2011 Ip Code Outline - Feu Commercial Law Review

8/2/2019 2011 Ip Code Outline - Feu Commercial Law Review

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FEU INSTITUTEOF LAW

COMMERCIAL LAW REVIEW ATTY. ALEXANDER C. DYINTELLECTUAL PROPERTY CODE 3RD TRIMESTER, SY 2011-2012

I. PATENTS

A. SUBJECT MATTEROF PROTECTION

1. Patentable Inventions Sec. 21: Any technical solution of a problem inany field of human activity which is: (a) new; (b) involves an inventivestep; and (c) is industrially applicable shall be patentable. It may be, ormay relate to:

a. machine;

b. product;

c. process;

d. an improvement of any of the foregoing;

e. Sec. 22.4: micro-organisms; or

f. non-biological and microbiological processes

2. Non-Patentable Inventions Sec. 22: The following shall be excludedfrom patent protection:

a. Sec. 22.1: Discoveries, scientific theories and mathematical methods;

b. Sec. 22.2: Schemes, rules and methods of performing mental acts,playing games or doing business, and programs for computers;

c. Sec. 22.3: Methods for treatment of human or animal body by surgeryor therapy and diagnostic methods practiced on human or animalbody. This provision shall not apply to products and composition foruse in any of these methods;

d. Sec. 22.4: Plant varieties or animal breeds or essentially biologicalprocess for the production of plants or animals;1

e. Sec. 22.5: Aesthetic creations; andf. Sec. 22.6: Anything which is contrary to public order or morality.

1 Section 22.4 further provides that: Provisions under this subsection shall not precludeCongress to consider the enactment of a law providing sui generis of plant varieties and animalbreeds and a system of community intellectual rights protection


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B. CONDITIONSOF PROTECTION

1. Substantive Requirements

a. Sec. 23: Novelty An invention shall not be considered new if it formspart of a prior art.

i. Sec. 24: Prior Art Prior art shall consist of:

(a) Sec. 24.1: Everything made available to public anywhere in theworld, before filing date or priority date of application claiminginvention; and

(b) Sec. 24.2: Whole contents of application for patent, utilitymodel, or industrial design registration, published in accordancewith IP Code, filed or effective in Philippines, with filing orpriority date earlier than filing or priority date of application:Provided, That application which has validly claimed filing dateof earlier application under Sec. 31, shall be prior art with effectas of filing date of such earlier application: Provided further,That applicant or inventor identified in both applications are notone and same.

ii. Sec. 25.1:Non-Prejudicial Disclosure Disclosure of informationcontained in application during the 12 months preceding filing dateor priority date of application shall not prejudice applicant on groundof lack of novelty if such disclosure was made by:

(a) Inventor;2

(b) Patent office and information was contained (a) in another

application filed by inventor and should not have beendisclosed by the office, or (b) in application filed withoutknowledge or consent of inventor by third party whichobtained information directly or indirectly from inventor; or

(c) Third party which obtained information directly or indirectlyfrom inventor.

b. Sec. 26: Inventive Step Invention involves inventive step if, havingregard to prior art, it is not obvious to person skilled in art at time offiling date or priority date of application claiming invention.

c. Sec. 27: Industrial Applicability Invention that can be produced

and used in any industry shall be industrially applicable.

2. Formal Requirements/Procedure for Application and Grant of Patent

a. Patent Application Secs. 32 to 39

2 Sec. 25.2 provides that, For the purposes of Subsection 25.1, "inventor" also means anyperson who, at the filing date of application, had the right to the patent.

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b. Procedure After Application:

i. Sec. 40: Filing Date Requirements

ii. Sec. 41: According a Filing Date

iii. Sec. 42: Formality Examination

iv. Sec. 43: Classification and Search

c. Publication and Procedure After Application:

i. Sec. 44: Publication of Patent Application

ii. Sec. 45: Confidentiality Before Publication

iii. Sec. 46: Rights Conferred by a Patent Application After Publication

iv. Sec. 47: Observation by Third Parties

v. Sec. 48: Request for Substantive Examination

vi. Sec. 49: Amendment of Application

d. Grant of Patent

i. Sec. 50: Grant of Patent

ii. Sec. 51: Refusal of the Application

iii. Sec. 52: Publication Upon Grant of Patent

iv. Sec. 53: Contents of Patent

e. Requirements/Actions After Grant

i. Sec. 55: Annual Fees

ii. Sec. 56: Surrender of Patentiii. Sec. 57: Correction of Mistakes of the Office

iv. Sec. 58: Correction of Mistake in the Application

v. Sec. 59: Changes in Patents

vi. Sec. 60: Form and Publication of Amendment

C. OWNERSHIP

1. The Inventor Sec. 28. Right to patent belongs to inventor, his heirs, or

assigns.2. Joint Invention Sec. 28: For inventions jointly made by 2 or more

persons right to patent shall belong to them jointly

3. Inventions Made for Hire

a. Sec. 30.1: Person who commissions work shall own patent, unlesscontrary agreement.

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b. Sec. 30.2: For employee who made invention in course of hisemployment contract, patent shall belong to:

i. Employee, if inventive activity is not part of his regular duties even ifemployee uses time, facilities and materials of employer.

ii. Employer, if invention is result of performance of his regularly-assigned duties, unless contrary agreement, express or implied.

4. Sec. 29: First to File Rule If 2 or more persons have made inventionseparately and independently of each other, right to patent shall belong toperson who filed an application for such invention, or where 2 or moreapplications are filed for same invention, to applicant who has earliestfiling date or earliest priority date.

5. Sec. 31: Right of Priority Application for patent filed by any person whopreviously applied for same invention in another country which by treaty,convention, or law affords similar privileges to Filipino citizens, shall beconsidered as filed as of the date of filing foreign application: Provided:

a. Local application expressly claims priority;

b. It is filed within 12 months from date earliest foreign application wasfiled; and

c.. Certified copy of foreign application together with English translation isfiled within 6 months from date of filing in Philippines.

D. TRANSFEROF OWNERSHIP

1. Sec. 103: Transmission of Rights in General

a. Sec. 103.1: Patents or applications for patents and invention to whichthey relate, shall be protected in same way as rights of other propertyunder Civil Code.

b. Sec. 103.2. Inventions and any right, title or interest in and to patentsand inventions covered thereby, may be assigned or transmitted byinheritance or bequest or may be subject of license contract.

c. Sec. 107: Rights of Joint Owners If 2 or more persons jointly ownpatent and invention covered thereby, either by issuance of patent intheir joint favor or by reason of assignment of an undivided share inpatent and invention or by reason of the succession in title to such

share, each of joint owners shall be entitled to personally make, use,sell, or import invention for his own profit: Provided, however, Thatneither of joint owners shall be entitled to grant licenses or to assignhis right, title or interest or part thereof without consent of otherowners, or without proportionally dividing proceeds with such otherowners.

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d. Sec. 106: Recording

i. Sec. 106.1: IPO record assignments, licenses and otherinstruments relating to transmission of right, title or interest in andto inventions, and patents or application for patents or inventions towhich they relate.

ii. Sec. 106.2: Such instruments shall be void as against anysubsequent purchaser or mortgagee for valuable consideration andwithout notice, unless, it is so recorded in IPO, within 3 monthsfrom date of said instrument, or prior to subsequent purchase ormortgage.

2. Assignment

a. Sec. 104: Assignment may be of entire right, title or interest in and topatent and invention covered thereby, or of an undivided share thereof,in which event parties become joint owners thereof. An assignmentmay be limited to specified territory.

b. Sec. 105: Form of Assignment

3. Voluntary Licensing

a. Sec. 85: Voluntary License Contract To encourage transfer anddissemination of technology, prevent or control practices andconditions that may in particular cases constitute abuse of intellectualproperty rights having adverse effect on competition and trade, alltechnology transfer arrangements shall comply with the provisions ofthis Chapter.

b. Sec. 86: Jurisdiction to Settle Disputes on Royalties Director of

the Documentation, Information and Technology Transfer Bureau

c. Sec. 87. Prohibited Clauses - Except in cases under Sec. 91(Exceptional Cases), the provisions enumerated in Sec. 87 shall bedeemedprima facie to have adverse effect on competition and trade.3

3 Sec. 87 enumerates the prohibited clauses, as follows:87.1. 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 permanentlyemploying personnel indicated by the licensor;

87.2. Those pursuant to which the licensor reserves the right to fix the sale or resale prices ofthe products manufactured on the basis of the license;

87.3. Those that contain restrictions regarding the volume and structure of production;

87.4 Those that prohibit the use of competitive technologies in a non-exclusive technologytransfer agreement;

87.5. Those that establish a full or partial purchase option in favor of the licensor;87.6. Those that obligate the licensee to transfer for free to the licensor the inventions or

improvements that may be obtained through the use of the licensed technology;87.7. Those that require payment of royalties to the owners of patents for patents which are not

used;87.8. Those that prohibit the licensee to export the licensed product unless justified for the

protection of the legitimate interest of the licensor such as exports to countries where exclusivelicenses to manufacture and/or distribute the licensed product(s) have already been granted;

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d. Sec. 88: Mandatory Provisions The provisions enumerated in Sec.88 shall be included in voluntary license contracts.4

e. Sec. 89: Rights of Licensor In absence of contrary provision, grantof license shall not prevent licensor from granting further licenses tothird person nor from exploiting subject matter of technology transfer

arrangement himself.

f. Sec. 90: Rights of Licensee Licensee entitled to exploit subjectmatter of technology transfer arrangement during whole term thereof.

g. Sec. 92: Non-Registration with the Documentation, Informationand Technology Transfer Bureau Technology transferarrangements that conform with provisions of Secs. 86 and 87 neednot be registered.

h. Sec. 92: Effect of Violation Non-conformance with any of provisionsof Secs. 87 and 88, however, shall automatically render technologytransfer arrangement unenforceable, unless approved and registeredunder provisions of Sec. 91 on exceptional cases.

