Intellectual Property Code
Intellectual Property Code
Geographical indications - indications which identify a Work of applied art - an artistic creation with
good as originating in the territory or a region or locality utilitarian functions or incorporated in a useful
in that territory, where a given quality, reputation or article, whether made by hand or produced on an
other characteristics of the good is essentially attributable industrial scale.
to its geographical origin.
Example: Tuba from Leyte/Samar. Performers - actors, signers, musicians, dancers,
and other persons who act, sing, declaim, play in,
Protection of Undisclosed Information - natural and interpret, or otherwise perform literary and artistic
legal persons shall have the possibility of preventing work.
information lawfully within their control from being
disclosed to, acquired by, or used by others without their Rights over copyrights are conferred from the
consent in a manner contrary to honest commercial moment of CREATION.
practices, so long as the information: SCS The work is DEEMED CREATED if something
1. Is Secret, in the sense that it is not generally known original is expressed in a fixed manner.
among or readily accessible to persons within the
circles that normally deal with the kind of Who owns the copyright?
information or question; One creator - creator, his heirs or assigns owns
2. Has Commercial value because it is secret; and the copyright.
3. Has been Subject to reasonable steps by the person
lawfully in control of the information, to keep it Joint creation - co-authors shall be the original
secret. owners of the copyright and, in the absence of
agreement, their rights shall be governed by the
Trademark - any visible sign capable of distinguishing rules on co-ownership.
the goods (trademark) or services (service mark) of an Exception: When work of joint authorship
enterprise and shall include a stamped or marked consists of parts that can be used
container of goods. separately and the author of each part
can be identified, the author of each part
Trade name - the name or designation identifying or shall be the original owner of the copyright in
distinguishing an enterprise (under the jurisdiction of the part that he has created.
DTI).
Commissioned work - person commissioning
Copyright - confined to literary and artistic works, which owns the work; ownership of copyright remains with
are original intellectual creations in the literary and the creator, unless there is a written stipulation to
artistic domain protected from the moment of creation. the contrary.
Patentable inventions - refer to any technical Audio-visual work - producer for purposes of
solution of a problem in any field of human activity exhibition; for all other purposes, the producer, the
which is (1) new, (2) involves an inventive step, and (3) author of the work, the film director, the scenario
is industrially applicable. author, the composer, and the photographic
director pads-cp are the owners.
While registration of other intellectual properties are with
the IPO, copyrighted works are still deposited with the Pseudonyms and anonymous works - the
National Library and the Supreme Court. However, publisher shall be presumed to be the
the IPO (thru the Bureau of Copyright) exercises original representative of the author, unless the author is
jurisdiction over disputes relating to the terms of a undisputably known.
license involving the author’s rights.
Employee’s work during course of
The IPO now has enforcement functions supported by employment -
other government agencies. It also has visitorial powers. a. Employer - if the result of regular functions of
duty;
b. Employee - if result is not part of his duties.
COPYRIGHT
Right over literary and artistic works, which are Original DURATION OF COPYRIGHT
intellectual creations in the Literary and artistic domain Literary artistic works and derivative works -
Protected from the moment of creation ROLP. during the lifetime of the creator and for 50 years
after death.
Author - natural person who created the work.
Joint creation - economic rights shall be protected 2. News of the day and other miscellaneous facts
during the lifetime of the last surviving author and having the character of mere items of press
for 50 years after the death of the last surviving informations;
author. 3. Official text of legislative, administrative, or legal
nature, and its official translation;
Anonymous or pseudonymous work - till the 4. Government work
end of 50 years following the date of their first However, prior approval of government agency
publication. The 50-year duration commences from or office wherein the work is created shall be
January 1 following the date of publication. necessary for exploitation of such work for
profit.
Photographic works - 50 years from the No prior approval or conditions shall be
publication of the work, or from making it required for the use of any purpose of statues,
unpublished. rules and regulations, and speeches, lectures,
sermons, addresses, and dissertation,
Work of applied art - 25 years from the date of pronounced, read, or rendered in courts of
making. justice, before administrative agencies, in
deliberative assemblies, and in meetings of
Broadcast - 20 years from date of broadcast. public character.
