Intellectual Property Laws

Undisclosed information
INTELLECTUAL PROPERTY RIGHTS IN GENERAL
1. Is a secret in the sense that it is not, as a body
1. Copyright and Related Rights; or in precise configuration and assembly of
2. Trademarks and Service Marks; components, generally known among, or readily
accessible to persons within the circles that
3. Geographic indications; normally deal with the kind of information in
4. Industrial designs; question.

5. Patents; 2. Has commercial value because it is a secret

6. Layout designs (Topographies) of Integrated 3. Has been subjected to reasonable steps under
Circuits; the circumstances, by the person lawfully in
control of the information, to keep it a secret
7. Protection of Undisclosed Information (TRIPS). (Article 39, TRIPS Agreement).
 Undisclosed information or trade secrets
DIFFERENCES BETWEEN COPYRIGHTS, are of a privileged nature. The protection of
TRADEMARKS, AND PATENT industrial secrets is inextricably linked to the
advancement of our economy and fosters
INTELLECTUAL DEFINITION healthy competition in trade
PROPERTIES

Trademark Any visible sign capable of PATENTS

distinguishing the goods Patents – a set of exclusive rights conferred by the
(trademark) or services (service State to an inventor or his legal successor, for a limited
mark) of an enterprise and shall period of time to exclude others from making, using,
include a stamped or marked selling or importing the invention within the territory of
container of goods. the country that grants the patent, in exchange for the
disclosure of the invention to the public.
Tradename The name or designation
identifying or distinguishing an
enterprise. PATENTABLE INVENTIONS

Copyright Literary and artistic works which
are original intellectual creations
in the literary and artistic domain
protected from the moment of their
creation.
Patentable inventions – Any technical solution of a
problem in any field of human activity which is new,
involves an inventive step and is industrially applicable. It
may be, or may relate to, a product, or process, or an
improvement of any of the foregoing.

Patentable Any technical solution of a PRODUCT PATENT PROCESS PATENT

Inventions problem in any field of human
activity which is new, involves an
inventive step and is industrially
applicable.
TECHNOLOGY TRANSFER ARRANGEMENTS
Technology transfer arrangement – Contracts or
agreements involving the transfer of systematic
knowledge for the manufacture of a product, the
application of the 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.
 Technology transfer arrangement is in the
nature of a Voluntary License Contract.
o It is a contract between an intellectual
property right owner (licensor) and a
second party (licensee), authorizing the
latter to commercially exploit the same
intellectual property right under
specified terms and conditions.
The right to make, use, sell The right to restrain,
and import the product. prevent or prohibit any
unauthorized person or
entity from using the
process, and from
manufacturing, dealing in,
using, selling or offering for
sale, or importing any
product obtained directly or
indirectly from such
process.
Conditions for patentability (NIA)
1. Novelty – An invention shall not be considered
new if it forms part of a prior art (Sec. 23, IPC).
2. Inventive step –if, having regard to prior art, it
is not obvious to a person skilled in the art at
the time of the filing date or priority date of the
application claiming the invention.
 3. Industrially Applicable – An invention that can
be produced and used in any industry (Sec. 27,
IPC).
Prior art
1. Everything which has been made available
to the public anywhere in the world, before
the filing date or the priority date of the
application claiming the invention
2. The whole contents of a published
application, filed or effective in the Philippines,
with a filing or priority date that is earlier
than the filing or priority date of the
application.
a. Provided, that the application which has
validly claimed the filing date of an
earlier application under Section 31 of
the IPC, there shall be a prior art with
effect as of the filing date of such
earlier application:
b. Provided further, that the applicant or
the inventor identified in both
applications are not one and the same.
Coverage of patents
1. Invention – creation of an object which does not
exist in nature; it requires novelty, inventive
step and industrial application for patentability.
2. Utility Model - any technical solution of a
problem in any field of human activity which is
new and industrially applicable. It may be, or
may relate to, a product, or process, or an
improvement of any of the aforesaid. It is
sometimes referred to as a device or useful
object.
3. Industrial Design – the utility value or
ornamental/aesthetic aspect of a useful article.
Rules on public disclosure
 GR: When a work has already been made
available to the public, it shall be non-patentable
for absence of novelty.
 XPNs: Non-prejudicial disclosure – the
disclosure of information contained in the
application during the 12-month period before
the filing date or the priority date of the
application if such disclosure was made by:
o The inventor;
o A patent office and the information was
contained:
 In another application filed by
the inventor and should have
not have been disclosed by the
office, or
 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;
 A third party which obtained the information
directly or indirectly from the inventor (Sec. 25,
IPC).
The burden of proving want of novelty is on him who
avers it and the burden is a heavy one which is met only
by clear and satisfactory proof which overcomes every
reasonable doubt
Inventive step
 GR: An invention involves an inventive step if,
having regard to prior art, it is not obvious to a
person skilled in the art at the time of the filing
date or priority date of the application claiming
the invention (Sec. 26, IPC).
o XPN: In the case of drugs and
medicines, there is no inventive step if
the invention results from 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.
Test of non-obviousness - If any person possessing
ordinary skill in the art was able to draw the inferences
and he constructs that the supposed inventor drew from
prior art, then the latter did not really invent.
Person of ordinary skill
A person of ordinary skill is one who is presumed to:
1. Be an ordinary practitioner aware of what was
common general knowledge in the art at the
relevant date.
2. Have knowledge of all references that are
sufficiently related to one another and to the
pertinent art and to have knowledge of all arts
reasonably pertinent to the particular problems
with which the inventor was involved.
3. Have had at his disposal the normal means and
capacity for routine work and experimentation
Other forms of patentable inventions
1. Industrial design– Any composition of lines or
colors or any three-dimensional form, whether
or not associated with lines or colors. Provided
that such composition or form gives a special
appearance to and can serve as pattern for an
industrial product or handicraft (Sec. 112, IPC).
NOTE: Generally speaking, an industrial design
is the ornamental or aesthetic aspect of a useful
article (Amador , 2007).
1. Integrated circuit – A product, in its final form,
or an intermediate form, in which the elements,
 at least one of which is an active elements and
some of all of the interconnections are integrally
formed in and or on a piece of material, and in
which is intended to perform an electronic
function.
2. Layout design/topography – 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.
Registration is valid for 10 years without renewal
counted from date of commencement of
protection.
3. Utility model – A name given to inventions in the
mechanical field
Requisites for an invention to be considered as a
utility model
It is new and industrially applicable. A model of
implement or tools of any industrial product even if not
possessed of the quality of invention but which is of
practical utility.
Term of a utility model – 7 years from date of filing of
the application.
NON-PATENTABLE INVENTIONS
1. Plant varieties or animal breeds or essentially
biological process for the production of plants or
animals. This provision shall not apply to micro-
organisms and non-biological and
microbiological processes
2. Aesthetic creations
3. Discoveries, scientific theories and mathematical
methods
4. Schemes, rules and methods of performing
mental acts, playing games or doing business,
and programs for computers
5. Anything which is Contrary to public order or
morality (Sec. 22, IPC as amended by R.A.
9502).
6. Methods for treatment of the human or Animal
body
7. In the case of Drugs and medicines, mere
discovery of a new form or new property of a
known substance which does not result in the
enhancement of the efficacy of that substance
Patentability of computer programs
 GR: Computer programs are not patentable but
are copyrightable.
 XPN: They can be patentable if they are part of
a process.
OWNERSHIP OF A PATENT RIGHT TO A PATENT
Persons entitled to a patent
1. Inventor, his heirs, or assigns (Sec 28, IPC).
2. Joint invention – Jointly by the inventors (Sec.
28, IPC).
3. Two or more persons invented separately and
independently of each other – To the person
who filed an application ;
4. Two or more applications are filed – the
applicant who has the earliest filing date or, the
earliest priority date. First to file rule (Sec. 29,
IPC).
5. Inventions created pursuant to a commission –
Person who commissions the work, unless
otherwise provided in the contract (Sec. 30.1,
IPC).
6. Employee made the invention in the course of
his employment contract:
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.
b. The employer, if the invention is the
result of the performance of his
regularly-assigned duties, unless there
is an agreement, express or implied, to
the contrary (Sec. 30.2, IPC).
FIRST-TO-FILE RULE
1. If two (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 filed an application for such
invention, or
2. Where two or more applications are filed for the
same invention, to the applicant which has the
earliest filing date.
Person who may apply for a patent
Any person who is a national or who is domiciled or has a
real and effective industrial establishment in a country
which is a party to any convention, treaty or agreement
relating to intellectual property rights or the repression of
unfair competition, to which the Philippines is also a
party, or extends reciprocal rights to nationals of the
Philippines by law.
Steps in the registration of a patent
1. Filing of the application
2. Accordance of the filing date
3. Formality examination
4. Classification and Search
5. Publication of application
6. Substantive examination
 7. Grant of Patent  Filing Date is accorded only when all the
“requirements” provided under Section 40 are
8. Publication upon grant
present. Priority Date comes into play when
9. Issuance of certificate. there is an application for patent for the same
invention that was filed in another country.