E. SCOPEOF EXCLUSIVE RIGHTS

87.9. Those which restrict the use of the technology supplied after the expiration of thetechnology transfer arrangement, except in cases of early termination of the technology transferarrangement due to reason(s) attributable to the licensee;

87.10. Those which require payments for patents and other industrial property rights after theirexpiration, termination arrangement;

87.11. Those which require that the technology recipient shall not contest the validity of any ofthe patents of the technology supplier;

87.12. Those which restrict the research and development activities of the licensee designed toabsorb and adapt the transferred technology to local conditions or to initiate research anddevelopment programs in connection with new products, processes or equipment;

87.13. Those which prevent the licensee from adapting the imported technology to localconditions, or introducing innovation to it, as long as it does not impair the quality standardsprescribed by the licensor;

87.14. Those which exempt the licensor for liability for non-fulfillment of his responsibilitiesunder the technology transfer arrangement and/or liability arising from third party suits broughtabout by the use of the licensed product or the licensed technology; and

87.15. Other clauses with equivalent effects.4 Sec. 88 enumerates the mandatory clauses, as follows:88.1. That the laws of the Philippines shall govern the interpretation of the same and in the

event of litigation, the venue shall be the proper court in the place where the licensee has its

principal office;88.2. Continued access to improvements in techniques and processes related to the

technology shall be made available during the period of the technology transfer arrangement;88.3. In the event the technology transfer arrangement shall provide for arbitration, the

Procedure of Arbitration of the Arbitration Law of the Philippines or the Arbitration Rules of theUnited Nations Commission on International Trade Law (UNCITRAL) or the Rules of Conciliationand Arbitration of the International Chamber of Commerce (ICC) shall apply and the venue ofarbitration shall be the Philippines or any neutral country; and

88.4. The Philippine taxes on all payments relating to the technology transfer arrangement shallbe borne by the licensor.

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1. Sec. 71: Rights Conferred by Patent

a. Sec. 71.1: Exclusive rights:

i. If subject matter is a product To restrain, prohibit and prevent anyunauthorized person or entity from making, using, offering for sale,

selling or importing that product;ii. If subject matter is a process To restrain, prevent or prohibit any

unauthorized person or entity from using the process, and frommanufacturing, dealing in, using, selling or offering for sale, orimporting any product obtained directly or indirectly from suchprocess.

b. Sec. 71.2: To assign, or transfer by succession the patent, and toconclude licensing contracts for the same.

2. Sec. 75: Extent of Protection and Interpretation of Claims

a. Sec. 75.1: Extent of protection conferred by patent shall be determined

by claims, which are to be interpreted in light of description anddrawings.

b. Sec. 75.2: For purpose of determining extent of protection conferredby patent, due account shall be taken of elements which are equivalentto elements expressed in claims, so that claim shall be considered tocover not only all elements as expressed therein, but also equivalents.See Doctrine of Equivalents, infra.

3. Sec. 46: Rights Conferred by Patent Application After Publication Applicant shall have all rights of patentee under Sec. 76 against anyperson who, without his authorization, exercised any of rights conferred

under Sec. 71 in relation to invention claimed in published patentapplication, as if patent had been granted for that invention: Provided,That said person had:

a. Sec. 46.1: Actual knowledge that invention that he was using wassubject matter of published application; or

b. Sec. 46.2: Received written notice that invention that he was usingwas subject matter of published application being identified in saidnotice by its serial number: Provided, That action may not be filed untilafter grant of patent on published application and within 4 years fromcommission of acts complained of.

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F. LIMITATIONOR EXEMPTIONSTO SCOPEOF PATENT PROTECTION

1. Limitation of Patent Rights Sec. 72: Owner of patent has no right toprevent third parties from performing, without his authorization, actsreferred to in Sec. 71 hereof in following circumstances:

a. Sec. 72.1: Using patented product put on the market in Philippines byowner of product, or with his express consent, insofar as such use isperformed after product has been so put on said market;

b. Sec. 72.2: Act is done privately and on a non-commercial scale or for anon-commercial purpose: Provided, That it does not significantlyprejudice the economic interests of owner of patent;

c. Sec. 72.3: Act consists of making or using exclusively for purpose ofexperiments that relate to subject matter of patented invention;

d. Sec. 72.4: Act consists of preparation for individual cases, in pharmacyor by medical professional, of medicine in accordance with medicalprescription or acts concerning the medicine so prepared;

e. Sec. 72.5: Invention is used in any ship, vessel, aircraft, or land vehicleof any other country entering the territory of Philippines temporarily oraccidentally: Provided, That such invention is used exclusively forneeds of ship, vessel, aircraft, or land vehicle and not used formanufacturing of anything to be sold within Philippines.

2. Prior User Sec. 73

a. Sec. 73.1: Notwithstanding Sec. 72, any prior user, who, in good faithwas using invention or has undertaken serious preparations to use

invention in his enterprise or business, before filing date or priority dateof application on which a patent is granted, shall have right to continueuse thereof as envisaged in such preparations within territory wherepatent produces its effect.

b. Sec. 73.2: Right of prior user may only be transferred or assignedtogether with his enterprise or business, or with part of his enterprise orbusiness in which use or preparations for use have been made.

3. Use of Invention by Government5 Sec. 74.1: Government agency orthird person authorized by Government may exploit invention even withoutagreement of patent owner where:

a. Public interest, in particular, national security, nutrition, health ordevelopment of other sectors, as determined by appropriate agency ofthe government, so requires; or

b. Judicial or administrative body has determined that manner ofexploitation, by owner of patent or his licensee, is anti-competitive.

5 Sec. 74.2 provides that, The use by the Government, or third person authorized by theGovernment shall be subject, mutatis mutandis, to the conditions set forth in Sections 95 to 97 and100 to 102.

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4. Compulsory Licensing

a. Sec. 93: Grounds for Compulsory Licensing License to exploitpatented invention, even without agreement of patent owner, in favorof any person who has shown his capability to exploit invention, underany of following circumstances:

i. Sec. 93.1: National emergency or other circumstances of extremeurgency;

ii. Sec. 93.2: Public interest, in particular, national security, nutrition,health or development of other vital sectors of national economy asdetermined by appropriate agency of Government, so requires; or

iii. Sec. 93.3: Judicial or administrative body has determined thatmanner of exploitation by owner of patent or his licensee is anti-competitive; or

iv. Sec. 93.4: In case of public non-commercial use of patent by

patentee, without satisfactory reason;v. Sec. 93.5: If patented invention is not being worked in Philippines

on commercial scale, although capable of being worked, withoutsatisfactory reason: Provided, That importation of patented articleshall constitute working or using patent.

b. Sec. 94: Period for Filing Petition for Compulsory License

c. Sec. 95: Requirement to Obtain License on ReasonableCommercial Terms

i. Sec. 95.1: License will only be granted after petitioner has madeefforts to obtain authorization from patent owner on reasonablecommercial terms and conditions but such efforts have not beensuccessful within reasonable period of time.

ii. Sec. 95.2: Requirement under Sec. 95.1 shall not apply:

(a) Where petition for compulsory license seeks to remedy practicedetermined after judicial or administrative process to be anti-competitive;

(b) In situations of national emergency or other circumstances ofextreme urgency Sec. 95.3: Right holder shall be notified assoon as reasonably practicable

(c) In cases of public non-commercial use Sec. 95.4: Right holdershall be informed promptly

d. Sec. 96: Compulsory Licensing of Patents Involving Semi-ConductorTechnology.

e. Sec. 97: Interdependence If invention protected by patent ("secondpatent") within country cannot be worked without infringing anotherpatent ("first patent") granted on prior application or benefiting from

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earlier priority, compulsory license may be granted to owner of secondpatent to extent necessary for working of his invention, subject tofollowing:

i. Sec. 97.1: Invention claimed in second patent involves importanttechnical advance of considerable economic significance in relation

to first patent;

ii. Sec. 97.2: Owner of first patent entitled to a cross-license onreasonable terms to use invention claimed in second patent;

iii. Sec. 97.3: Use authorized in respect of first patent shall be non-assignable except with assignment of second patent; and

iv. Sec. 97.4: Terms and conditions of Secs. 95, 96 and 98 to 100.