FAIR USE doctrine - Fair use is a privilege to use the Technological measures - technology,
copyrighted material in a reasonable manner without the device, or component that, in the normal
consent of the copyright owner or as copying the them or course of its operation, restricts acts in respect
ideas rather than their expression. of a work, performance or sound recording,
The purpose of the use of a copyrighted work must which are not authorized by the authors,
be for: CC-NTC performers or producers. Example:
1. Criticism; Jailbreaking or Rooting phones.
2. Comment; Its circumvention does not by itself
3. News reporting; constitute infringement. However, such
4. Teaching; circumvention may increase the penalty
5. Multiple Copies for classroom use, scholarship, for infringement of copyright, provided
research and similar purposes. that such infringement is first established.
Factors to consider whether use is fair or not: The law does not distinguish if the letters are
PANE handwritten or in electronic form. Messages are
1. Purpose and character of the use; protected works under the IPC.
2. Amount and substantiality of the portions
used;
3. Nature of the copyrighted work; TRADEMARKS
4. Effect of the use upon the potential market of Trademark - any visible sign capable of distinguishing
the copyrighted work. the goods or services of an enterprise, and shall include a
stamped or marked container of goods.
Broadcasting organizations are expressly granted Tradename - name or designation identifying or
the right of rebroadcasting their broadcast distinguishing an enterprise. (there is no need to
under Sec. 211.1 of the IPL. Rebroadcasting is register trade names in order to secure protection
included in what is known NEIGHBORING for them.)
RIGHTS over the broadcast. Neighboring rights are
rights neighboring to copyright like the right to Requirements: VC
rebroadcast. 1. There must be a Visible sign.
2. It must be Capable of distinguishing the goods
Decompilation is the reproduction of the code and of an enterprise.
translation of the forms of a computer program to
achieve the interoperatability of an independently COLLECTIVE MARK - any visible sign designated as
created computer program with other programs. such in the application for registration and capable of
It may also constitute fair use under the distinguishing the origin or any other common
criteria enumerated above to the extent that characteristic.
such decompilation is done for the purpose of
obtaining the information necessary to achieve Functions of Trademarks/Service Marks: IGA
interoperatability. 1. Indicate the origin of goods to which they are
attached;
COPYRIGHT INFRINGEMENT 2. Guarantee the standard of quality of the goods;
How made? When there is PIRACY or 3. Advertise the goods.
SUBSTANTIAL REPRODUCTION.
If so much is taken that the value of the How are marks acquired? The rights in a mark are
original work is substantially diminished, or the acquired thru registration with the IPO.
labors of the original author are substantially, Registration is NECESSARY before one can file an
and to an injurious extent, appropriated by action for infringement (of trademark).
another. But it is NOT NECESSARY for filing a case for
unfair competition or false designation of origin.
A person infringes a right protected under this
Act when one: DIB Prior use in the Philippines is not required before
1. Directly commits infringement; registration.
2. Induces, causes, or materially contributes However, there must be actual use after
to the infringing of another, with registration.
knowledge of the infringing activity; The registrant shall file a declaration of
3. Benefits from the infringing activity of actual use of the mark with evidence to
another person if the person benefiting that effect within 3 years from the filing
has been given notice of such activity
of the date of application, otherwise it
may be cancelled. Rights conferred by registration of trademark: PEE
1. Prevent others fro use of the same mark for
The registrant is required to file a identical goods or services in the course of trade.
declaration of actual use and evidence to 2. Exclusive use of the mark for one’s own goods and
that effect, or shall show valid reasons services;
for non-use within 1 year from the 5 th 3. Exclusive use of one’s already registered mark even
anniversary date of registration. for goods or services into which one’s own venture
expands, if used by others for dissimilar products is
Registration is not important to protect the likely to damage the business interests of the first
goodwill that identifies in the mind of the public venturer.
the goods he manufactures or deals in.
