commercial scale in the
Philippines of the patented invention
(importation of patented article shall constitute
working or using the patent);
4. Demand for patented drugs and meds is not
being met to an adequate extent and on
reasonable terms;
5. Judicial or administrative body has determined
that the manner of exploitation of patent
owner is anti-competitive;
6. Public non-commercial use of patent by
patentee, without satisfactory reason.
 Time when application for compulsory license
CANNOT be applied: before the expiration of a period
of 4 years from date of filing, or 3 years from date of
patent, whichever period expires last.
TRADE SECRETS
 It is a plan or process, mechanism, tool, or compound
known only to its owner and those of his employees to
whom it is necessary to confide it.
 It is protected even if it is not patentable. It is
covered by the proprietary rights of the owner and
he cannot be compelled to disclose its trade secret.
Courts cannot issue an injunction to compel such
disclosure.
 Ingredients of consumer products are not trade
secrets. They should be indicated in the label under
Sec. 77 of the Consumer Act.
 Consumer products are primarily for personal,
family, household or agricultural purposes.