f. Sec. 98: Form and Contents of Petition

g. Sec. 99: Notice of Hearing

h. Sec. 100: Terms and Conditions of Compulsory License i. Sec. 100.1: Scope and duration of such license limited to purpose

for which it was authorized;

ii. Sec. 100.2: License shall be non-exclusive;

iii. Sec. 100.3: License shall be non-assignable, except with part ofenterprise or business with which invention is being exploited;

iv. Sec. 100.4: Use of subject matter of license devoted predominantlyfor supply of Philippine market: Provided, That limitation shall notapply where grant of license is based on ground that patenteesmanner of exploiting patent is determined by judicial or

administrative process to be anti-competitive.

v. Sec. 100.5: License may be terminated upon proper showing thatcircumstances which led to its grant have ceased to exist and areunlikely to recur: Provided, That adequate protection shall beafforded to legitimate interest of licensee; and

vi. Sec. 100.6: Patentee shall be paid adequate remuneration takinginto account the economic value of grant or authorization, exceptthat in cases where license was granted to remedy practice whichwas determined after judicial or administrative process, to be anti-competitive, need to correct the anti-competitive practice may be

taken into account in fixing the amount of remuneration.

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i. Sec. 101: Amendment, Cancellation, Surrender of CompulsoryLicense.

i. Sec. 101.1: Upon request of patentee or licensee, Director of Legal Affairs may amend decision granting compulsory license, uponproper showing of new facts or circumstances justifying such

amendment.

ii. Sec. 101.2: Upon request of patentee, Director may cancelcompulsory license:

(a) If ground for grant of compulsory license no longer exists and isunlikely to recur;

(b) If licensee has neither begun to supply domestic market normade serious preparation therefor;

(c) If licensee has not complied with prescribed terms of license.

iii. Sec. 101.3: Licensee may surrender license by a written

declaration submitted to the IPO.

iv. Sec. 101.4: Director shall cause amendment, surrender, orcancellation in Register, notify patentee, and/or licensee, and causenotice thereof to be published in IPO Gazette.

j. Sec. 102: Licensees Exemption from Liability Any person whoworks patented product, substance and/or process under licensegranted under this Chapter, shall be free from any liability forinfringement: Provided however, That in case of voluntary licensing, nocollusion with licensor is proven. This is without prejudice to right ofrightful owner of patent to recover from licensor whatever he may have

received as royalties under license.

G. DURATIONOF PROTECTION

1. Sec. 54: Term of Patent 20 years from filing date of application.

H. INFRINGEMENTAND REMEDIES

1. Sec. 76 Civil Action for Infringement.

a. Definition:

i. Sec. 76.1: Making, using, offering for sale, selling, or importingpatented product or product obtained directly or indirectly frompatented process, or use of patented process without authorizationof patentee constitutes patent infringement.

b. Tests to Determine Infringement:

i. Literal Infringement If challenged matter clearly falls within claim(resort is made to words of claim), literal infringement exists.

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ii. Doctrine of Equivalents When device appropriates priorinvention by incorporating innovative concept and, despite somemodification and change, performs substantially same function insubstantially same way to achieve substantially same result.

c. Jurisdiction with Regular Courts Sec. 76.2

d. Who May Bring Suit

i. Sec. 76.2: Any patentee, or anyone possessing any right, title orinterest in and to patented invention, whose rights have beeninfringed, may bring civil action before court of competent

jurisdiction, to recover from infringer such damages sustainedthereby, plus attorneys fees and other expenses of litigation, and tosecure an injunction for protection of his rights.

ii. Sec. 77: Infringement Action by a Foreign National Any foreignnational or juridical entity who meets requirements of Sec. 3 andnot engaged in business in Philippines, to which patent has beengranted or assigned under IP Code, may bring an action forinfringement of patent, whether or not it is licensed to do businessin Philippines under existing law.

e. Who May Be Held Liable

i. Sec. 76.2: Infringer

ii. Sec. 76.6: Anyone who actively induces infringement of patent orprovides infringer with component of patented product or of productproduced because of patented process knowing it to be especiallyadopted for infringing patented invention and not suitable for

substantial non-infringing use shall be liable as contributoryinfringer and shall be jointly and severally liable with infringer.

f. Defenses Sec. 81: Defendant, in addition to other defensesavailable to him, may show the invalidity of patent, or any claimthereof, on any of grounds on which petition of cancellation can bebrought under Sec. 61 hereof.

g. Presumptions Sec. 78: If subject matter of patent is process forobtaining product, any identical product shall be presumed to havebeen obtained through use of patented process if product is new orthere is substantial likelihood that identical product was made byprocess and owner of patent has been unable despite reasonableefforts, to determine process actually used. In ordering defendant toprove that process to obtain identical product is different from patentedprocess, court shall adopt measures to protect, as far as practicable,his manufacturing and business secrets.

h. Assessor in Infringement Action Sec. 83

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i. Reliefs Granted

i. Damages

(a) Sec. 76.3: If damages are inadequate or cannot be readilyascertained with reasonable certainty, court may award by way

of damages sum equivalent to reasonable royalty.(b) Sec. 76.4: Court may, according to circumstances of case,

award damages in sum above amount found as actual damagessustained: Provided, That award does not exceed 3 timesamount of such actual damages.

(c) Sec. 80:Damages cannot be recovered for acts of infringementcommitted before infringer had known; or had reasonablegrounds to know of patent. It is presumed that infringer hadknown of patent if on patented product, or on container orpackage in which article is supplied to public, or on advertisingmaterial relating to patented product or process, are placedwords "Philippine Patent"with number of patent.

ii. Injunction Sec. 76.2

iii. Destruction of Infringing Materials Sec. 76.5: Court may, in itsdiscretion, order that infringing goods, materials and implementspredominantly used in infringement be disposed of outsidechannels of commerce or destroyed, without compensation.

iv. Patent Found Invalid May be Cancelled Sec. 82: In action forinfringement, if court shall find patent or any claim to be invalid, itshall cancel the same, and Director of Legal Affairs upon receipt of

final judgment of cancellation by court, shall record that fact inregister of IPO and publish notice to that effect in IPO Gazette.

j. Prescription Sec. 79: No damages can be recovered for acts ofinfringement committed more than 4 years before institution of actionfor infringement.

2. Sec. 84 Criminal Action for Repetition of Infringement: Ifinfringement is repeated by infringer or by anyone in connivance with himafter finality of judgment of court against infringer, offenders shall, withoutprejudice to institution of civil action for damages, be criminally liabletherefor and, upon conviction, shall suffer imprisonment for period of notless than 6 months but not more than 3 years and/or fine of not less thanP100,000 but not more than P300,000, at discretion of court. Criminalaction herein provided shall prescribe in 3 years from date of commissionof crime.

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3. Sec. 61 Cancellation of Patents

a. Grounds Sec. 61.1:6 Any interested person may, upon payment ofrequired fee, petition to cancel patent or any claim thereof, or parts ofthe claim, on any of following grounds:

i. What is claimed as invention is not new or patentable;ii. Patent does not disclose invention in manner sufficiently clear and

complete for it to be carried out by any person skilled in the art; or

iii. Patent is contrary to public order or morality.

b. Procedure:

i. Sec. 62. Requirement of the Petition.

ii. Sec. 63. Notice of Hearing.

iii. Sec. 64. Committee of Three.

iv. Sec. 65. Cancellation of the Patent.

v. Sec. 66. Effect of Cancellation of Patent or Claim.

4. Remedies of Person with Right to Patent

a. Sec. 67.1:7 If a person referred to in Sec. 29 other than applicant, isdeclared by final court order or decision as having right to patent, suchperson may, within 3 months after decision has become final:

i. Prosecute application as his own application in place of applicant;

ii. File new patent application in respect of same invention;

iii. Request that application be refused; or

iv. Seek cancellation of patent, if one has already been issued.

b. Sec. 68: If person, who was deprived of patent without his consent orthrough fraud is declared by final court order or decision to be true andactual inventor, court shall order for his substitution as patentee, or atoption of true inventor, cancel patent, and award actual and otherdamages in his favor if warranted by circumstances.

c. Sec. 70: Actions indicated in Secs. 67 and 68 shall be filed within 1year from date of publication made in accordance with Secs. 44 and51, respectively.

d. Sec. 69: Court shall furnish IPO a copy of order or decision referred toin Secs. 67 and 68, which shall be published in IPO Gazette within 3months from date such order or decision became final and executory,and shall be recorded in register of IPO.

6 Sec. 61.2 provides that, Where the grounds for cancellation relate to some of the claims orparts of the claim, cancellation may be effected to such extent only.