 The application shall disclose the invention in a

manner sufficiently clear and complete for it to Conditions in availing of priority date
be carried out by a person skilled in the art.
1. The local application expressly claims priority;
 Claim – Defines the matter for which protection
2. It is filed within 12 months from the date the
is sought. Each claim shall be clear and concise,
earliest foreign application was filed; and
and shall be supported by the description.
3. A certified copy of the foreign application
 Abstract – A concise summary of the disclosure
together with an English translation is filed
of the invention as contained in the description,
within 6 months from the date of filing in the
claims and merely serves as technical
Philippines (Sec. 31, IPC).
information.
 The applicant shall have all the rights of a
 Unity of invention – The application shall
patentee against any person who, without his
relate to one invention only or to a group of
authorization, exercised any of the rights
inventions forming a single general inventive
conferred under Section 71 in relation to the
concept. If several independent inventions which
invention claimed in the published patent
do not form a single general inventive concept
application, as if a patent had been granted for
are claimed in one application, the application
that invention, provided that the said person
must be restricted to a single invention.
had:
 Divisional applications come into play when two
o Actual knowledge that the invention
or more inventions are claimed in a single that he was using was the subject
application but are of such a nature that a single matter of a published application; or
patent may not be issued for them. The
o Received written notice that the
applicant, is thus required to “divide”, that is, to invention was the subject matter of a
limit the claims to whichever invention he may published application being identified in
elect, whereas those inventions not elected may the said notice by its serial number.
be made the subject of separate applications
 The action may not be filed until after the grant
which are called “divisional applications”. of a patent on the published application and
within four (4) years from the commission of the
acts complained of.
INVENTIONS CREATED PURSUANT TO A
 A patent shall take effect on the date of the
COMMISSION
publication of the grant of the patent in the IPO
 The person who commissions the work shall own Gazette.
the patent, unless otherwise provided in the
contract. FORM TERM OF PROTECTION
 Pursuant to employment
INVENTION Letters 20 years from date of
o The employee, if the inventive activity patent filing of application
is not a part of his regular duties even without renewal. (Sec. 54,
if the employee uses the time, facilities IPC)
and materials of the employer;
UTILITY Utility Model 7 years from the filing
o The employer, if the inventive activity
MODEL Registration date of the application
is the result of the performance of his
without renewal. (Sec.
regularly-assigned duties, unless there
109.3, IPC)
is an agreement, express or implied, to
the contrary.
INDUSTRIA Certificate of 5 years from the filing
L DESIGN registration date of the application,
RIGHT OF PRIORITY renewable for not more
than two (2) consecutive
 An application for patent filed by any person periods of 5 yrs each
who has previously applied for the same
invention in another country which by treaty,
convention, or law affords similar privileges to
Filipino citizens, shall be considered as filed as of
the date of filing the foreign application. GROUNDS FOR CANCELLATION OF A PATENT
Grounds for cancellation of patents
Any interested party:
1. The invention is Not new or patentable;
2. 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
3. Contrary to public order or morality (IPC, Sec.
61.1).
4. Patent is found Invalid in an action
infringement (IPC, Sec. 82)
5. The patent includes matters outside the Scope
of the disclosure contained in the application
(IPC, Sec 21, Regulations on Inter Partes
Proceeding, Sec.1).
 If the ground for cancellation relate to some
claims, or parts of the claim only, the
cancellation may be effected to such extent
only.
Grounds for cancellation of a utility model (QCNO)
1. The invention does not Qualify for registration
as a utility model
2. That the description and the claims do not
Comply with the prescribed requirements
3. 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 (IPC,
Sec. 109.4).
Grounds for cancellation of an industrial design
1. The subject matter of the industrial design is not
registrable;
2. The subject matter is not new; or
3. The subject matter of the industrial design
extends beyond the content of the application as
originally filed (IPC, Sec. 120).
REMEDY OF THE TRUE AND ACTUAL INVENTOR
 If a person other than the applicant is
declared by final court order or decision as
having the right to a patent, he may within 3
months after such decision has become
final:
o Prosecute the application as his own
o File a new patent application
o Request the application to be refused;
or
o Seek cancellation of the patent.
 If a person, who was deprived of the patent
without his consent or through fraud is declared
by final court order or decision to be the true
and actual inventor, the court shall order for his
substitution as patentee, or at the option of the
true inventor, cancel the patent, and award
actual damages in his favor if warranted by the
circumstances.
 In the two circumstances aforementioned, the
court shall furnish the Office a copy of the order
or decision which shall be published in the IPO
Gazette within three (3) months from the date
such order or decision became final and
for
executory, and shall be recorded in the register
of the Office.
 The actions indicated in Sections 67 and 68 shall
be filed within one (1) year from the date of
publication made in accordance with Sections 44
and 51, respectively
RIGHTS CONFERRED BY A PATENT
1. Subject matter is a product – Right to restrain,
prohibit and prevent any unauthorized person or
entity from making, using, offering for sale,
selling or importing the product.
2. Subject matter is a process – Right to restrain
prohibit and prevent any unauthorized person or
entity from manufacturing, dealing in, using,
offering for sale, selling or importing any
product obtained directly or indirectly from such
process (Sec. 71, IPC).
3. Right to assign the patent, to transfer by
succession, and to conclude licensing contracts
(Sec. 71.2, IPC).
The rights conferred by a patent application take effect
after publication in the Official Gazette (Sec 46, IPC).
LIMITATIONS OF PATENT RIGHTS
1. In general
GR: If put on the market in the Philippines by
the owner of the product, or with his express
consent.
XPN: Drugs and medicines - introduced
in the Philippines or anywhere else in
the world by the patent owner, or by
any party authorized to use the
invention (Sec. 72.1, as amended by
R.A. 9502)
Where the act is done privately and on a non-
commercial scale or for a non-commercial
purpose.
Exclusively for experimental use of the invention
for scientific purposes or educational purposes
(experimental use provision).
Bolar Provision - In the case of drugs and
medicines, where the act includes testing, using,
making or selling the invention including any
data related thereto, solely for purposes
reasonably related to the development and
submission of information and issuance of
approvals by government regulatory agencies
 required under any law of the Philippines or of (Application of Doctrine of Exhaustion) GR:
another country that regulates the manufacture, Patent rights are exhausted by first sale in the
construction, use or sale of any product. Philippines (Domestic exhaustion).
Where the act consists of the preparation for XPN: On drugs and medicines: first sale in any
individual cases, in a pharmacy or by a medical jurisdiction exhausts the rights of the owner
professional, of a medicine in accordance with a thereof (International exhaustion) (R.A. 9502).
medical prescription. (Sec. 72.5, IPC)
Where the invention is used in any ship, vessel,
PATENT INFRINGEMENT
aircraft, or land vehicle of any other country
entering the territory of the Philippines 1. Making, using, offering for sale, selling or
temporarily or accidentally. (Sec. 72.5, IPC) importing a patented product or a product
obtained directly or indirectly from a patented
process; or
2. Prior user – Person other than the applicant,
2. Use of a patented process without authorization
who in good faith, started using the invention in
of the owner of the patent (Sec. 76, IPC).
the Philippines, or undertaken serious
preparations to use the same, before the filing
date or priority date of the application shall have
Test in patent infringement
the right to continue the use thereof, but this
right shall only be transferred or assigned  Literal infringement Test – Resort must be
further with his enterprise or business. had, in the first instance, to words of the claim.
If the accused matter clearly falls within the
3. Use by Government– A government agency or
claim, infringement is committed.
third person authorized by the government may
exploit invention even without agreement of a  Minor modifications are sufficient to put the item
patent owner where: beyond literal infringement.
a. Public interest, as determined by the  Doctrine of Equivalents– There is infringement
appropriate agency of the government, where a device appropriates a prior invention by
so requires; or incorporating its innovative concept and,
although with some modification and change,
b. A judicial or administrative body has
performs substantially the same function in
determined that the manner of
substantially the same way to achieve
exploitation by owner of patent is anti-
substantially the same result (Ibid.).
competitive.
 Economic interest test–when the process-
4. Reverse reciprocity of foreign law– Any
discoverer’s economic interest are compromised,
condition, restriction, limitation, diminution,
i.e., when others can import the products that
requirement, penalty or any similar burden
result from the process, such an act is said to be
imposed by the law of a foreign country on a
prohibited.
Philippine national seeking protection of
intellectual property rights in that country, shall
reciprocally be enforceable upon nationals of
 Doctrine of Mechanical Equivalents – the
said country, within Philippine jurisdiction. (Sec.
patentee is protected from colorable invasions of
231, IPC)
his patent under the guise of substitution of
some part of his invention by some well-known
mechanical equivalent. It is an infringement of
Parallel importer – One which imports, distributes, and
the patent, if the substitute performs the same
sells genuine products in the market, independently of an
function and was well known at the date of the
exclusive distributorship or agency agreement with the
patent as a proper substitute for the omitted
manufacturer.
ingredient.
Doctrine of exhaustion – Also known as the doctrine of
o Equivalent Device – It is such as a
first sale, it provides that the patent holder has control of
mechanic of ordinary skill in
the first sale of his invention. He has the opportunity to
construction of similar machinery,
receive the full consideration for his invention from his
having the forms, specifications and
sale. Hence, he exhausts his rights in the future control
machine before him, could substitute in
of his invention.
the place of the mechanism described
It espouses that the patentee who has already sold his without the exercise of the inventive
invention and has received all the royalty and faculty.
consideration for the same will be deemed to have
 Doctrine of file wrapper estoppels – This
released the invention from his monopoly. The invention
doctrine balances the doctrine of equivalents.
thus becomes open to the use of the purchaser without
Patentee is precluded from claiming as part of
further restriction.
patented product that which he had to excise or
modify in order to avoid patent office rejection,
 and he may omit any additions that he was
compelled to add by patent office regulations.
 Doctrine of contributory infringement –
Aside from the infringer, anyone who actively
induces the infringement of a patent or provides
the infringer with a component of a patented
product or of a product produced because of a
patented process knowing it to be especially
adapted for infringing the patented invention
and not suitable for substantial non-infringing
use is liable jointly and severally with the
infringer as a contributory infringer.
o It must be proven that the product can
only be used for infringement purposes.
If it can be used for legitimate
purposes, the action shall not prosper.
o Remedies of the owner of the
patent against infringers:
o Civil action for infringement – The
owner may bring a civil action with the
appropriate Regional Trial Court to
recover from infringer the damages
sustained by the former, plus
attorney’s fees and other litigation
expenses, and to secure an
injunction for the protection of his
rights. (Sec 76.2, IPC) If the damages
are inadequate or cannot be reasonably
ascertained with reasonable certainty,
the court may award by way of
damages a sum equivalent to
reasonable royalty (Sec 76.3, IPC).
o Criminal action for infringement – If the
infringement is repeated, the infringer
shall be criminally liable and upon
conviction, shall suffer imprisonment of
not less than six (6) months but not
more than three (3) years and/or a fine
not less than P100,000.00 but not more
than P300,000.00
 Limitations to the
civil/criminal action: no
damages can be recovered for
acts of infringement
committed more than 4 years
before the filing of the action,
and the criminal action
prescribes in 3 years from the
commission of the crime.
o Administrative remedy – Where the
amount of damages claimed is not less
than P200,000.00, the patentee may
choose to file an administrative action
against the infringer with the Bureau of
Legal Affairs (BLA). The BLA can issue
injunctions, direct infringer to pay
patentee damages, but unlike regular
courts, the BLA may not issue search
and seizure warrants or warrants of
arrest.
o Destruction of Infringing material- The
court may, in its discretion, order that
the infringing goods, materials and
implements predominantly used in the
infringement be disposed of outside the
channels of commerce of destroyed,
without compensation (Sec.76.5, IPC).
Persons who can file an action for infringement
1. The patentee or his successors-in-interest may
file an action for infringement (Creser Precision
Systems, Inc. v. CA, G.R. No. 118708, Feb. 2,
1998).
2. Any foreign national or juridical entity who
meets the requirements of Sec. 3 and not
engaged in business in the Philippines, to which
a patent has been granted or assigned, whether
or not it is licensed to do business in the
Philippines (Sec. 77, IPC).
DEFENSES IN ACTION FOR INFRINGEMENT
1. Invalidity of the patent (Sec. 81, IPC);
2. Any of the Grounds for cancellation of patents:
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 (Sec. 61, IPC).
3. Prescription
LICENSING
1. Voluntary licensing (Sec. 85, IPC) and
2. Compulsory licensing (Sec. 93, IPC).
Voluntary licensing – The grant by the patent owner to
a third person of the right to exploit a patented invention.
Rights of a licensor in voluntary licensing
 In the absence of any provision to the
contrary in the technology transfer
arrangement, the grant of a license shall not
prevent the licensor from granting further
licenses to third person nor from exploiting the
subject matter of the technology transfer
arrangement himself (Sec. 89, IPC).
Prohibited clauses
1. Those which impose upon the licensee the
obligation to acquire from a specific source
capital goods, intermediate products, raw
materials, and other technologies, or of
permanently employing personnel indicated by
the licensor;
2. Those pursuant to which the licensor reserves Exception on prohibited clauses
the right to fix the sale or resale prices of the
In exceptional or meritorious cases where
products manufactured on the basis of the
substantial benefits will accrue to the economy,
license;
such as high technology content, increase in foreign
3. Those that contain restrictions regarding the exchange earnings, employment generation, regional
volume and structure of production; dispersal of industries and/or substitution with or use of
local raw materials, or in the case of Board of
4. Those that prohibit the use of competitive
Investments, registered companies with pioneer status,
technologies in a non-exclusive technology
exemption from any of the above requirements may be
transfer agreement;
allowed by the Documentation, Information and
5. Those that establish a full or partial purchase Technology Transfer Bureau after evaluation thereof on a
option in favor of the licensor; case by case basis (Sec. 91, IPC).
6. Those that obligate the licensee to transfer for
free to the licensor the inventions or
Mandatory provisions
improvements that may be obtained through the
use of the licensed technology; 1. That the laws of the Philippines shall govern the
interpretation of the same and in the event of
7. Those that require payment of royalties to the
litigation, the venue shall be the proper court in
owners of patents for patents which are not
the place where the licensee has its principal
used;
office;
8. Those that prohibit the licensee to export the
2. Continued access to improvements in techniques
licensed product unless justified for the
and processes related to the technology shall be
protection of the legitimate interest of the
made available during the period of the
licensor such as exports to countries where
technology transfer arrangement;
exclusive licenses to manufacture and/or
distribute the licensed product(s) have already 3. In the event the technology transfer
been granted; arrangement shall provide for arbitration, the
Procedure of Arbitration of the Arbitration Law of
9. Those which restrict the use of the technology
the Philippines or the Arbitration Rules of the
supplied after the expiration of the technology
United Nations Commission on International
transfer arrangement, except in cases of early
Trade Law (UNCITRAL) or the Rules of
termination of the technology transfer
Conciliation and Arbitration of the International
arrangement due to reason(s) attributable to the
Chamber of Commerce (ICC) shall apply and the
licensee;
venue of arbitration shall be the Philippines or
10. Those which require payments for patents and any neutral country; and
other industrial property rights after their
4. The Philippine taxes on all payments relating to
expiration, termination arrangement;
the technology transfer arrangement shall be
11. Those which require that the technology borne by the licensor (Sec. 88, IPC).
recipient shall not contest the validity of any of
GR: Non-conformance with the mandatory and prohibited
the patents of the technology supplier;
clauses shall automatically render the technology transfer
12. Those which restrict the research and arrangement unenforceable.
development activities of the licensee designed
XPN: Unless said technology transfer arrangement is
to absorb and adapt the transferred technology
approved and registered with the Documentation,
to local conditions or to initiate research and
Information and Technology Transfer Bureau under the
development programs in connection with new
provisions of Section 91 on exceptional cases (Sec. 92,
products, processes or equipment;
IPC)
13. Those which prevent the licensee from adapting
the imported technology to local conditions, or
introducing innovation to it, as long as it does COMPULSORY LICENSING
not impair the quality standards prescribed by
Jurisdiction
the licensor;
1. The Director of Legal Affairs may grant a license
14. Those which exempt the licensor for liability for
to exploit a patented invention, even without the
non-fulfilment of his responsibilities under the
agreement of the patent owner, in favor of any
technology transfer arrangement and/or liability
person who has shown his capability to exploit
arising from third party suits brought about by
the invention (Sec. 93, IPC).
the
2. R.A. 9502 (Universally Accessible Cheaper and
1. use of the licensed product or the licensed
Quality Medicines Act of 2008) however
technology; and
amended Sec. 93 so that it is the Director
15. Other clauses with equivalent effects (Sec. 87, General of the IPO who may grant a license to
IPC). exploit patented invention under the grounds
enumerated therein.