TRADEMARK INFRINGEMENT
Right is acquired from the time of registration = Elements: RRU-LW
filing date of application. 1. Registration of the trademark being infringed
Filing date shall be the date on which the in the IPO;
IPO received the following indications and 2. Trademark or trade name is Reproduced,
elements: ERILI counterfeited, copied, or colorably imitated
1. Express or implicit indication that rccc by infringer;
registration of the mark is sought; 3. Infringing mark or trade name is Used in
2. Reproduction of the mark; connection with the sale, offering for sale, or
3. Identity of applicant; advertising of any goods, business or services,
4. List of goods or services for which or is applied to labels, etc. intended to be used
registration is sought; upon or in connection with such goods,
5. Indications sufficient to contact the business or services;
applicant or his representative. 4. It is Likely to cause confusion or mistake or to
deceive purchasers or others as to the goods
The right may also be protected from or services, or as to the source or origin of
PRIORITY DATE. Subject to the rules on such goods or services;
reciprocity, where the application is filed in the 5. It is Without the consent of the trademark or
Philippines and the same applicant previously trade name owner.
filed an application in the countries covered by
the reciprocity rule, the application is deemed In infringement of TRADE NAME, the same need
filed as of the day the application was first not be registered.
filed in the foreign country.
Types of Confusion
MARKS THAT CANNOT BE REGISTERED: DISC-GC- Confusion of GOODS Confusion of BUSINESS
FIN When an otherwise prudent When the goods of the
1. Descriptive marks; purchaser is induced to parties are different but the
2. Immoral, deceptive or scandalous matter; purchase one product in the defendant’s products can
3. Shapes; belief that he is purchasing reasonably be assumed to
4. Color by itself; another, in which case, originate from the plaintiff,
5. Generic terms for goods or services; defendant’s goods are then thus deceiving the public into
6. Customary sign in everyday language; bought as the plaintiff’s and believing that there is some
7. Flag or coat of arms or insignia of the Philippines or its poor quality reflects badly connection between the
of any foreign nation; on the plaintiff’s reputation. plaintiff and defendant which,
8. Identical with a registered mark belonging to a in fact, does not exist.
different proprietor or a mark with an earlier filing
or priority date, in respect of: src TESTS
a) The Same goods or services; or DOMINANCY TEST HOLLISTIC TEST
b) Closely related goods or services; or Focuses on the similarity of Requires that the entirety of
c) If it nearly Resembles such a mark as to likely the prevalent features of the the marks in question be
to deceive or cause confusion. competing trademarks which considered in resolving
9. Name, portrait or signature identifying a particular might cause confusion or confusing similarity.
living individual, except by his written consent, or deception, and thus
that of a deceased president, during the life of his infringement.
widow, if any, except by written consent of the
widow. If the competing trademark
contains the main, essential
Doctrine of SECONDARY MEANING - A generic or or dominant features of
descriptive mark may later acquire the character of another, and confusion or
distinctiveness and can later be registered if it acquires a deception is likely to
meaning which is different from its ordinary connotation. result, infringement takes
For this to happen, there must be exclusive and place.
continuous use for a period of at least 5
years. In the Philippines, dominancy test is the controlling
test.
Generic terms may also be registered as trademarks
if they are used in an arbitrary or fanciful AURAL EFFECTS/IDEM SONANS RULE - in relation to
manner. dominancy test, the aural effects of the words and letters
contained in the marks should be considered in with the IPO where the total damages claimed are
determining the issue of confusing similarity. not less than P200,000.
INFRINGEMENT OF UNFAIR COMPETITION Novel - must not form part of a prior art.
TRADEMARK Prior art - (1) made available to the public
There is unauthorized use of Involves passing off of one’s anywhere in the world before the filing date or
trademark. goods as those of another. priority date; (2) forms part of an application
Not necessary to establish Necessary to establish whether for patent, utility model or industrial
fraudulent intent. fraudulent intent. design, effective in the Phil.
Registration of trademark is Registration of trademark is
necessary for the filing of an not necessary for the filing of Industrial applicability - invention that can be
action. an action. produced and used in any industry.
Limited. Broader in scope.
Same class of goods or Different classes of goods or PURPOSES OF PATENT LAW: FPE
services must be involved. services may be involved. 1. Foster and reward invention;
2. Promote disclosure of invention;
INTER PARTES TRADEMARK CASES 3. Ensure that ideas in the public domain remain there
1. Opposition against the registration of a mark; for the free use of the public.
2. Petition to cancel the registration of a mark.
Classes of Patentable Inventions: UPP-IMN
Opposition to application for registration: 1. Useful machine
Ground: Registration will damage oppositor. 2. Product
Venue: IPO 3. Process
Period to File: Within 30 days after publication. 4. Improvement of 1, 2, and 3
5. Microorganism
Cancellation 6. Non-biological and microbiological process
Ground: Mark is confusingly similar.