7 Sec. 67.2 provides that, The provisions of Sec. 38.2 shall apply mutatis mutandis to a newapplication filed under Sec. 67.1(b).

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II. UTILITY MODELS

A. APPLICABILITYOF PROVISIONS RELATINGTO PATENTS

1. Sec 108.1: Subject to Sec. 109, provisions governing patents shall apply,mutatis mutandis, to registration of utility models.

2. Sec. 108.2: Where right to patent conflicts with right to utility modelregistration in case referred to in Sec. 29, said provision shall apply as ifword patent were replaced by words "patent or utility model registration."

B. SUBJECT MATTEROF PROTECTION

1. Sec. 109.1(a): An invention qualifies for registration as a utility model if it

is: (a) new; and (b) industrially applicable.

C. CONDITIONSOF PROTECTION

1. Substantive Requirements Sec. 109.1(b): Sec. 21, "PatentableInventions", shall apply except reference to inventive step as condition ofprotection.

2. Formal Requirements Sec. 109.2: Secs. 43 to 49 shall not apply incase of applications for registration of utility model.

D. DURATIONOF PROTECTION

1. Sec. 109.3: Utility model registration shall expire, without any possibility ofrenewal, at end of 7th year after date of filing of application.

E. CANCELLATIONOF REGISTRATION

1. Sec. 109.4: In proceedings under Secs. 61 to 64, utility model registrationshall be canceled on following grounds:

a. Claimed invention does not qualify for registration as utility model anddoes not meet requirements of registrability, in particular having regard

to Secs. 109.1 and Ses. 22, 23, 24 and 27;b. Description and claims do not comply with prescribed requirements;

c. Any drawing which is necessary for understanding of invention has notbeen furnished;

d. Owner of utility model registration is not inventor or his successor intitle.

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F. CONVERSIONOF APPLICATIONS

1. Sec. 110.1: At any time before grant or refusal of patent, applicant forpatent may, upon payment of prescribed fee, convert his application intoapplication for registration of utility model, which shall be accorded filing

date of initial application. Application may be converted only once.2. Sec. 110.2: At any time before grant or refusal of utility model registration,

applicant for utility model registration may, upon payment of prescribedfee, convert his application into patent application, which shall beaccorded filing date of initial application.

G. PROHIBITIONS AGAINST FILING PARALLEL APPLICATIONS

1. Sec. 111:Applicant may not file 2 applications for same subject, one forutility model registration and other for grant of patent whethersimultaneously or consecutively.

III. INDUSTRIAL DESIGNS

A. APPLICABILITYOF PROVISIONS RELATINGTO PATENTS

1. Sec. 119.1: Following provisions relating to patents shall apply mutatismutandis to industrial design registration.

a. Sec. 21 Novelty;

b. Sec. 24 Prior art: Provided, That disclosure is contained in printeddocuments or in any tangible form;

c. Sec, 25 Non Prejudicial Disclosure;

d. Sec. 28 Right to a Patent;

e. Sec. 29 First to File Rule;

f. Sec. 30 Inventions Created Pursuant to a Commission;

g. Sec. 31 Right of Priority: Provided, That application for industrialdesign shall be filed within 6 months from earliest filing date ofcorresponding foreign application;

h. Sec. 33 Appointment of Agent or Representative;

i. Sec. Refusal of the Application;

j. Secs. 56 to 60 Surrender, Correction of and Changes in Patent;

k. Chapter VII Remedies of a Person with a Right to Patent;

l. Chapter VIII Rights of Patentees and Infringement of Patents; and

m. Chapter XI Assignment and Transmission of Rights

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2. Sec. 119.3: Following provisions relating to patents shall apply mutatismutandis to layout-design of integrated circuits registration:

a. Sec. 28 Right to a Patent;

b. Sec. 29 First to File Rule;

c. Sec. 30 Inventions Created Pursuant to a Commission;

d. Sec. 33 Appointment of Agent or Representative;

e. Secs. 56 to 60 Surrender, Correction of and Changes in Patent;

f. Chapter VII Remedies of a Person with a Right to Patent;

g. Chapter VIII Rights of Patentees and Infringement of Patents;Provided, That layout-design rights and limitation of layout-designrights provided hereunder shall govern:

h. Chapter X - Compulsory Licensing; and

i. Chapter XI Assignment and Transmission of Rights

B. SUBJECT MATTEROF PROTECTION

1. Sec. 112(1): Industrial Designis any composition of lines or colors or anythree-dimensional form, whether or not associated with lines or colors:Provided, That such composition or form gives a special appearance toand can serve as pattern for an industrial product or handicraft;

2. Sec. 112(2): Integrated Circuitmeans a product, in its final form, or anintermediate form, in which the elements, at least one of which is an activeelement and some or all of the interconnections are integrally formed in

and/or on a piece of material, and which is intended to perform anelectronic function; and

3. Sec. 112(3): Layout-Designis synonymous with 'Topography'and meansthe three-dimensional disposition, however expressed, of the elements, atleast one of which is an active element, and of some or all of theinterconnections of an integrated circuit, or such a three-dimensionaldisposition prepared for an integrated circuit intended for manufacture.

4. What is Not Protected Sec. 113.2: Industrial designs dictatedessentially by technical or functional considerations to obtain technicalresult or those contrary to public order, health or morals shall not be

protected.

C. CONDITIONSOF PROTECTION

1. Substantive Requirements Sec. 113.1: Only industrial designs thatare: (a) new; or (b) ornamental shall be protected under IP Code.

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a. Sec. 113.3: Only layout-designs of integrated circuits that are originalshall benefit from protection under this Act. Layout-design shall beconsidered original if it is result of its creator's own intellectual effortand is not commonplace among creators of layout-designs andmanufacturers of integrated circuits at time of its creation.

b. Sec. 113.4: Layout-design consisting of combination of elements andinterconnections that are commonplace shall be protected only ifcombination, taken as whole, is original.

2. Formal Requirements/Procedure for Application and Grant of ID

a. Application Secs. 114 to 115

b. Examination Sec. 116

c. Registration Sec. 117


1. Rights for Industrial Designs Sec. 119.1: Same as Patents

2. Rights Conferred to the Owner of a Layout-Design Registration Sec. 119.4: Owner of layout-design registration shall enjoy followingrights:

a. to reproduce, whether by incorporation in integrated circuit orotherwise, registered layout-design in its entirety or any part thereof,except act of reproducing any part that does not comply withrequirement of originality; and

b. to sell or otherwise distribute for commercial purposes registered

layout design, article or integrated circuit in which registered layout-design is incorporated.

F. LIMITATIONOR EXEMPTIONSTO SCOPEOF PROTECTION

1. Limitations of Industrial Design Rights Sec. 119.1: Same as Patent

2. Limitations of Layout Rights Sec. 119.5:Owner of layout design hasno right to prevent third parties from reproducing, selling or otherwisedistributing for commercial purposes registered layout-design in followingcircumstances:

a. Reproduction of registered layout-design for private purposes or for thesole purpose of evaluation, analysis, research or teaching;

b. Act is performed in respect of layout-design created on basis of suchanalysis or evaluation and which is itself original in meaning asprovided herein;

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c. Act is performed in respect of registered lay-out-design, or in respect ofintegrated circuit in which such layout-design is incorporated, that hasbeen put on market by or with consent of right holder;

d. In respect of integrated circuit where person performing or orderingsuch an act did not know and had no reasonable ground to know when

acquiring integrated circuit or the article incorporating such integratedcircuit, that it incorporated an unlawfully reproduced layout-design:Provided, however, That after time that such person has receivedsufficient notice that layout-design was unlawfully reproduced, thatperson may perform any of said acts only with respect to stock onhand or ordered before such time and shall be liable to pay to rightholder a sum equivalent to at least 5% of net sales or such otherreasonable royalty as would be payable under freely negotiated licensein respect of such layout-design; or

e. Act is performed in respect of identical layout-design which is originaland has been created independently by third party.

3. Sec. 119.2: If essential elements of industrial design which is subject ofapplication have been obtained from creation of another person withouthis consent, protection under this Chapter cannot be invoked againstinjured party.

D. DURATIONOF PROTECTION

1. Sec. 118.1: Registration of industrial design shall be for period of 5 yearsfrom filing date of application, subject to renewal for not more than 2consecutive periods of 5 years each.

2. Sec. 118.5: Registration of layout-design shall be valid for period of 10years, without renewal, and such validity to be counted from tdate ofcommencement of protection accorded to layout-design.

E. CANCELLATIONOF REGISTRATION

1. Sec. 120.1: Cancellation of Design Registration8 At any time duringterm of industrial design registration, any person upon payment ofrequired fee, may petition Director of Legal Affairs to cancel industrialdesign on any of following grounds:

a. If subject matter of industrial design is not registerable within terms ofSecs. 112 and 113;

b. If subject matter is not new; or

8 Sec. 120.2 provides that, Where the grounds for cancellation relate to a part of the industrialdesign, cancellation may be effected to such extent only. The restriction may be effected in theform of an alteration of the effected features of the design.