Grounds for compulsory licensing and the period
for filing a petition
1. National emergency or other circumstances of
extreme urgency
2. Where the public interest, in particular, national
security, nutrition, health or the development of
other vital sectors of the national economy as
determined by the appropriate agency of the
Government, so requires; at any time after the
grant of the patent
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 at any time after the grant of the
patent
4. In case of public non-commercial use of the
patent by the patentee, without satisfactory
reason at any time after the grant of the patent
5. If the patented invention is not being worked in
the Philippines on a commercial scale, although
capable of being worked, without satisfactory
reason after the expiration of 4 years from the
date of filing of the application or 3 years from
the date of the patent whichever is later (Sec.
93 in relation to Sec. 94)
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. 10, RA 9502).
When requirement to obtain a license on
reasonable commercial terms not applicable
1. Where the petition for compulsory license seeks
to remedy a practice determined after judicial or
administrative process to be anti-competitive;
2. In situations of national emergency or other
circumstances of extreme urgency;
3. In cases of public non-commercial use; and
4. 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 (R.A.
8293, Sec. 95 as amended by R.A. 9502).
Terms and condition of a compulsory license
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: 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.
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: Provided, That 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.
 The patent owner receives royalties in losing
his property rights because of the compulsory
licensing.
 Upon the request of the patentee or the
licensee, the Director of Legal Affairs may
amend the decision granting the compulsory
license, upon proper showing of new facts or
circumstances justifying such amendment.
Cancellation of complusory license
Upon the request of the patentee, the Director may
cancel the compulsory license:
1. If the ground for the grant of the compulsory
license no longer exists and is unlikely to recur;
2. If the licensee has neither begun to supply the
domestic market nor made serious preparation
therefor;
3. If the licensee has not complied with the
prescribed terms of the license;
4. The licensee may surrender the license by a
written declaration submitted to the Office.
a. The said Director 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.
Licensee’s exemption from liability
 Any person who works a patented product,
substance and/or process under a license
granted under this Chapter, shall be free from
any liability for infringement:
 o Provided however, That in the case of the patentee through a special power of
voluntary licensing, no collusion attorney.
with the licensor is proven.
o This is without prejudice to the right of
the rightful owner of the patent to TRADEMARKS
recover from the licensor whatever he
may have received as royalties under Trademark – Any visible sign capable of distinguishing
the license. the goods (trademark) or services (service mark) of an
enterprise. A trade name is a name or designation
identifying or distinguishing an enterprise.
ASSIGNMENT AND TRANSMISSION OF RIGHTS
TRADEMARK TRADE NAME
Forms of assignment
1. Total – assignment of entire right, title or Goods or services offered A natural or artificial person
interest in and to the patent and the invention by a proprietor or who does business and
covered thereby. enterprise are designated produces or performs the
by trademark (goods) or goods or services designated
2. Partial service marks (services). by trademark or service
a. Separate rights – assignment of a mark.
specific right (ex: right to sell)
Refers to the goods. Refers to business and its
b. Pro Indiviso – assignment of an aliquot goodwill.
part which results in co-ownership
Acquired only by Need not be registered.
registration.
Manner of effecting transfer of rights
1. By inheritance or bequest
2. License contract Collective mark and collective trade-name –any
visible sign designated as such in the application for
registration and capable of distinguishing the origin or
The assignment works as an estoppel by deed, any other common characteristic, including the quality of
goods or services of different enterprises.
preventing the assignor from denying the novelty and
utility of the patented invention when sued by the An application for registration of a collective mark shall
assignee for infringement. designate the mark as a collective mark and shall be
Form of an assignment accompanied by a copy of the agreement, if any,
governing the use of the collective mark.
1. In writing
2. Acknowledged and certified before a notary
public or other officer authorized to perform Functions of trademark
notarial acts 1. To point out distinctly the origin or ownership of
3. Recorded in the IPO the articles to which it is affixed.