Venue: IPO Non-Patentable Inventions: DST-P-CAD
Period to File: Within 5 years from date of 1. Discoveries, scientific theories, mathematical
registration. method;
2. Schemes, rules, and methods of performing mental
Cancellation acts, playing games, or doing business, and
Grounds: GAU programs for computer;
1. Mark becomes Generic or descriptive; 3. Treatment methods of the human body or animal
2. Abandonment - failure to use it for an body by surgery or therapy, and diagnostic methods
uninterrupted period of 3 years. practiced on the human or animal body;
3. Mark is being Used to misrepresent the source 4. Plant varieties or animal breeds of essentially
of goods or services. biological process for the production of plants and
Venue: IPO animals;
Period to file: At any time. 5. Contrary to public order or morality;
6. Aesthetic creations (covered by copyright);
An administrative complaint for violations of laws 7. Drugs and medicines stated in the instances above-
involving intellectual property rights can be filed mentioned.
Person entitled to the right: Doctrine of equivalents - infringement also takes
1. Inventor, his heirs or assigns; place when a device appropriates a prior invention
2. When Two or more persons have jointly made an by incorporating its innovative concept and,
invention, the right to a patent shall belong to them although with some modification or change, (1)
jointly; performs substantially the same function (2) in
3. FIRST TO FILE RULE - if 2 or more persons have substantially the same way (3) to achieve
made the invention separately and independently of substantially the same result.
each other, the right to the patent shall belong to It requires the satisfaction of the function-
the person who first filed an application for means-and-result test.
such invention.
COMPULSORY LICENSING of PATENT
If the applicant is not the inventor, the IPO shall It is a license issued by the Director General of the IPO to
require the applicant to submit the inventor’s exploit a patented invention without the permission
authority. of the patent holder, either by manufacture or thru
parallel importation.
PREJUDICIAL DISCLOSURE - Whatever right one has Grounds: NP-ND-JP
to the invention covered by the patent arises alone from 1. National emergency or extreme urgency;
the application date. 2. Public interest, as determined by the
Thus, if the inventor voluntarily discloses it, government, so requires;
such as by offering it for sale, the world is free to 3. Non-work in a commercial scale in the
copy and use it with impunity. Philippines of the patented invention
Ideas, once disclosed to the public without the (importation of patented article shall constitute
protection of a valid patent, are subject to working or using the patent);
appropriation without significant restraint. 4. Demand for patented drugs and meds is not
being met to an adequate extent and on
NON-PREJUDICIAL DISCLOSURE - Any disclosure of reasonable terms;
the invention made within 12 months before the filing 5. Judicial or administrative body has determined
date does not prejudice the application if the disclosure is that the manner of exploitation of patent
made by: owner is anti-competitive;
1. Inventor himself; or 6. Public non-commercial use of patent by
2. Patent office, when information of the latter was patentee, without satisfactory reason.
contained:
a) in another application filed by the inventor that Time when application for compulsory license
should not have been disclosed by the office; CANNOT be applied: before the expiration of a period
b) in a third person’s application filed without the of 4 years from date of filing, or 3 years from date of
knowledge or consent of the inventor and the patent, whichever period expires last.
third person obtained the information directly
from inventor; or TRADE SECRETS
3. Third party - such party obtained the information It is a plan or process, mechanism, tool, or compound
directly or indirectly from the inventor. known only to its owner and those of his employees to
whom it is necessary to confide it.
TERM OF PATENT - 20 years from the filing date of It is protected even if it is not patentable. It is
application. covered by the proprietary rights of the owner and
he cannot be compelled to disclose its trade secret.
PATENT INFRINGEMENT Courts cannot issue an injunction to compel such
It is the making, using, selling, offering for sale, or disclosure.
importing musoi a patented product, or the use of
a patented process without the authorization of Ingredients of consumer products are not trade
the patentee. secrets. They should be indicated in the label under
Sec. 77 of the Consumer Act.
Steps in determining presence of Consumer products are primarily for personal,
infringement: family, household or agricultural purposes.
1. Determine if there is literal infringement. If
there is, defendant is liable.
2. If there is none, apply doctrine of
equivalents.