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c. If subject matter of industrial design extends beyond content ofapplication as originally filed.

3. Sec. 120.3: Cancellation of Layout-Design of Integrated Circuits9Any interested person may petition that registration of layout-design becanceled on ground that:

a. Layout-design is not protectable under IP Code;

b. Right holder is not entitled to protection under IP Code; or

c. Application for registration of layout-design, was not filed within 2 yearsfrom its first commercial exploitation anywhere in the world.

IV. TRADEMARKS


1. Registrable Mark Sec. 121.1: Any visible sign capable of distinguishingthe goods (trademark) or services (service mark) of an enterprise andshall include a stamped or marked container of goods.

2. Non-Registrable Marks Sec. 123.1:10 A mark cannot be registered if it:

a. Consists of immoral, deceptive or scandalous matter, or matter whichmay disparage or falsely suggest connection with persons, living ordead, institutions, beliefs, or national symbols, or bring them intocontempt or disrepute;

b. Consists of flag or coat of arms or other insignia of the Philippines or

any of its political subdivisions, or of any foreign nation, or anysimulation thereof;

c. Consists of name, portrait or signature identifying a particular livingindividual except by his written consent, or name, signature, or portraitof deceased President of Philippines, during life of his widow, if any,except by written consent of widow;

d. Is identical with registered mark belonging to different proprietor ormark with an earlier filing or priority date, in respect of:

i. Same goods or services, or

ii. Closely related goods or services, or9 Sec. 120.3 further provides that, Where the grounds for cancellation are established with

respect only to a part of the layout-design, only the corresponding part of the registration shall becanceled. Any canceled layout-design registration or part thereof, shall be regarded as null andvoid from the beginning and may be expunged from the records of the Intellectual Property Office.Reference to all canceled layout-design registration shall be published in the IPO Gazette.10 Sec. 123.3. of the IP Code provides that:

123.3. The nature of the goods to which the mark is applied will not constitute an obstacleto registration.

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iii. If it nearly resembles such mark as to be likely to deceive or causeconfusion;

e. Is identical with, or confusingly similar to, or constitutes translation of amark which is considered by competent authority of Philippines to bewell-known internationally and in Philippines, whether or not it is

registered here, as being already the mark of person other thanapplicant for registration, and used for identical or similar goods orservices: Provided, That in determining whether mark is well-known,account shall be taken of knowledge of relevant sector of public, ratherthan of public at large, including knowledge in Philippines which hasbeen obtained as a result of promotion of mark;

f. Is identical with, or confusingly similar to, or constitutes translation ofmark considered well-known in accordance with preceding paragraph,which is registered in Philippines with respect to goods or serviceswhich are not similar to those with respect to which registration isapplied for: Provided, That use of mark in relation to those goods orservices would indicate connection between those goods or services,and owner of registered mark: Provided further, That interests of ownerof registered mark are likely to be damaged by such use;

g. Is likely to mislead public, particularly as to nature, quality,characteristics or geographical origin of goods or services;

h. Consists exclusively of signs that are generic for goods or services thatthey seek to identify;

i. Consists exclusively of signs or of indications that have becomecustomary or usual to designate the goods or services in everyday

language or in bona fide and established trade practice;j. Consists exclusively of signs or of indications that may serve in trade

to designate the kind, quality, quantity, intended purpose, value,geographical origin, time or production of goods or rendering ofservices, or other characteristics of goods or services;

k. Consists of shapes that may be necessitated by technical factors or bynature of goods themselves or factors that affect their intrinsic value;

l. Consists of color alone, unless defined by given form; or

m. Is contrary to public order or morality.

n. Is the emblem, official seal, or name of United Nations, whether in itsfull or abbreviated form.11

3. Secondary Meaning Sec. 123.2: As regards signs or devicesmentioned in paragraphs (j), (k), and (l), nothing shall prevent registrationof any such sign or device which has become distinctive in relation togoods for which registration is requested as result of use that have been

11 Sec. 1 of Republic Act No. 226.

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made of it in commerce in Philippines. IPO may accept as prima facieevidence that mark has become distinctive, as used in connection withapplicants goods or services in commerce, proof of substantially exclusiveand continuous use thereof by applicant in commerce in Philippines for 5years before date on which claim of distinctiveness is made.


1. Substantive Requirements: Registration Sec. 122: Rights in markacquired through registration made validly in accordance with IP Code.

Note: Actual prior use not condition for registration of trademark.

2. Formal Requirements/Procedure for Application

a. Trademark Application Secs. 124 to 130

b. Procedure Upon Application:

i. Sec. 132: Application Number and Filing Date

ii. Sec. 133: Examination and Publication

iii. Sec. 134: Opposition

iv. Sec. 135: Notice and Hearing

c. Registration of Trademark:

i. Sec. 136: Issuance and Publication of Certificate

ii. Sec. 137: Registration of Mark and Issuance of a Certificate to theOwner or his Assignee

iii. Sec. 138: Certificates of Registrationd. Actions After Registration:

i. Sec. 139: Publication of Registered Marks; Inspection of Register

ii. Sec. 140: Cancellation upon Application by Registrant; Amendmentor Disclaimer of Registration

iii. Sec. 141: Sealed and Certified Copies as Evidence

iv. Sec. 142: Correction of Mistakes Made by the Office

v. Sec. 143: Correction of Mistakes Made by Applicant

vi. Sec. 144: Classification of Goods and Services

C. OWNERSHIP

1. Registrant Sec. 122: Rights in a mark acquired through registrationmade validly in accordance with IP Code.

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2. Priority Right Sec. 131:

a. Sec. 131.1: Application for registration of mark filed in Philippines byperson referred to in Section 3, and who previously duly filedapplication for registration of same mark in one of those countries,shall be considered as filed as of day application was first filed in

foreign country.

b. Sec. 131.2: No registration of a mark in Philippines by persondescribed in this section shall be granted until such mark has beenregistered in country of origin of applicant.

c. Sec. 131.3: Nothing in this section shall entitle owner of registrationgranted under this section to sue for acts committed prior to date onwhich his mark was registered in this country: Provided, That,notwithstanding foregoing, owner of well-known mark as defined inSec. 123.1(e) of IP Code, that is not registered in Philippines, may,against identical or confusingly similar mark, oppose its registration, or

petition cancellation of its registration or sue for unfair competition,without prejudice to availing himself of other remedies provided forunder the law.

d. Sec. 131.4: In like manner and subject to the same conditions andrequirements, right provided in this Section may be based uponsubsequent regularly filed application in same foreign country:Provided, That any foreign application filed prior to such subsequentapplication has been withdrawn, abandoned, or otherwise disposed of,without having been laid open to public inspection and without leavingany rights outstanding, and has not served, nor thereafter shall serve,as basis for claiming right of priority.

D. TRANSFEROF OWNERSHIP

1. Assignment and Transfer of Application and Registration Sec. 149

a. Sec. 149.1: Application for registration of mark, or its registration, maybe assigned or transferred with or without transfer of business usingthe mark.

b. Sec. 149.2: Such assignment or transfer shall, however, be null andvoid if it is liable to mislead public, particularly as regards nature,source, manufacturing process, characteristics, or suitability for their

purpose, of goods or services to which mark is applied.

c. Sec. 149.3: Assignment of application for registration of mark, or of itsregistration, shall be in writing and require signatures of contractingparties. Transfers by mergers or other forms of succession may bemade by any document supporting such transfer.

d. Sec. 149.4: Assignments and transfers of registration of marks shall berecorded at IPO on payment of prescribed fee; assignment and

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transfers of applications for registration shall, on payment of same fee,be provisionally recorded, and mark, when registered, shall be in nameof assignee or transferee.

e. Sec. 149.5: Assignments and transfers shall have no effect againstthird parties until they are recorded at IPO.

2. License Contracts Sec. 150

a. Sec. 150.1: Any license contract concerning the registration of mark, orapplication therefor, shall provide for effective control by licensor ofquality of goods or services of licensee in connection with which markis used. If license contract does not provide for such quality control, orif such quality control is not effectively carried out, license contractshall not be valid.

b. Sec. 150.2: License contract shall be submitted to IPO which shallkeep its contents confidential but shall record it and publish referencethereto. License contract shall have no effect against third parties untilsuch recording is effected. The Regulations shall fix procedure forrecording of license contract.


1. Sec. 147.1: Owner of registered mark shall have exclusive right to preventall third parties not having owners consent from using in course of tradeidentical or similar signs or containers for goods or services which areidentical or similar to those in respect of which trademark is registeredwhere such use would result in likelihood of confusion. In case of use ofidentical sign for identical goods or services, likelihood of confusion shallbe presumed.

2. Sec. 147.2: Exclusive right of owner of well-known mark defined in Sec.123.1(e) which is registered in Philippines, shall extend to goods andservices which are not similar to those in respect of which mark isregistered: Provided, That use of that mark in relation to those goods orservices would indicate connection between those goods or services andowner of registered mark: Provided, further, That interests of owner ofregistered mark are likely to be damaged by such use.