a. A deed of assignment affecting title
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 three (3) months from
the date of said instrument, or prior to
the subsequent purchase or mortgage.
However, even without recording, the
instruments are binding upon the
parties.
GR: A licensee may NOT maintain a suit for infringement.
Only the patentees, his heirs, assignee, grantee or
personal representatives may bring an action for
infringement.
XPN: If the licensing agreement provides that
the licensee may bring an action for
infringement or if he was authorized to do so by
2. To secure to him who has been instrumental in
bringing into market a superior article or
merchandise the fruit of his industry and skill
3. To prevent fraud and imposition.
Salient features of the Paris convention for the
protection of industrial property
1. National Treatment Principle– foreign nationals
are to be given the same treatment in each of
the member countries as that country makes
available in its own citizens.
2. Right of Priority –any person who has duly filed
registration for trademark shall enjoy a right of
priority of 6 months (Rule 203, Trademark
Rules)
3. Protection against Unfair Competition
4. Protection of Tradenames –protected in all
countries without obligation of filing or
registration.
 5. Protection of Well-Known Marks
6. Most favored nation treatment - any advantage,
favour, privilege or immunity granted by a
Member to the nationals of any other country
shall be accorded immediately and
unconditionally to the nationals of all other
Members.
 Marks are acquired solely through registration.
 Registration, without more, does not confer
upon the registrant an absolute right to the
registered mark. The certificate of registration is
merely a prima facie proof that the registrant is
the owner of the registered mark or trade name.
Evidence of prior and continuous use of the
mark or trade name by another can overcome
the presumptive ownership of the registrant and
may very well entitle the former to be declared
owner in an appropriate case.
 Any word, name, symbol, emblem, device,
figure, sign, phrase, or any combination thereof
except those enumerated under Section 123,
IPC.
Requirements for a mark to be registered
1. A visible sign (not sounds or scents); and
2. Capable of distinguishing one’s goods and
services from another.
 Any application referring to several goods
or services, hereafter referred to as the "initial
application," may be divided by the applicant
into two (2) or more applications, hereafter
referred to as the "divisional applications," by
distributing among the latter the goods or
services referred to in the initial application. The
divisional applications shall preserve the filing
date of the initial application or the benefit of
the right of priority.
 Priority right – An application for registration
of a mark filed in the Philippines by a person
referred to in Section 3, and who previously duly
filed an application for registration of the same
mark in one of those countries, shall be
considered as filed as of the day the application
was first filed in the foreign country.
 No registration of a mark in the Philippines by a
person described in Section 131 shall be granted
until such mark has been registered in the
country of origin of the applicant.
 Nothing in the said section shall entitle the
owner of a registration granted under this
section to sue for acts committed prior to the
date on which his mark was registered in this
country:
o Provided, That, notwithstanding the
foregoing, the owner of a well-known
mark as defined in Section 123.1(e) of
this Act, that is not registered in the
Philippines, may, against an identical or
confusingly similar mark, oppose its
registration, or petition the cancellation
of its registration or sue for unfair
competition, without prejudice to
availing himself of other remedies
provided for under the law.
o In like manner and subject to the same
conditions and requirements, the right
provided in this section may be based
upon a subsequent regularly filed
application in the same foreign country:
 Provided, That any foreign
application filed prior to such
subsequent application has
been withdrawn, abandoned,
or otherwise disposed of,
without having been laid open
to public inspection and
without leaving any rights
outstanding, and has not
served, nor thereafter shall
serve, as a basis for claiming a
right of priority.
 Doctrine of secondary meaning – a word or
phrase originally incapable of exclusive
appropriation with reference to an article on the
market, because it is geographical or otherwise
descriptive, may nevertheless be used
exclusively by one producer with reference to his
article so long as in that trade and to that
branch of the purchasing public, the word or
phrase has come to mean that the article was
his product.
 Any person who believes that he would be
damaged by the registration of a mark may,
upon payment of the required fee and within
thirty (30) days after the publication referred to
in Subsection 133.2, file with the Office an
opposition to the application.
Acquisition of trade names
 Trade names or business names are acquired
through adoption and use. Registration is not
required. It is the actual use in commerce or
business is a pre-requisite to the acquisition of
the right of ownership.
 Can a previously used trade name of a business
in a foreign country bar its appropriation by
another in the Philippines?
o Yes. The IPC does not require that the
actual use of a trademark must be
within the Philippines.
o For a person to have ownership of a
mark, the mark must not have been
already appropriated (i.e., used) by
someone else.
Non-registrable marks
1. Consists of Immoral, deceptive or scandalous
matter or falsely suggest a connection with
persons, institutions, beliefs, or national symbols
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
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 except
by written consent of the widow
4. 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 an internationally well-known
mark, whether or not it is registered here, used
for identical or similar goods or services
6. Is Identical with an internationally well-known
mark which is registered in the Philippines with
respect to non-similar goods or services.
Provided, that the interests of the owner of the
registered mark are likely to be damaged by
such use
7. Is likely to Mislead the public 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
9. Consists exclusively of signs that have become
Customary or usual to designate the goods or
services in everyday language and established
trade practice
10. Consists exclusively 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 (Sec.
123, IPC).
 Prior use of the mark is NOT a requirement for
registration. Actual prior use in commerce in the
Philippines has been abolished as a condition for
the registration of a trademark (RA 8293).
TEST TO DETERMINE CONFUSING SIMILARITY
BETWEEN MARKS
 Dominancy Test
o Focuses on the similarity of the
prevalent features of the competing
marks. If the competing trademark
contains the main or essential or
dominant features of another, and
confusion is likely to result,
infringement takes place.
o 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 marks involved is likely to cause
of confusion or mistake in the mind of
the public or deceive purchasers.
o The dominancy test only relies on visual
comparisons between two trademarks
whereas the totality or holistic test
relies not only on the visual but also on
the aural and connotative comparisons
and overall impressions between the
two trademarks.
 Totality/Holistic Test
o Confusing similarity is to be determined
on the basis of visual, aural,
connotative comparisons and overall
impressions engendered by the marks
in controversy as they are encountered
in the marketplace.
 Priority in registration is not material in an
action for unfair competition as distinguished
from an action for infringement of trademark.
The basis of an action for unfair competition is
confusing and misleading similarity in general
appearance, not similarity of trademarks.
(Converse Rubber Co. v. Jacinto Rubber &
Plastics Co., G.R. Nos. 27425, 30505, Apr.
28, 1980)
 Principle of related goods
o Belong to the same class or have the
same descriptive properties; or
o When they possess the same physical
attributes or essential characteristics
with reference to their form,
composition, texture or quality.
 Rule of idem sonans
o The attentive ear finds difficulty in
distinguishing them when pronounced
o Similarity of sound is sufficient to rule
that the two marks are confusingly
similar when applied to merchandise of
the same descriptive properties.
Types of confusion that arise from the use of
similar or colorable imitation marks
1. Confusion of goods/product confusion - there is
confusion of goods when the products are
competing
2. Confusion of business/source or origin confusion
- the products are non-competing but related
enough to produce confusion of affiliation
(McDonald’s Corp. v. L.C. Big Mak Burger, Inc.,
G.R. No. 143993, Aug. 18, 2004).
Colorable imitation – such a close or ingenious
imitation as to be calculated to deceive ordinary persons,
or such a resemblance to the original as to deceive an
ordinary purchaser giving such attention as a purchaser
usually gives, as to cause him to purchase the one
supposing it to be the other.
WELL-KNOWN MARKS
Internationally well-known mark
1. Considered by the competent authority of the
Philippines to be “well-known” internationally
and in the Philippines as the mark of a person
other than the applicant or registrant
2. Need not be used or registered in the Philippines
3. Need not be known by the public at large but
only by relevant sector of the public.
RIGHTS CONFERRED BY REGISTRATION
Rules regarding internationally-well known marks
 GR: Prohibition on subsequent registration does
not include services and goods of different
nature or kind.
 XPNs:
o If the internationally well-known mark
is not registered in the Philippines, the
application for registration of a
subsequent or similar mark can be
rejected only if the goods or services
specified in the application are similar
to those of the internationally well-
known mark.
o If the internationally well-known mark
is registered in the Philippines, the
application for registration of a
psubsequent or similar mark can be
refused even if the goods or services
specified in the application are not
identical or similar to those of the
internationally well-known mark.
Criteria for well-known brands
1. The duration, extent and geographical area of
any use of the mark, in particular, the duration,
extent and geographical area of any promotion
of the mark, including advertising or publicity
and the presentation, at fairs or exhibitions, of
the goods and/or services to which the mark
applies.
2. The market share, in the Philippines and in other
countries, of the goods and/or services to which
the mark applies
3. The degree of the inherent or acquired
distinction of the mark
4. The quality-image or reputation acquired by the
mark
5. The extent to which the mark has been
registered in the world
6. The exclusivity of use attained by the mark in
the world
7. The commercial value attributed to the mark in
the world
8. The record of successful protection of the rights
in the mark
9. The outcome of litigations dealing with the issue
of whether the mark is a well-known mark
10. The presence of absence of identical or similar
marks validly registered for or used on identical
or similar goods or services and owned by
persons other than the person claiming that his
mark is well-known mark.
Provided further, that the mark is well-known
both internationally and in the Philippines (A.M.
No. 10-3-10-SC)
 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 thereto
specified in the certificate.
 The certificate of registration shall be issued
when the period for filing the opposition has
expired, or when the Director of Legal Affairs
shall have denied the opposition, and upon
payment of the required fee.
 The registered mark shall be published, in the
form and within the period fixed by the
Regulations. Marks registered at the Office may
be inspected free of charge and any person may
obtain copies thereof at his own expense. This
provision shall also be applicable to transactions
recorded in respect of any registered mark.
 A certificate of registration shall remain in force
for ten (10) years:
o Provided, That the registrant shall file a
declaration of actual use and evidence
to that effect, or shall show valid
reasons based on the existence of
obstacles to such use, as prescribed by
the Regulations, within one (1) year
from the fifth anniversary of the date of
the registration of the mark. Otherwise,
the mark shall be removed from the
Register by the Office (Sec, 145, IPC).
  The applicant or the registrant shall file a
declaration of actual use of the mark with
evidence to that effect, as prescribed by the
Regulations within three (3) years from the filing
date of the application. Otherwise, the
application shall be refused or the mark shall be
removed from the Register by the Director (Sec.
124.2, IPC).
o Instances when non-use is excused
o If caused by circumstances arising
independently of the will of the owner.
 Lack of funds is not
excuse.
o A use which does not alter its
distinctive character though the use is
different from the form in which it is
registered.
o Use of mark in connection with one or
more of the goods/services belonging
to the class in which the mark is
registered.
o The use of a mark by a company
related to the applicant/registrant.
o The use of a mark by a person
controlled by the registrant (Section
152, IPC).
 A certificate of registration may be renewed for
periods of ten (10) years at its expiration.
 Each request for renewal of registration must be
made within 6 months before the expiration of