F. LIMITATIONON SCOPEOF TRADEMARK PROTECTION

1. Sec. 148: Use of Indications by Third Parties for Purposes Other thanthose for which the Mark is Used Registration of mark shall not conferon registered owner right to preclude third parties from using bona fidetheir names, addresses, pseudonyms, geographical name, or exactindications concerning kind, quality, quantity, destination, value, place oforigin, or time of production or of supply, of their goods or services:

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Provided, That such use is confined to purposes of mere identification orinformation and cannot mislead public as to source of goods or services.

G. DURATIONOF PROTECTION

1. Sec. 145: Duration Certificate of registration shall remain in force for 10years; Sec. 146: Renewal for periods of 10 years at its expiration.

2. Note: Sec. 145: Registrant shall file declaration of actual use andevidence to that effect, or shall show valid reasons based on existence ofobstacles to such use, as prescribed by the Regulations, within 1 yearfrom 5th anniversary of date of registration of mark. Otherwise, mark shallbe removed from the Register by IPO.

H. INFRINGEMENTAND REMEDIES

1. Sec. 156 Civil Action for Infringement.

a. Definition: Sec. 155:Any person who shall, without consent of ownerof registered mark:

i. Sec. 155.1: Use in commerce any reproduction, counterfeit, copy,or colorable imitation of registered mark or same container ordominant feature thereof in connection sale, offering for sale,distribution, advertising of any goods or services including otherpreparatory steps necessary to carry out sale of any goods orservices on or in connection with which such use is likely to causeconfusion, or to cause mistake, or to deceive; or

ii. Sec. 155.2: Reproduce, counterfeit, copy or colorably imitateregistered mark or dominant feature thereof and apply suchreproduction, counterfeit, copy or colorable imitation to labels,signs, prints, packages, wrappers, receptacles or advertisementsintended to be used in commerce upon or in connection with sale,offering for sale, distribution, or advertising of goods or services onor in connection with which such use is likely to cause confusion, orto cause mistake, or to deceive, shall be liable in civil action forinfringement by the registrant for the remedies hereinafter set forth:Provided, That infringement takes place at moment any of actsstated in Sec. 155.1 or this section are committed regardless of

whether there is actual sale of goods or services using infringingmaterial.

b. Tests to Determine Infringement:

i. Dominancy Test Focuses on similarity of prevalent features ofcompeting trademarks. If competing trademark contains main oressential or dominant features of another trademark by reason ofwhich confusion and deception are likely to result, infringementtakes place.

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ii. Holistic Test Does not focus only on predominant words butconsiders also other features appearing in labels. Trademarks intheir entirety as they appear in their respective labels areconsidered in relation to goods to which they are attached..

c. Jurisdiction with Regular Courts Sec. 163: All actions under Secs.

150, 155, 164, and 166 to 169 shall be brought before proper courtswith appropriate jurisdiction under existing laws.12

d. Who May Bring Suit

i. Sec. 156.1: Owner of registered mark may recover damages fromany person who infringes his rights, and measure of damagessuffered shall be either reasonable profit which complaining partywould have made, had defendant not infringed his rights, or profitwhich defendant actually made out of infringement, or in event suchmeasure of damages cannot be readily ascertained withreasonable certainty, then court may award as damages

reasonable percentage based upon amount of gross sales ofdefendant or value of services in connection with which mark ortrade name was used in infringement of rights of complaining party.

ii. Sec. 160: Any foreign national or juridical person who meetsrequirements of Sec. 3 of IP Code and does not engage inbusiness in Philippines may bring civil or administrative actionhereunder for opposition, cancellation, infringement, unfaircompetition, or false designation of origin and false description,whether or not it is licensed to do business in Philippines underexisting laws.

e. Defensesi. Non-Registrability of Trademark Sec. 138: Certificate of

registration of mark shall be merelyprima facie evidence of validityof registration, registrants ownership of mark, and of registrantsexclusive right to use same in connection with goods or servicesand those that are related thereto specified in certificate.

ii. Equitable Principles Sec. 230: Equitable principles of laches,estoppel, and acquiescence may be applied in action forinfringement of trademark.

f. Limitations on Actions for Infringement:

12 Sec. 164 provides that, It shall be the duty of the clerks of such courts within one (1) monthafter the filing of any action, suit, or proceeding involving a mark registered under the provisions ofthis Act, to notify the Director in writing setting forth: the names and addresses of the litigants anddesignating the number of the registration or registrations and within one (1) month after the

judgment is entered or an appeal is taken, the clerk of court shall give notice thereof to the Office,and the latter shall endorse the same upon the filewrapper of the said registration or registrationsand incorporate the same as a part of the contents of said filewrapper.

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i. Prior User Sec. 159.1: Notwithstanding the provisions of Sec.155 hereof, registered mark shall have no effect against any personwho, before filing date or priority date, was using mark for purposesof his business or enterprise; Provided, That his right may only betransferred or assigned together with his enterprise or business or

with part of his enterprise or business in which mark is used.ii. Innocent Infringer Sec. 159.2: Where infringer who is engaged

solely in business of printing mark or other infringing materials forothers is innocent infringer, owner of right infringed shall be entitledagainst such infringer only to injunction against future printing.

iii. Publisher Sec. 159.3: Where infringement complained of iscontained in or is part of paid advertisement in newspaper,magazine, or other similar periodical or in electroniccommunication, remedies of owner of right infringed as againstpublisher or distributor of such newspaper, magazine, or othersimilar periodical or electronic communication shall be limited toinjunction against presentation of such advertising matter in futureissues of such newspapers, magazines, or other similar periodicalsor in future transmissions of such electronic communications.Limitations of this subparagraph shall apply only to innocentinfringers: Provided, That such injunctive relief shall not beavailable to owner of right infringed with respect to an issue ofnewspaper, magazine, or other similar periodical or electroniccommunication containing infringing matter where restrainingdissemination of such infringing matter in any particular issue ofsuch periodical or in an electronic communication would delaydelivery of such issue or transmission of such electroniccommunication is customarily conducted in accordance with soundbusiness practice, and not due to any method or device adopted toevade this section or to prevent or delay issuance of injunction orrestraining order with respect to such infringing matter.

g. Reliefs Granted

i. Damages

(a) Sec. 156.3. In cases where actual intent to mislead the public orto defraud complainant is shown, in discretion of court,damages may be doubled.

(b) Sec. 158: - In any suit for infringement, owner of registeredmark shall not be entitled to recover profits or damages unlessthe acts have been committed with knowledge that suchimitation is likely to cause confusion, or to cause mistake, or todeceive. Such knowledge is presumed if registrant gives noticethat his mark is registered by displaying with mark words"Registered Mark" or letter R within circle or if defendant hadotherwise actual notice of registration.

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ii. Injunction Sec. 156.4: Complainant, upon proper showing, mayalso be granted injunction.

iii. Impounding Evidence Sec. 156.2: On application ofcomplainant, court may impound during pendency of action, salesinvoices and other documents evidencing sales.

iv. Destruction of Infringing Materials Sec. 157:

(a) Sec. 157.1: In any action arising under IP Code, in whichviolation of any right of owner of registered mark is established,court may order that goods found to be infringing be, withoutcompensation of any sort, disposed of outside channels ofcommerce in such manner as to avoid any harm caused to rightholder, or destroyed; and all labels, signs, prints, packages,wrappers, receptacles and advertisements in possession ofdefendant, bearing registered mark or trade name or anyreproduction, counterfeit, copy or colorable imitation thereof, all

plates, molds, matrices and other means of making the same,shall be delivered up and destroyed.

(b) Sec. 157.2: In regard to counterfeit goods, simple removal oftrademark affixed shall not be sufficient other than inexceptional cases which shall be determined by Regulations, topermit release of goods into channels of commerce.

v. Mark Found Invalid May be Cancelled Sec. 161: In any actioninvolving registered mark, court may determine right to registration,order cancellation of registration, in whole or in part, and otherwiserectify register with respect to registration of any party to action in

exercise of this. Judgment and orders shall be certified by court tothe Director, who shall make appropriate entry upon the records ofthe Bureau, and shall be controlled thereby.

h. Prescription Sec. 226: No damages may be recovered forinfringement of trademark after 4 years from time cause of actionarose.

2. Sec. 168 Civil Action for Unfair Competition.

a. Concepts:

i. Protection of Goodwill Sec. 168.1: A person who has identifiedin mind of public goods he manufactures or deals in, his businessor services from those of others, whether or not registered mark isemployed, has property right in goodwill of said goods, business orservices so identified, which will be protected in same manner asother property rights.

ii. Definition of Unfair Competition Sec. 168.2: Any person whoshall employ deception or any other means contrary to good faithby which he shall pass off the goods manufactured by him or in

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which he deals, or his business, or services for those of one havingestablished such goodwill, or who shall commit any acts calculatedto produce said result, shall be guilty of unfair competition, andshall be subject to an action therefor.

iii. Acts of Unfair Competition Sec. 168.3: In particular, and

without in any way limiting scope of protection against unfaircompetition, following shall be deemed guilty of unfair competition:

(a) Any person who is selling his goods and gives them generalappearance of goods of another manufacturer or dealer, eitheras to goods themselves or in wrapping of packages in whichthey are contained, or the devices or words thereon, or in anyother feature of their appearance, which would be likely toinfluence purchasers to believe that goods offered are those ofa manufacturer or dealer, other than actual manufacturer ordealer, or who otherwise clothes goods with such appearanceas shall deceive public and defraud another of his legitimatetrade, or any subsequent vendor of such goods or any agent ofany vendor engaged in selling such goods with like purpose;

(b) Any person who by any artifice, or device, or who employs anyother means calculated to induce the false belief that suchperson is offering the services of another who has identifiedsuch services in mind of public; or

(c) Any person who shall make any false statement in course oftrade or who shall commit any other act contrary to good faith ofnature calculated to discredit goods, business or services ofanother.

b. Remedies Sec. 168.4: Remedies provided by Secs. 156, 157 and161 shall apply mutatis mutandis.

c. Distinctions Between Infringement and Unfair Competition:

i. In infringement, prior registration of trademark necessary; in unfaircompetition, registration of trademark not necessary.

ii. In infringement, fraudulent intent not necessary; in unfaircompetition, fraudulent intent is essential.

iii. Infringement of trademark is unauthorized use of trademark; Unfaircompetition is passing off ones goods as goods of another.

3. Sec. 162 Action for False or Fraudulent Declaration: Any person whoshall procure registration in IPO of mark by false or fraudulent declarationor representation, whether oral or in writing, or by any false means, shallbe liable in a civil action by any person injured thereby for any damagessustained in consequence thereof.

4. Sec. 169 Action for False Designations of Origin; False Descriptionor Representation.

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a. Sec. 169.1: Any person who, on or in connection with any goods orservices, or any container for goods, uses in commerce any word,term, name, symbol, or device, or any combination thereof, or anyfalse designation of origin, false or misleading description of fact, orfalse or misleading representation of fact, which:

i. is likely to cause confusion, or to cause mistake, or to deceive as toaffiliation, connection, or association of such person with anotherperson, or as to origin, sponsorship, or approval of his or hergoods, services, or commercial activities by another person; or

ii. in commercial advertising or promotion, misrepresents nature,characteristics, qualities, or geographic origin of his or her oranother persons goods, services, or commercial activities, shall beliable to a civil action for damages and injunction provided in Secs.156 and 157 of IP Code by any person who believes that he or sheis or likely to be damaged by such act.

b. Sec. 169.2: Any goods marked or labeled in contravention ofprovisions of this Section shall not be imported into Philippines oradmitted entry at any customhouse of Philippines. Owner, importer, orconsignee of goods refused entry at any customhouse under thissection may have any recourse under customs revenue laws or mayhave remedy given by IP Code in cases involving goods refused entryor seized.

5. Sec. 170 Criminal Prosecution: Independent of civil and administrativesanctions imposed by law, criminal penalty of imprisonment from 2 yearsto 5 years and a fine ranging from P50,000 to P200,000, shall be imposedon any person who is found guilty of committing any of acts mentioned in

Secs 155, 168 and 169.1.

6. Sec. 151 Cancellation of Trademarks

a. Grounds Sec. 151.1: Petition to cancel registration of mark under IPCode may be filed with Bureau of Legal Affairs by any person whobelieves that he is or will be damaged by registration of mark under IPCode as follows:

i. Within 5 years from date of registration of mark under IP Code.

ii. At any time, if registered mark becomes generic name for goods orservices, or a portion thereof, for which it is registered, or has been

abandoned, or its registration was obtained fraudulently or contraryto provisions of IP Code, or if registered mark is being used by, orwith permission of, registrant so as to misrepresent source of goodsor services on or in connection with which mark is used. Ifregistered mark becomes generic name for less than all of goods orservices for which it is registered, petition to cancel registration foronly those goods or services may be filed. Registered mark shallnot be deemed to be generic name of goods or services solely

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because such mark is also used as name of or to identify uniqueproduct or service. Primary significance of registered mark torelevant public rather than purchaser motivation shall be test fordetermining whether registered mark has become generic name ofgoods or services on or in connection with which it has been used.

iii. At any time, if registered owner of mark without legitimate reasonfails to use mark within Philippines, or to cause it to be used inPhilippines by virtue of license during an uninterrupted period of 3years or longer.

b. Concurrent Jurisdiction Sec. 151.2: Notwithstanding foregoingprovisions, court or administrative agency vested with jurisdiction tohear and adjudicate any action to enforce the rights to registered markshall likewise exercise jurisdiction to determine whether registration ofsaid mark may be cancelled in accordance with IP Code. Filing of suitto enforce registered mark with proper court or agency shall excludeany other court or agency from assuming jurisdiction oversubsequently filed petition to cancel same mark. On other hand, earlierfiling of petition to cancel mark with Bureau of Legal Affairs shall notconstitute prejudicial question that must be resolved before action toenforce rights to same registered mark may be decided.

c. Other Provisions:

i. Sec. 152: Non-use of a Mark When Excused.

ii. Sec. 153: Requirements of Petition; Notice and Hearing.

iii. Sec. 154: Cancellation of Registration.

V. TRADE NAMES


1. Registrable Trade Name Sec. 121.3: Name or designation identifyingor distinguishing an enterprise.

2. Non-Registrable Marks Sec. 165.1: Name or designation may not beused as trade name if by its nature or use to which such name ordesignation may be put, it is contrary to public order or morals and if, in

particular, it is liable to deceive trade circles or public as to nature ofenterprise identified by that name. Examples:

a. Consists of generic words

b. Consists of geographical name;

c. Legal Prohibitions: words that may not be used as trade name

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i. United Nations;13

ii. Bonded if not licensed under General Bonded Warehouse Act orestablished under Tariff and Customs Code;14

iii. Bank, Banking, Banker, Quasi-Bank, Quasi-Banking,

Quasi-Banker, Savings and Loan Association, TrustCorporation, Trust Corporation, Trust Company unlessauthorized to as such by Monetary Board (MB);15

iv. Development Bank unless authorized to operate as such by MB;16

v. Financing Company, Leasing Company, Financing and LeasingCompany, or Finance and Investment Company unlessauthorized as such by Securities and Exchange Commission;17

vi. Cooperative unless registered as cooperative;18

vii. Rural Bank unless authorized to operate as such by MB;19 and

viii.National not used by any bank except Philippine National Bank.

20

d. Confusing Similarity Sec. 165.2(b): Any subsequent use of tradename by third party, whether as trade name or mark or collective mark,or any such use of similar trade name or mark, likely to mislead public,shall be deemed unlawful.


1. Substantive Requirements Sec. 165.2(a): Notwithstanding any laws orregulations providing for any obligation to register trade names, suchnames shall be protected, even prior to or without registration, against any

unlawful act committed by third parties.

C. TRANSFEROF OWNERSHIP

1. Sec. 165.4: Rules on assignment of trademarks are also applicable toassignment of trade names.

D. INFRINGEMENTAND REMEDIES

1. Sec. 165.3: Remedies for infringement of trademarks are also applicableto infringement of trade names.

13 R.A. No. 226, Sec. 1.14 R.A. No. 247, Sec. 3.15 R.A. No. 8791, Sec. 64.16 R.A. No. 4093, Sec. 16.17 R.A. No. 5980, Sec. 14(c), as amended by R.A. No. 8556.18 R.A. No. 6938, Sec. 124(1); R.A. No. 6939, Sec. 14.19 R.A. No. 7353, Sec. 28.20 Revised Charter of Philippine National Bank, Sec. 35.

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VI. COPYRIGHT


1. Original Works Sec. 172.1: Literary and Artistic Works. Originalintellectual creations in literary and artistic domain protected from momentof their creation.21

2. Derivative Works Sec. 173.1:Following derivative works shall also beprotected by copyright:22

a. Sec. 173.1(a): Dramatizations, translations, adaptations, abridgments,arrangements, and other alterations of literary or artistic works; and

b. Sec. 173.1(b): Collections of literary, scholarly or artistic works, andcompilations of data and other materials which are original by reason

of the selection or coordination or arrangement of their contents.

c. Sec. 174: Published Edition of Work In addition to right to publishgranted by author, his heirs or assigns, publisher shall have a copyright consisting merely of right of reproduction of typographicalarrangement of published edition of work.