the registration or within 6 months after such
expiration on payment of the additional fee
prescribed.
Rights of a registered mark owner
1. Protection against reproduction, or imitation or
unauthorized use of the mark (infringement of
mark)
2. To stop entry of imported merchandise into the
country containing a mark identical or similar to
the registered mark
3. To transfer or license out the mark.
USE BY THIRD PARTIES OF NAMES, ETC. SIMILAR
TO REGISTERED MARK
 Registration of the mark shall not confer on the
registered owner the right to preclude third
parties from using bona fide their names,
addresses, pseudonyms, a geographical name,
or exact indications concerning the kind, quality,
quantity, destination, value, place of origin, or
time of production or of supply, of their goods or
services.
INFRINGEMENT AND REMEDIES
Trademark infringement – Use without consent of the
trademark owner of any reproduction, counterfeit, copy
or colorable limitation of any registered mark or trade
name. Such use is likely to cause confusion or mistake or
to deceive purchasers or others as to the source or origin
of such goods or services, or Identity of such business.
Elements to be established in trademark
infringement
1. That it is duly registered in the Intellectual
Property Office
an
2. The validity of the mark
3. The plaintiff’s ownership of the mark
4. The use of the mark or its colorable imitation by
the alleged infringer results in “likelihood of
confusion”
5. Used without the consent of the owner
 Non-competing goods – Those which, though
they are not in actual competition, are so related
to each other that it might reasonably be
assumed that they originate from one
manufacturer.
 Non-competing goods may also be those which,
being entirely unrelated, could not reasonably
be assumed to have a common source. In the
case of related goods, confusion of business
could arise out of the use of similar marks; in
the latter case of non-related goods, it could
not.
 In a later case, in defining trademark
infringement, Section 22 of RA 166 deleted the
requirement in question and expanded its scope
to include such use of the mark or its colorable
imitation that is likely to result in confusion on
"the source or origin of such goods or services,
or identity of such business." Thus, while there
is confusion of goods when the products are
competing, confusion of business exists when
the products are non-competing but related
enough to produce confusion of affiliation.
 Modern law recognizes that the protection to
which the owner of a trademark is entitled is not
limited to guarding his goods or business from
actual market competition with identical or
similar products of the parties, but extends to all
cases in which the use by a junior appropriator
of a trade-mark or trade-name is likely to lead
to a confusion of source, as where prospective
purchasers would be misled into thinking that
the complaining party has extended his business
into the field or is in any way connected with the
activities of the infringer; or when it forestalls
the normal potential expansion of his business
(Mcdonald’s Corporation v. L & C Big Mak
Burger, Inc. August 18, 2004).
Remedies of the owner of the trademark against
infringers (Filed with the RTC)
 1. Civil —filed with the Regional Trial Courts. The
owner of the registered mark may ask the court
to issue a preliminary injunction to quickly
prevent infringer from causing damage to his
business. Furthermore, the court will require
infringer to pay damages to the owner of the
mark provided defendant is shown to have had
notice of the registration of the mark (which is
presumed if a letter R within a circle is
appended) and stop him permanently from using
the mark.
a. Ascertainment of the amount of
damages in a civil action for
infringement. The owner of a
trademark which has been infringed is
entitled to actual damages:
The reasonable profit which the
complaining party would have
made, had the defendant not infringed
his said rights; or
The profit which the defendant
actually made out of infringement; or
The court may award as damages a
reasonable percentage based upon the
amount of gross sales of the defendant
or the value of the services in
connection with which the mark or
trade name was issued.
In cases where actual intent to mislead
the public or to defraud the
complainant is shown, in the discretion
of the court, the damages may be
doubled.
2. Criminal— the owner of the trademark may ask
the court to issue a search warrant and in
appropriate cases, remedies available shall also
include the seizure, forfeiture and
destruction of the infringing goods and of any
materials and implements the predominant use
of which has been in the commission of the
offense.
3. Administrative—same as in patent infringement
cases. If the amount of damages claimed is not
less than P200,000.00, the registrant may
choose to seek redress against the
infringer by filing an administrative action
against the infringer with the Bureau of
Legal Affairs.
Limitations on the actions for infringement
1. Right of prior user– registered mark shall be
without affect against any person who, in good
faith, before filing or priority date, was using the
mark for purposes of his business (Sec 159.1,
IPC).
2. Relief against publisher– injunction against
future printing against an innocent infringer who
is engaged solely in the business of printing the
mark (Sec. 159.2, IPC).
3. Relief against newspaper – injunction against
the presentation of advertising matter in future
issues of the newspaper, magazine or in
electronic communications in case the
infringement complained of is contained in or is
part of paid advertisement in such materials
(Sec. 159.3, IPC).
UNFAIR COMPETITION – Employing deception or any
other means contrary to good faith by which a person
passes off his goods or business or services for those of
one who has already established goodwill thereto.
INFRINGEMENT OF UNFAIR
TRADEMARK COMPETITION
Unauthorized use of a The passing off of one’s
trademark. goods as those of another.
Fraudulent intent is Fraudulent intent is essential.
unnecessary.
GR: Prior registration of Registration is not necessary.
the trademark is a (Del Monte Corp. v. CA, G.R.
prerequisite to the action. No. 78325, Jan. 23, 1990)
XPN: Well-known marks
 A person who has identified in the mind of the
public the goods he manufactures or deals in,
his business or services from those of others,
whether or not a registered mark is employed,
has a property right in the goodwill of the said
goods, business or services so identified, which
will be protected in the same manner as other
property rights (Sec. 168.1, IPC).
Persons guilty of unfair competition
1. Any person, who is selling his goods and gives
them the general appearance of goods of
another manufacturer or dealer, either as to the
goods themselves or in the wrapping of the
packages in which they are contained, or the
devices or words thereon, or in any other
feature of their appearance, which would be
likely to influence purchasers to believe that the
goods offered are those of a manufacturer or
dealer, other than the actual manufacturer or
dealer, or who otherwise clothes the goods with
such appearance as shall deceive the public and
defraud another of his legitimate trade, or any
subsequent vendor of such goods or any agent
of any vendor engaged in selling such goods
with a like purpose;
2. Any person who by any artifice, or device, or
who employs any other means calculated to
induce the false belief that such person is
offering the services of another who has
identified such services in the mind of the
public;
 3. Any person who shall make any false statement
in the course of trade or who shall commit any
other act contrary to good faith of a nature
calculated to discredit the goods, business or
services of another.(Sec. 168.3, IPC)
 Trademark infringement is more limited but it
recognizes a more exclusive right derived from
the trademark adoption and registration by the
person whose goods or business is first
associated with it.
 Hence, even if one fails to establish his exclusive
property right to a trademark, he may still
obtain relief on the ground of his competitor’s
unfairness or fraud. Conduct constitutes unfair
competition if the effect is to pass off on the
public the goods of one man as the goods of
another.
Elements of an action for unfair competition
1. Confusing similarity in the general appearance of
the goods; and
NOTE: The confusing similarity may or may not
result from similarity in the marks, but may
result from other external factors in the
packaging or presentation of the goods.
2. Intent to deceive the public and defraud a
competitor.
NOTE: The intent to deceive and defraud may
be inferred from the similarity in appearance of
the goods as offered for sale to the public
In order to prove a case of unfair competition, it is
sufficient to show that such deception will be the natural
and probable cause of defendants acts.
TRADE NAMES OR BUSINESS NAMES
Trade name or business name – Any individual name
or surname, firm name, device nor word used by
manufacturers, industrialists, merchants, and others to
identify their businesses, vocations or occupants.
Limitations on use of trade name or business name
Not allowed:
1. Use a name if the word is generic.
2. Use any name indicating a geographical
locations.
3. Use any name or designation contrary to public
order or morals
4. Use a name if it is liable to deceive trade circles
or the public as to the nature of the enterprise
identified by that name.
5. Subsequently use a trade name likely to mislead
the public as a third party.
6. Copy or simulate the name of any domestic
product (for imported products).
7. Copy or simulate a mark registered in
accordance with the provisions of IPC (for
imported products).
8. Use mark or trade name calculated to induce the
public to believe that the article is manufactured
in the Philippines, or that it is manufactured in
any foreign country or locality other than the
country or locality where it is in fact
manufactured.
Items 4, 5 and 6 only applies to imported products
and those imported articles shall not be admitted to entry
at any customhouse of the Philippines.
The change in the ownership of a trade name is made
with the transfer of the enterprise or part thereof
identified by that name.
COLLECTIVE MARKS
Collective mark – A "collective mark" or “collective
trade-name" is a mark or trade-name used by the
members of a cooperative, an association or other
collective group or organization.
Contents of an application for registration of a
collective mark
1. The application shall designate the mark as a
collective mark
2. Accompanied by a copy of the agreement, if
any, governing the use of the collective mark
(Sec. 167.2, IPC)
Grounds for the cancellation of collective marks
1. The Court shall cancel the registration of a
collective mark if the person requesting the
cancellation proves that only the registered
owner uses the mark,
2. Or that he uses or permits its use in
contravention of the agreements referred to in
Subsection 166.2,
3. Or that he uses or permits its use in a manner
liable to deceive trade circles or the public as to
the origin or any other common characteristics
of the goods or services concerned (Sec 167.3,
IPC).
 The registration of a collective mark, or an
application therefor shall not be the subject of a
license contract.
 A criminal penalty of imprisonment from two (2)
years to five (5) years and a fine ranging from
Fifty thousand pesos (P50,000) to Two hundred
thousand pesos (P200,000), shall be imposed on
any person who is found guilty of committing
any of the acts. The penalty shall be
independent of the civil and administrative
sanctions imposed by law (Sec 170, IPC).
Cancellation of trademark registration
Any person who believes that he will be damaged by the Works are protected from the time of their creation,
registration of the mark: irrespective of their mode or form of expression, as well
as of their content, quality and purpose.
1. Within 5 years, from the date of the registration
of the mark; or
2. At any time; COPYRIGHTABLE WORKS
a. If the registered mark becomes the 1. Literary and Artistic Works (BOLD-MAN-GAS-
generic name for the goods or services, PAP-CO)
or a portion thereof, for which it is
a. Books, pamphlets, articles and other
registered;
writings
b. If the mark has been abandoned;
b. Lectures, sermons, addresses,
c. If its registration was obtained dissertations prepared for Oral delivery,
fraudulently or contrary to the whether or not reduced in writing or
provisions of the IPC; other material form
d. If the registered mark is being used by, c. Letters
or with the permission of, the registrant
d. Dramatic, choreographic works
so as to misrepresent the source of the
goods or services on or in connection e. Musical compositions
with which the mark is used;
f. Works of Art
e. Non-use of the mark within the
g. Periodicals and Newspapers
Philippines, without legitimate reason,
for an uninterrupted period of 3 years. h. Works relative to Geography,
topography, architecture or science
If in a petition for cancellation of a trademark, it was
established that the petitioner was not its owner, prior i. Works of Applied art
registration can be cancelled without need of filing a
j. Works of a Scientific or technical
separate petition.
character
Transliteration – is an act, process or instances of
k. Photographic works
representing or spelling of words, letters or characters of
one language in the letters and characters of another l. Audiovisual works and cinematographic
language or alphabet. works
Translation – is an act, process or instance of m. Pictorial illustrations and
translating as rendering from one language or advertisements
representational system into another. n. Computer programs; and
o. Other literary, scholarly, scientific and
COPYRIGHTS artistic works (Sec. 172.1, IPC).

Copyright – A right over literary and artistic works which
are original intellectual creations in the literary and
artistic domain protected from the moment of creation.
Elements of copyright-ability
1. Originality – Must have been created by the
author’s own skill, labor, and judgment without
directly copying or evasively imitating the work
of another (Ching Kian Chuan v. CA, G.R. No.
130360, Aug. 15, 2001).
2. Expression – Must be embodied in a medium
sufficiently permanent or stable to permit it to
be perceived, reproduced or communicated for a
period more than a transitory duration.
Elements of originality
1. It is independently created by the author, and
2. It possesses some minimal degree of creativity
2. Derivative Works
a. Dramatizations, translations,
adaptations, abridgements,
arrangements, and other alterations of
literary or artistic works;
b. Collections of literary, scholarly, or
artistic works and compilations of data
and other materials which are original
by reason of the selection or
coordination or arrangement of their
contents (Sec. 173, IPC).
 Derivative works shall be protected as new
works, provided that such new work shall not
affect the force of any subsisting copyright upon
the original works employed or any part thereof,
or be construed to imply any right to such use of
the original works, or to secure or extend
copyright in such original works.
 There will still be originality sufficient to warrant
copyright protection if “the author, through his
skill and effort, has contributed a distinguishable
variation from the older works.” In such a case,
of course, only those parts which are new are
 protected by the new copyright. Hence, in such
a case, there is no case of infringement.
Rights of an author
1. Economic rights – The right to carry out,
Non-copyrightable works (INOD-PGTSS) authorize or prevent the following acts:
1. Idea, procedure, system, method or operation, a. Reproduction of the work or substantial
concept, principle, discovery or mere data as portion thereof
such
b. Carry-out derivative work
2. News of the day and other items of press (dramatization, translation, adaptation,
information abridgement, arrangement or other
transformation of the work)
3. Any Official text of a legislative, administrative
or legal nature, as well as any official translation c. First distribution of the original and
thereof each copy of the work by sale or other
forms of transfer of ownership
4. Pleadings
d. Rental right
5. Decisions of courts and tribunals – this refers to
original decisions and not to annotated decisions e. Public display
6. such as the SCRA or SCAD as these already fall f. Public performance
under the classification of derivative works,
g. Other communications to the public.
hence copyrightable
2. Moral rights – For reasons of professionalism
7. Any work of the Government of the Philippines
and propriety, the author has the right:
a. GR: Conditions imposed prior the
a. To require that the authorship of the
approval of the government agency or
works be attributed to him (attribution
office wherein the work is created shall
right)
be necessary for exploitation of such
work for profit. Such agency or office, b. To make any alterations of his work
may, among other things, impose as prior to, or to withhold it from
condition the payment of royalties. publication
b. XPN: No prior approval or conditions c. Right to preserve integrity of work,
shall be required for the use of any object to any distortion, mutilation or
purpose of statutes, rules and other modification which would be
regulations, and speeches, lectures, prejudicial to his honor or reputation;
sermons, addresses, and dissertations, and
pronounced, read, or rendered in courts
d. To restrain the use of his name with
of justice, before administration
respect to any work not of his own
agencies, in deliberative assemblies
creation or in a distorted version of his
and in meetings of public character
work (Sec.193, IPC).
(Section 176, IPC).
3. Droit de suite (Right to proceeds in subsequent
8. TV programs, format of TV programs (Joaquin v.
transfers or follow up rights) – This is an
Drilon, G.R. No. 108946, Jan. 28, 1999)
inalienable right of the author or his heirs to
9. Systems of bookkeeping; and receive to the extent of 5% of the gross
proceeds of the sale or lease of a work of
10. Statutes.
painting or sculpture or of the original
manuscript of a writer or composer, subsequent
to its first disposition by the author.
RIGHTS OF A COPYRIGHT OWNER
a. Rights which are not covered under
 The natural person whose name is indicated on
a Droit de suite (PEEWS)
a work in the usual manner as the author shall,
in the absence of proof to the contrary, i. Prints
presumed to be the author of the work. This is
ii. Etchings
applicable even if the name is a pseudonym,
where the pseudonym leaves no doubt as to iii. Engravings
identity of the author.
iv. Works of applied art
 The person or body corporate, whose name
v. Similar works wherein the
appears on the audio-visual work in the usual
author primarily derives gain
manner shall, in the absence of proof to the
from the proceeds of
contrary, be presumed to be the maker of said
reproductions.
work.
 An author cannot be compelled to perform his
Copyright protection commences from the time of
contract to create a work or for the publication
creation.
of his work already in existence. However, he
 may be held liable for damages for breach of
such contract.
 Moral rights are personal rights independent
from the economic rights. Being a personal
right, it can only be given to a natural person.
Hence, even if he has licensed or assigned his
economic rights, he continues to enjoy the said
moral rights.
 Moral rights shall last during the lifetime of the
author and in perpetuity after his death while
the rights under Sections 193.2. 193.3. and
193.4. shall be coterminous with the economic
rights, the moral rights shall not be assignable
or subject to license.
 The person or persons to be charged with the
posthumous enforcement of these rights shall
be named in a written instrument which shall be
filed with the National Library. In default of such
person or persons, such enforcement shall
devolve upon either the author’s heirs, and in
default of the heirs, the Director of the National
Library.
 Moral rights can be waived in writing, expressly
so stating such waiver.
o XPN: Even in writing, waiver is not
valid if:
o Use the name of the author, title of his
work, or his reputation with respect to
any version/adaptation of his work,
which because of alterations,
substantially tend to injure
literary/artistic reputation of another
author
o Use name of author in a work that he
did not create
Exceptions to moral rights
1. Absent any special contract at the time creator
licenses/permits another to use his work, the
following are deemed not to contravene
creator’s moral rights, provided they are done in
accordance with reasonable customary
standards or requisites of the medium:
a. Editing
b. Arranging
c. Adaptation
d. Dramatization
e. Mechanical and electric reproduction
2. Complete destruction of work unconditionally
transferred by creators (Sec. 197, IPC).
Neighboring rights – rights of performers, producers of
sound recording and broadcasting organizations
Scope of a performer’s rights
1. As regards their performances, the right of
authorizing:
a. The broadcasting and other
communication to the public of their
performance; and
b. The fixation of their unfixed
performance.
2. The right of authorizing the direct or indirect
reproduction of their performances fixed in
sound recordings or audiovisual works or
fixations in any manner or form;
3. The right of authorizing the first public
distribution of the original and copies of their
performance fixed in sound recordings or
audiovisual works or fixations through sale or
rental of other forms of transfer of ownership;
4. The right of authorizing the commercial rental to
the public of the original and copies of their
performances fixed in sound recordings or
audiovisual works or fixations, even after
distribution of them by, or pursuant to the
authorization by the performer; and
5. The right of authorizing the making available to
the public of their performances fixed in sound
recordings or audiovisual works or fixations, by
wire or wireless means, in such a way that
members of the public may access them from a
place and time individually chosen by them.
(Sec. 203, IPC as amended by R.A. No. 10372).
Moral rights of performers – The performer, shall, as
regards his live aural performances or performances fixed
in sound recordings, have the right to claim to be
identified as the performer of his performances, except
where the omission is dictated by the manner of the use
of the performance, and to object to any distortion,
mutilation or other modification of his performances that
would be prejudicial to his reputation.
 The performer loses his rights once he has
authorized broadcasting or fixation of his
performance.
 Fair use and limitations to copyrights shall apply
mutatis mutandis to performers (Ibid.).
 The performer shall be entitled to an additional
remuneration equivalent to at least 5% of the
original compensation he received for the first
communication or broadcast in every
communication to the public or broadcast of a
performance subsequent to the first
communication or broadcast, unless otherwise
provided in the contract.
Scope of the rights of producers on sound
recordings
1. The right to authorize the direct or indirect
reproduction of their sound recordings, in any
manner or form; the placing of these
reproductions in the market and the right of
rental or lending
2. The right to authorize the first public distribution
of the original and copies of their sound
 recordings through sale or rental or other forms 1. For literary and artistic works and derivative
of transferring ownership; works
3. The right to authorize the commercial rental to a. Works of authors who are nationals of,
the public of the original and copies of their or have their habitual residence in, the
sound recordings, even after distribution by Philippines;
them by or pursuant to authorization by the
b. Audio-visual works the producer of
producer; and
which has his headquarters or habitual
4. The right to authorize the making available to residence in the Philippines;
the public of their sound recordings in such a
c. Works of architecture erected in the
way that members of the public may access the
Philippines or other artistic works
sound recording from a place and at a time
incorporated in a building or other
individually chosen or selected by them, as well
structure located in the Philippines;
as other transmissions of a sound recording with
like effect. d. Works first published in the Philippines;
and
Fair use and limitations to copyrights shall apply
mutatis mutandis to performers (Sec. 210, IPC). e. Works first published in another
country but also published in the
Philippines within thirty days,
Scope of the rights of broadcasting organizations irrespective of the nationality or
residence of the authors (Sec. 221,
1. The rebroadcasting of their broadcasts
IPC).
2. The recording in any manner, including the
2. For performers
making of films or the use of video tape, of their
broadcasts for the purpose of communication to a. Performers who are nationals of the
the public of television broadcasts of the same Philippines;
3. The use of such records for fresh transmissions b. Performers who are not nationals of the
or for fresh recording (Sec. 211, IPC). Philippines but whose performances:
c. Take place in the Philippines; or
The provisions of Chapter VIII shall apply mutatis d. Are incorporated in sound recordings
mutandis to the rights of performers, producers of sound that are protected under IPC; or
recordings and broadcasting organizations:
e. Which has not been fixed in sound
1. Exclusive use of a natural person for own recording but are carried by broadcast
personal purposes qualifying for protection under IPC
(Sec. 222, IPC)
2. Short excerpts for reporting current events
3. Of sound recordings
3. Sole use for the purpose of teaching or for
scientific research a. Sound recordings the producers of
which are nationals of the Philippines;
4. Fair use of the broadcast (Sec. 212, IPC, as
and
amended by R.A. No. 10372).
b. Sound recordings that were first
published in the Philippines (Sec. 223,
Term of protection given to performers, producers IPC).
and broadcasting organizations
4. For broadcast
1. For performances not incorporated in recordings,
a. Broadcasts of broadcasting
50 years from the end of the year in which
organizations the headquarters of
the performance took place; and
which are situated in the Philippines;
2. For sound or image and sound recordings and
and for performances incorporated therein,
b. Broadcasts transmitted from
50 years from the end of the year in which
transmitters situated in the Philippines
the recording took place.
(Sec. 224, IPC)
3. In case of broadcasts, the term shall be 20
NOTE: The provisions of IPC shall also apply to works,
years from the date the broadcast took
performers, producers of sound recordings and
place. The extended term shall be applied only
broadcasting organizations that are to be protected by
to old works with subsisting protection under the
virtue of and in accordance with any international
prior law (Sec. 215, IPC).
convention or other international agreement to which the
Philippines is a party.
Persons whom the rights are granted
(copyrightable works applicable)
COLLECTIVE WORK JOINT WORK