21 Under Sec. 172.1 of the IP Code, Literary and Artistic Works shall include in particular:(a) Books, pamphlets, articles and other writings;(b) Periodicals and newspapers;(c) Lectures, sermons, addresses, dissertations prepared for oral delivery, whether or

not reduced in writing or other material form;(d) Letters;

(e) Dramatic or dramatico-musical compositions; choreographic works orentertainment in dumb shows;

(f) Musical compositions, with or without words;(g) Works of drawing, painting, architecture, sculpture, engraving, lithography or other

works of art; models or designs for works of art;(h) Original ornamental designs or models for articles of manufacture, whether or not

registrable as an industrial design, and other works of applied art;(i) Illustrations, maps, plans, sketches, charts and three-dimensional works relative to

geography, topography, architecture or science;(j) Drawings or plastic works of a scientific or technical character;(k) Photographic works including works produced by a process analogous to

photography; lantern slides;(l) Audiovisual works and cinematographic works and works produced by a process

analogous to cinematography or any process for making audio-visual recordings;(m) Pictorial illustrations and advertisements;(n) Computer programs; and(o) Other literary, scholarly, scientific and artistic works.22 Sec. 173.2 of the IP Code provides that:The works referred to in paragraphs (a) and (b) of Subsection 173.1 shall be protected

as a new works: Provided however, That such new work shall not affect the force of anysubsisting copyright upon the original works employed or any part thereof, or be construedto imply any right to such use of the original works, or to secure or extend copyright in suchoriginal works.

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3. Works Not Protected

a. Sec. 175: Unprotected Subject Matter Any idea, procedure, systemmethod or operation, concept, principle, discovery or mere data assuch, even if they are expressed, explained, illustrated or embodied ina work; news of the day and other miscellaneous facts having

character of mere items of press information; or any official text oflegislative, administrative or legal nature, as well as any officialtranslation thereof.

b. Sec. 176.1: Works of the Government of the Philippines. Nocopyright shall subsist in any work of Government of Philippines.23


1. Substantive Requirements Sec. 172.2: Works are protected by solefact of their creation, irrespective of their mode or form of expression, as

well as of their content, quality and purpose.2. Formal Requirements Sec. 191 (Registration and Deposit with National

Library and the Supreme Court Library); Sec. 192 (Notice of Copyright).

C. OWNERSHIP

1. The Author Sec. 178. Copyright ownership shall be governed byfollowing rules:

a. Sec. 178.1: For original literary and artistic works author;

b. Sec. 178.5: For audiovisual work producer, author of scenario,

composer music, film director, and author of work so adapted;24

23 Sec. 176 of the IP Code further provides that:176.1. x x x. However, prior approval of the government agency or office wherein the

work is created shall be necessary for exploitation of such work for profit. Such agency oroffice may, among other things, impose as a condition the payment of royalties. No priorapproval or conditions shall be required for the use of any purpose of statutes, rules andregulations, and speeches, lectures, sermons, addresses, and dissertations, pronounced,read or rendered in courts of justice, before administrative agencies, in deliberativeassemblies and in meetings of public character.

176.2. The Author of speeches, lectures, sermons, addresses, and dissertationsmentioned in the preceding paragraphs shall have the exclusive right of making a collectionof his works.

176.3. Notwithstanding the foregoing provisions, the Government is not precluded fromreceiving and holding copyrights transferred to it by assignment, bequest or otherwise; norshall publication or republication by the government in a public document of any work inwhich copy right is subsisting be taken to cause any abridgment or annulment of thecopyright or to authorize any use or appropriation of such work without the consent of thecopyright owners.

24 Section 178.5 further provides:

However, subject to contrary or other stipulations among the creators, the producers shall exercisethe copyright to an extent required for the exhibition of the work in any manner, except for the rightto collect performing license fees for the performance of musical compositions, with or without

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c. Sec. 178.6: For letters writer, subject to the provisions of Art. 723,Civil Code; and

d. Sec. 179: For anonymous and pseudonymous works publishersdeemed to represent authors, unless contrary appears, or pseudonymsor adopted name leaves no doubts as to authors identity, or if author

discloses his identity.

2. Joint Works/Works Created by Several Persons Sec. 178.2:

a. General Rule: For works of joint authorship co-authors (in absence ofagreement, their rights governed by rules on co-ownership).

b. Exception: If parts can be used separately and author of each part canbe identified author of each part for part that he created;

3. Works Made for Hire

a. Sec. 178.3: For work created by author during and in the course of hisemployment:

i. Employee, if creation of work is not part of his regular duties even ifemployee uses time, facilities and materials of employer; or

ii. Employer, if work is result of performance of his regularly-assignedduties, unless contrary agreement, express or implied.

b. Sec. 178.4: For work commissioned by person other than employer ofauthor and who pays for it and work is made in pursuance ofcommission, person who commissioned work shall have ownership ofwork, but creator retains copyright, unless contrary written stipulation.

D. TRANSFER1. Assignment of Copyright

a. Sec. 180: Rights of Assignee.

i. Sec. 180.1. Copyright may be assigned in whole or in part. Withinscope of assignment, assignee is entitled to all rights and remedieswhich assignor had with respect to copyright.

ii,. Sec. 180.2. Copyright is not deemed assigned inter vivos in wholeor in part unless there is written indication of such intention.

b. Sec. 181: Copyright and Material Object Copyright is distinct from

property in material object subject to it. Consequently, transfer orassignment of copyright shall not itself constitute transfer of materialobject. Nor shall transfer or assignment of sole copy or of one orseveral copies of work imply transfer or assignment of copyright.

2. License Sec. 180.3: Submission of literary, photographic or artistic workto newspaper, magazine or periodical for publication shall constitute only

words, which are incorporated into the work; and

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license to make single publication unless greater right is expresslygranted. If 2 or more persons jointly own a copyright or any part thereof,neither of owners shall be entitled to grant licenses without prior writtenconsent of other owner or owners.

3. Other Provisions

a. Sec. 182: Filing of Assignment of License.

b. Sec. 183: Designation of Society Copyright owners or their heirs maydesignate society of artists, writers or composers to enforce theireconomic rights and moral rights on their behalf.


1. Moral Rights:

a. Scope Sec. 193: Author of work shall, independently of economicrights in Sec. 177 or grant of an assignment or license with respect tosuch right, have right:

i. Sec. 193.1: To require that authorship of works be attributed to him,in particular, right that his name, as far as practicable, be indicatedin prominent way on copies, and in connection with public use ofhis work;

ii. Sec. 193.2: To make any alterations of his work prior to, or towithhold it from publication;

iii. Sec. 193.3: To object to any distortion, mutilation or othermodification of, or other derogatory action in relation to, his work

which would be prejudicial to his honor or reputation; andiv. Sec. 193.4: To restrain use of his name with respect to any work

not of his own creation or in distorted version of his work.

b. Sec. 194: Breach of Contract Author cannot be compelled to performhis contract to create work or for publication of his work already inexistence. However, he may be held liable for damages for breach ofsuch contract.

c. Sec. 195: Waiver of Moral Rights Author may waive his rightsmentioned in Sec. 193 by written instrument, but no such waiver shallbe valid where its effects is to permit another:

i. Sec. 195.1: To use name of author, or title of his work, or otherwiseto make use of his reputation with respect to any version oradaptation of his work which, because of alterations therein, wouldsubstantially tend to injure literary or artistic reputation of anotherauthor; or

ii. Sec. 195.2: To use name of author with respect to a work he didnot create.

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d. Sec. 196: Contribution to Collective Work When author contributes tocollective work, his right to have his contribution attributed to him isdeemed waived unless he expressly reserves it.

e. Sec. 197: Editing, Arranging and Adaptation of Work In absence ofcontrary stipulation at time author licenses or permits another to use

his work, necessary editing, arranging or adaptation of such work, forpublication, broadcast, use in motion picture, dramatization, ormechanical or electrical reproduction in accordance with reasonableand customary standards or requirements of medium in which work isto be used, shall not be deemed to contravene author's rights securedby this Chapter. Nor shall complete destruction of work unconditionallytransferred by author be deemed to violate such rights.

2. Exploitation Rights

a. Economic Rights Sec. 177: Copyright or economic rights shallconsist of exclusive right to carry out, authorize or prevent following

acts:i. Sec. 177.1: Reproduction of work or substantial portion of work;

ii. Sec. 177.2: Dramatization, translation, adaptation, abridgment,arrangement or other transformation of work;

iii. Sec. 177.3: First public distribution of original and each copy ofwork by sale or other forms of transfer of ownership;

iv. Sec. 177.4: Rental of original or a copy of audiovisual orcinematographic work, work embodied in sound recording,computer program, compilation of data and other materials or

musical work in graphic form, irrespective of ownership of originalor copy which is subject of rental;

v. Sec. 177.5: Public display of original or copy of work;

vi. Sec. 177.6: Public performance of work; and

vii.Sec. 177.7: Other communication to public of work.

b. Other Rights

i. Droit de Suite Sec. 200:25 Subsequent Sale or Lease of Work. In every sale or lease of original work of painting or sculpture or oforiginal manuscript of writer or composer, subsequent to first

disposition thereof by author, author or his heirs shall haveinalienable right to participate in gross proceeds of ale or lease toextent of 5%. This right sh

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