Elements remain
unintegrated and
disparate.
Work created by 2 or more
persons at the initiative
and under the direction of
another with the
understanding that it will
be disclosed by the latter
under his own name and
that of the contributions of
natural persons will NOT be
identified
professional institutions where such use is in the
Separate elements merge
public interest and is compatible with fair use.
into a unified whole.
9. The Public performance of a work, in a place
where no admission fee is charged.
Work prepared by 2 or more
10. Public Display of the original or a copy of the
authors with the intention
work not made by means of a film, slide,
that their contributions be
television image or otherwise on screen or by
merged into inseparable or
means of any other device or process (e.g.
independent parts of the
Public display using posters mounted on walls
unitary whole.
and display boards.
11. Any use made of a work for the purpose of any
Judicial proceedings or for the giving of
professional advice by a legal practitioner.

Each author shall enjoy Joint authors shall be co-

copyright to his own
contribution
The work will be attributed
to the person under whose
initiative and direction it
was created unless the
contributor expressly
reserves his right.
owners. Co-ownership shall
apply.
Joint authors shall be both
entitled to the
acknowledgment as authors
of the work.
R.A. No. 10372 amended R.A. No. 8293, Sec. 184.1 (1),
which now states: 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: Provided, That such copies and
distribution shall be made on a nonprofit basis and shall
indicate the copyright owner and the date of the original
publication.

 Principle of automatic protection – Works

are protected by the sole fact of their creation
LIMITATIONS ON COPYRIGHT irrespective of their content, quality or purpose.
The following acts shall not constitute infringement of Such rights are conferred from the moment of
copyright: (PeMaCoP-TEEUP-DJ) creation.

1. Performance of a work, once it has been  Decompilation, which is the reproduction of the
lawfully made accessible to the public, if done code and translation of the forms of the
privately and free of charge or for a charitable or computer program to achieve the inter-
religious institution or society. operability of an independently created
computer program with other programs, may
2. The Making of quotations from a published work also constitute fair use
if they are compatible with fair use and only to
the extent justified for the purpose. 1. Other limitations on copyright

3. Communication to the public by mass media of
articles on current political, social, economic,
scientific or religious topic, lectures, addresses
and other works of the same nature
4. As Part of reports of current events (e.g. music
played or tunes on the occasion of a sporting
event and such tunes were picked up during a
new coverage of the event).
5. For Teaching purposes, provided that the source
and of the name of the author, if appearing in
the work, are mentioned.
6. Recording made in Educational institutions of a
work included in a broadcast for the use of such
educational institutions, provided that such
recording must be deleted within a reasonable
period after they were first broadcast.
7. The making of Ephemeral recordings by a
broadcasting organization by means of its own
facilities and for use in its own broadcast.
8. The Use made of a work by or under the
direction or control of the government, by the
National Library or by educational, scientific or
1. The fair use of a copyrighted work for criticism,
comment, news reporting, teaching including
limited number of copies for classroom use,
scholarship, research, and similar purposes is
not an infringement of copyright. Decompilation,
which is understood here to be the reproduction
of the code and translation of the forms of a
computer program to achieve the
interoperability of an independently created
computer program with other programs may
also constitute fair use under the criteria
established by this section, to the extent that
such decompilation is done for the purpose of
obtaining the information necessary to achieve
such interoperability. (Sec. 185, IPC, as
amended by R.A. No. 10372).
2. Copyright in a work of architecture shall include
the right to control the erection of any building
which reproduces the whole or a substantial part
of the work either in its original form or in any
form recognizably derived from the original,
provided, that the copyright in any such work
shall not include the right to control the
reconstruction or rehabilitation in the same style
 as the original of a building to which that
copyright relates (Sec. 186, IPC).
3. The private reproduction of a published work in
a single copy, where the reproduction is made
by a natural person exclusively for research and
private study, shall be permitted, without the
authorization of the owner of copyright in the
work but shall not extend to the reproduction of:
a. A work of architecture in the form of
building or other construction;
b. An entire book, or a substantial part
thereof, or of a musical work in graphic
form by reprographic means;
c. A compilation of data and other
materials;
d. A computer program except as
provided in Section 189; and
e. Any work in cases where reproduction
would unreasonably conflict with a
normal exploitation of the work or
would otherwise unreasonably
prejudice the legitimate interests of the
author (Sec. 187, IPC).
4. Any library or archive whose activities are not
for profit may, without the authorization of the
author or copyright owner, make a limited
number of copies of
2. the work, as may be necessary for such
institutions to fulfill their mandate, by
reprographic reproduction:
a. Where the work by reason of its fragile
character or rarity cannot be lent to
user in its original form;
b. Where the works are isolated articles
contained in composite works or brief
portions of other published works and
the reproduction is necessary to supply
them, when this is considered
expedient, to persons requesting their
loan for purposes of research or study
instead of lending the volumes or
booklets which contain them; and
c. Where the making of such limited
copies is in order to preserve and, if
necessary in the event that it is lost,
destroyed or rendered unusable,
replace a copy, or to replace, in the
permanent collection of another similar
library or archive, a copy which has
been lost, destroyed or rendered
unusable and copies are not available
with the publisher.
3. But it shall not be permissible to produce a
volume of a work published in several volumes
or to produce missing tomes or pages of
magazines or similar works, unless the volume,
tome or part is out of stock (Sec. 188, IPC, as
amended by R.A. No. 10372).
4. The reproduction in one back-up copy or
adaptation of a computer program shall be
permitted, without the authorization of the
author of, or other owner of copyright in, a
computer program, by the lawful owner of that
computer program, provided, the copy or
adaptation is necessary for:
a. The use of the computer program in
conjunction with a computer for the
purpose, and to the extent, for which
the computer program has been
obtained; and
b. Archival purposes, and, for the
replacement of the lawfully owned copy
of the computer program in the event
that the lawfully obtained copy of the
computer program is lost, destroyed or
rendered unusable (Sec. 187, IPC).
TYPE OF WORK DURATION
Single creation Lifetime of the creator and
in perpetuity after his death
Joint creation Lifetime of the last surviving
co-creator and in perpetuity
after his death
Anonymous or 50 years after the date of
pseudonymous work their first publication;
except where before the
expiration of said period,
the author’s identity is
revealed or is no longer in
doubt, the 1st two
mentioned rules shall apply;
or if unpublished, 50 years
from their making.
Work of an applied art of 25 years from the time of
an artistic creation with the making.
utilitarian functions or
incorporated in a useful
article whether made by
hand or produced on an
industrial scale
Audio-visual works 50 years from date of
including those produced publication and, if
by process analogous to unpublished, from the date
photography or any of making
process for making
audio-visual recordings
Newspaper Article Lifetime of the author and
in perpetuity after his deat
The term of protection shall be counted from the 1st day
of January of the year following the last publication
Doctrine of fair use – “Fair use” permits a secondary
use that “serves the copyright objective of stimulating
productive thought and public instruction without
excessively diminishing the incentives for creativity”.
 grant licenses without the prior written consent of the
other owner or owners.
Factors that should be considered in order to
determine fair use
1. The purpose and character of the use, including COPYRIGHT INFRINGEMENT
whether such use is of a commercial nature or is
Copyright infringement – It is the doing by any
for non-profit educational purpose;
person, without the consent of the owner of the
2. The nature of the copyrighted work; copyright, of anything the sole right to do which is
conferred by statute on the owner of the copyright. The
3. The amount and substantiality of the portion
act of lifting from another’s book substantial portions of
used in relation to the copyrighted work as a
discussions and examples and the failure to acknowledge
whole; and
the same is an infringement of copyright.
4. The effect of the use upon the potential market
for or value of the copyrighted work.
Infringement
The fact that a work is unpublished shall not by itself bar
a finding of fair use if such finding is made upon 1. A person infringes a right protected under this
consideration of all the above factors (Sec. 182.2, IPC). If Act when one:
you copy to the extent that you reduce the marketability
2. Directly commits an infringement;
of the book, it is no longer fair use.
3. Benefits from the infringing activity of another
person who commits an infringement if the
Must carry rule – another limitation on copyright. It person benefiting has been given notice of the
obligates operators to carry the signals of local channels infringing activity and has the right and ability to
within their respective systems. This is to give the people control the activities of the other person;
wider access to more sources of news, information,
4. With knowledge of infringing activity, induces,
education, sports event and entertainment programs
causes or materially contributes to the infringing
other than those provided for by mass media and
conduct of another.
afforded television programs to attain a well informed,
well-versed and culturally refined citizenry and enhance
their socio-economic growth (ABS-CBN Broadcasting
 It is not necessarily required that the entire
Corporation v. Philippine Multimedia System, G.R. No.
copyrighted work, or even a large portion of it,
175769-70, Jan. 19, 2009).
be copied. If so much is taken that the value of
Published works – Those works which, with the consent the original work is substantially diminished,
of the authors, are made available to the public by wire there is an infringement of copyright and to an
or wireless means in such a way that members of the injurious extent, the work is appropriated.
public may access these works from a place and time
 It is no defense that the pirate did not know
individually chosen by them: provided, that availability of
whether or not he was infringing any copyright;
such copies has been such, as to satisfy the reasonable
he at least knew that what he was copying was
requirement of the public, having regard to the nature of
not his, and he copied at his peril. In cases of
the work.
infringement, copying alone is not what is
prohibited. The copying must produce an
PUBLIC PERFORMANCE COMMUNICATIONS TO
“injurious effect”.
THE PUBLIC OF A
PERFORMANCE Plagiarism – It is the practice of claiming or implying
original authorship of (or incorporating material from)
Performance at a place or at The transmission to the someone else’s written or creative work, in whole or in
places where persons public, by any medium, part, into one’s own without adequate acknowledgment.
outside the normal circle of otherwise than by
a family and that family’s broadcasting, of sounds of a
closest social acquaintances performance or the
COPYRIGHT PLAGIARISM
are or can be present. representations of sounds
INFRINGEMENT
fixed in a sound recording.
The unauthorized use of The use of another’s
It is performed at a specific The communication can be
copyrighted material in a information, language, or
time and place. (e.g. The accessed through wired or
manner that violates one writing, when done without
Pacquiao-Clottey Match in wireless means at a time
of the copyright owner’s proper acknowledgment of the
Dallas Texas Stadium) and place convenient to the
exclusive rights, such as original source.
viewer (e.g. The Pacquiao-
the right to reproduce or
Clottey Match watched via
perform the copyrighted
YouTube)
work, or to make
derivative works that build
If two or more persons jointly own a copyright or any
upon it.
part thereof, neither of the owners shall be entitled to
 damages and profits, an award of statutory damages for
Copyright infringement is Plagiarism is specific as it refers
all infringements involved in an action in a sum
a very broad term that only to using someone else’s
equivalent to the filing fee of the infringement action but
describes a variety of work without proper
not less than Fifty thousand pesos (Php50,000.00).
acts. It may be acknowledgement.
duplication of a work,
rewriting a piece,
Factors to be considered by the court in awarding
performing a written work
statutory damages
or doing anything that is
normally considered to be 1. The nature and purpose of the infringing act;
the exclusive right of the
2. The flagrancy of the infringement;
copyright holder.
3. Whether the defendant acted in bad faith;
There is no copyright Public documents can be
4. the need for deterrence;
infringement on public plagiarized so long as it is not
documents. acknowledged. 5. Any loss that the plaintiff has suffered or is likely
to suffer by reason of the infringement; and
In copyright In plagiarism the copying need
6. Any benefit shown to have accrued to the
infringement, the copying not be substantial
defendant by reason of the infringement
must be substantial

In copyright Plagiarism, may exist even if

infringement, the copying none of the same words are
must refer to the used to express an idea.
expression of an idea.
Remedies in case of copyright infringement (IDID-
MS)
1. Injunction
2. Damages, including legal costs and other
expenses, as he may have incurred due to the
infringement as well as the profits the infringer
may have made due to such infringement
3. Impounding during the pendency of the action
sales invoices and other documents evidencing
sales
4. Destruction without any compensation
infringing copies
5. Moral and Exemplary damages (Sec. 216.1); or
6. Seizure and impounding of any article, which
may serve as evidence in the court proceedings.
(Sec. 216.2, IPC)
Double damages in the ff circumstances:
1. Circumvents effective technological measures;
or
2. Having reasonable grounds to know that it will
induce, enable, facilitate or conceal the
infringement, remove or alter any electronic
rights management information from a copy of a
work, sound recording, or fixation of a
performance, or distribute, import for
distribution, broadcast, or communicate to the
public works or copies of works without
authority, knowing that electronic rights
management information has been removed or
altered without authority.
The copyright owner may elect, at any time before final
judgment is rendered, to recover instead of actual
Copying is demonstrated by:
1. Direct Evidence
2. By circumstantial evidence of access and
substantial inquiry (most common test)
a. ACCESS- having reasonable opportunity
to view or hear the plaintiff’s work.
THRESHOLD INQUIRY: whether there is
reasonable opportunity to copy
Criminal penalties in case of copyright infringement
1. Imprisonment of one (1) year to three (3) years
plus a fine ranging from Fifty thousand pesos
(P50,000) to One hundred fifty thousand pesos
(P150,000) for the first offense.
2. Imprisonment of three (3) years and one (1)
all
day to six (6) years plus a fine ranging from One
hundred fifty thousand pesos to Five hundred
thousand (P500,000) for the second offense.
3. Imprisonment of six (6) years and one day to
nine (9) years plus a fine ranging from Five
hundred thousand pesos (P500,000) to
P1,500,000 for the third offense.
4. In all cases, subsidiary imprisonment in cases of
insolvency.
 In determining the number of years of
imprisonment and the amount of fine, the court
shall consider the value of the infringing
materials that the defendant has produced or
manufactured and the damage that the
copyright owner has suffered by reason of the
infringement:
o Provided, That the respective maximum
penalty stated in Section 217.1. (a), (b)
and (c) herein for the first, second,
third and subsequent offense, shall be
imposed when the infringement is
committed by:
 o the circumvention of effective
technological measures;
o the removal or alteration of any
electronic rights management
information from a copy of a work,
sound recording, or fixation of a
performance, by a person, knowingly
and without authority; or
o the distribution, importation for
distribution, broadcast, or
communication to the public of works
or copies of works, by a person without
authority, knowing that electronic rights
management information has been
removed or altered without authority.
 Affidavit evidence – An affidavit made before
the notary public in actions for infringement,
reciting the facts required to be stated under the
IPC.
 As a prima facie proof, the affidavit shifts the
burden of proof to the defendant, to prove the
ownership of the copyrighted work.
 The amendments to the Intellectual Property
Code have removed the original limitation of
three copies when bringing legitimately acquired
copies of copyrighted material into the country.
Only the importation of pirated or infringed
material is illegal. As long as they were legally
purchased, you can bring as many copies you
want, subject to Customs regulations.
 Reproduction of copyrighted material for
personal purposes is not punishable by RA
10372. Infringement in this context refers to the
economic rights of the copyright owner.
Transferring music from a lawfully acquired CD
into a computer, then downloading it to a
portable device for personal use, is not
infringement. But if, multiple copies of the CD
were reproduced for sale, then infringement
occurs.
 Mall owners are not automatically penalized for
the infringing acts of their tenants. When a mall
owner or lessor finds out about an infringement
activity, he or she must give notice to the
tenant, then he or she will be afforded time to
act upon this knowledge. The law requires that
one must have both proven knowledge of the
infringement, and the ability to control the
activities of the infringing person, to be held
liable. The mall owner must also have benefitted
from the infringement (Ibid).
Other beneficial provisions brought by RA 10372
1. Grant of enforcement powers to IPOPHL
(Sec. 2)
The law grants visitorial powers to IPOPHL and
allows it to undertake enforcement functions
with the support of concerned agencies such as
PNP, NBI, BOC, OMB and LGUs. IPOPHL itself
will not be conducting raids or seizures but will
be coordinating with the said agencies.
However, as IP rights remain to be private
rights, there must be a complaint from the IP
right owner. So, if an author sees pirated copies
of his book in a certain store, he may notify
IPOPHL. IPOPHL can now initiate together with
any of the said agencies to address the problem.
2. Establishment of the Bureau of Copyright
and other related rights (Secs. 1 and 3)
At present there is no entity performing the
more substantial function of policy formulation,
rule making, adjudication, research and
education, which is envisioned to be handled by
the Bureau of Copyright. Although a Copyright
Division exists in the National Library, the
function of such office is merely to accept
deposits of copyrighted works. The Copyright
Bureau is dedicated to serving the needs of the
copyright-based industries and stakeholders
could give more focus and rally more resources
and support for the creative industry, which is
very important for protection of works by
Filipinos both here and abroad.
3. Accreditation of collective management
organizations or CMOs (Sec. 10)
CMOs are organizations that enforce the
copyright of the copyright holders. Through this
mandate, IPOPHL will be able to monitor and
promote good corporate governance among
CMOs, benefitting not only the rights holders
themselves but also the users of copyrighted
works. Members of the Philippine Retailers
Association (PRA), mall owners, restaurants, and
other heavy users of music in their
establishments will greatly benefit from this
provision, as they are ensured that only
legitimate collecting agencies can collect
royalties from them on behalf of copyright
owners.
4. Clarification of the concept of copyright
infringement, including secondary liability
(Secs. 22 and 23)
The provisions on copyright infringement have
been refined to include contributory
infringement (secondary liability), circumvention
of technological measures and rights
management information as aggravating
circumstances, and the option to collect
statutory damages instead of actual damages.
However, under Sec. 22 of the amendments, to
be secondarily liable, a landlord or mall must:
(1) benefit from the infringing activity; (2) must
have been given notice of the infringing activity
and a grace period to act on the same; and (3)
has the right and ability to control the activities
of the person who is doing the infringement. The
complainant has the burden of proof to provide
evidence that all 3 elements are present. If a
landlord or mall owner is not aware of the
infringement, he cannot be liable for
infringement, even if he benefits from it (from
 rental payments) or has control over the
premises.
5. Fair use for the blind, visually- and reading-
impaired (Sec. 11)
This provision would give a special fair use
exemption for the non-commercial reproduction
of works for use by visually-impaired persons.
Before this amendment, hundreds of thousands
of blind Filipinos could not buy Braille works at
cheap prices because copyright protection
operates. Now with this amendment, blind and
visually impaired Filipinos can have easier
access to copyrighted works in Braille.
6. Formulation of IP Policies within
universities and colleges (Sec. 27)
This will ensure that the rights of the academic
community (professors, researchers, students)
over their literary, scholarly and artistic works
are clearly delineated and respected. With an IP
Policy in existence, these sectors within the
academe will have a clear delineation of their
respective rights and benefits, thus, avoiding
disputes and costly litigation within their ranks
which would be detrimental to education,
research and development.

RULES OF PROCEDURE FOR INTELLECTUAL

PROPERTY RIGHTS CASES (A.M. No. 10-3-10-SC)
 Regional Trial Courts designated by the Supreme
Court as Special Commercial Courts
 Registration and deposit of a work with the
National Library or the Intellectual Property
Office shall not carry with it the presumption of
ownership of the copyright by the registrant or
depositor, nor shall it be considered a condition
sine qua non to a claim of copyright
infringement.