Regulatory Framework for Business Transactions ATTY. JOHNSON A.H.
ONG, CPA, MBA
RFBT Intellectual Property Code SUMMER 2021
STUDENT HANDOUTS
INTELLECTUAL PROPERTY CODE First to File Rule
R.A. 8293 If two (2) or more persons have made the invention separately
and independently of each other, the right to the patent shall
Intellectual property rights belong to the person who filed an application for such
The term "intellectual property rights"* consists of: invention, or where two or more applications are filed for the
a) Copyright and Related Rights; same invention, to the applicant who has the earliest filing date
b) Trademarks and Service Marks; or, the earliest priority date. (Sec 29)
c) Geographic Indications;
d) Industrial Designs; Inventions Created Pursuant to a Commission
e) Patents; 1. The person who commissions the work shall own the
f) Layout-Designs (Topographies) of Integrated Circuits; and patent, unless otherwise provided in the contract.
g) Protection of Undisclosed Information (n, TRIPS) 2. In case the employee made the invention in the course of
*No longer includes trade names and business names. his employment contract, the patent shall belong to:
a. The employee, if the inventive activity is not a part of
THE LAW ON PATENTS his regular duties even if the employee uses the time,
Patentable Inventions facilities and materials of the employer.
Any technical solution of a problem in any field of human b. The employer, if the invention is the result of the
activity which is new, involves an inventive step and is performance of his regularly-assigned duties, unless
industrially applicable shall be Patentable. It may be, or may there is an agreement, express or implied, to the
relate to, a product, or process, or an improvement of any of the contrary. (Sec 30)
foregoing. (Sec 21)
Rights Conferred by Patent.
Novelty A patent shall confer on its owner the following exclusive
An invention shall not be considered new if it forms part of a rights:
prior art. (Sec. 23) (a) Where the subject matter of a patent is a product, to
restrain, prohibit and prevent any unauthorized person or
Prior Art. entity from making, using, offering for sale, selling or
Prior art shall consist of: importing that product;
1. Everything which has been made available to the public (b) Where the subject matter of a patent is a process, to
anywhere in the world, before the filing date or the priority restrain, prevent or prohibit any unauthorized person or
date of the application claiming the invention; and entity from using the process, and from manufacturing,
2. The whole contents of an application for a patent, utility dealing in, using, selling or offering for sale, or importing
model, or industrial design registration, published in any product obtained directly or indirectly from such
accordance with this Act, filed or effective in the process.
Philippines, with a filing or priority date that is earlier than Patent owners shall also have the right to assign, or transfer by
the filing or priority date of the application: Provided, That succession the patent, and to conclude licensing contracts for
the application which has validly claimed the filing date of the same. (Sec. 71)
an earlier application under Section 31 of this Act, shall be
prior art with effect as of the filing date of such earlier Term of Patent
application: Provided further, That the applicant or the The term of a patent shall be twenty (20) years from the filing
inventor identified in both applications are not one and the date of the application. (Sec 54, R.A. 8293)
same. (Sec. 24)
THE LAW ON TRADEMARKS, SERVICE MARKS AND TRADE
Non-Patentable Inventions NAMES
The following shall be excluded from patent protection:
1. Discoveries, scientific theories and mathematical methods; Definition of term (Sec 121, R.A. 8293)
2. Schemes, rules and methods of performing mental acts, • Mark means any visible sign capable of distinguishing the
playing games or doing business, and programs for goods (trademark) or services (service mark) of an
computers; enterprise and shall include a stamped or marked
3. Methods for treatment of the human or animal body by container of goods;
surgery or therapy and diagnostic methods practiced on • Collective mark means any visible sign designated as such
the human or animal body. This provision shall not apply in the application for registration and capable of
to products and composition for use in any of these distinguishing the origin or any other common
methods; characteristic, including the quality of goods or services of
4. Plant varieties or animal breeds or essentially biological different enterprises which use the sign under the control
process for the production of plants or animals. This of the registered owner of the collective mark.
provision shall not apply to micro-organisms and non- • Trade name" means the name or designation identifying
biological and microbiological processes. or distinguishing an enterprise.
5. Aesthetic creations; and
6. Anything which is contrary to public order or morality Duration
A certificate of registration shall remain in force for ten (10)
Right to a Patent years: Provided, That the registrant shall file a declaration of
The right to a patent belongs to the inventor, his heirs, or actual use and evidence to that effect, or shall show valid
assigns. When two (2) or more persons have jointly made an reasons based on the existence of obstacles to such use, as
invention, the right to a patent shall belong to them jointly. (Sec prescribed by the Regulations, within one (1) year from the
28) fifth anniversary of the date of the registration of the mark.
Otherwise, the mark shall be removed from the Register by the
ATTY. JOHNSON A.H. ONG, CPA, MBA
Office. (Sec 145) A certificate of registration may be renewed (l) Audiovisual works and cinematographic works and works
for periods of ten (10) years at its expiration upon payment of produced by a process analogous to cinematography or
the prescribed fee and upon filing of a request. (Sec 146) any process for making audio-visual recordings;
(m) Pictorial illustrations and advertisements;
Rights Conferred (n) Computer programs; and
1. The owner of a registered mark shall have the exclusive (o) Other literary, scholarly, scientific and artistic works.
right to prevent all third parties not having the owner's 172.2. Works are protected by the sole fact of their creation,
consent from using in the course of trade identical or irrespective of their mode or form of expression, as well as of
similar signs or containers for goods or services which are their content, quality and purpose.
identical or similar to those in respect of which the
trademark is registered where such use would result in a Derivative Works
likelihood of confusion. In case of the use of an identical The following derivative works shall also be protected by
sign for identical goods or services, a likelihood of copyright:
confusion shall be presumed. (a) Dramatizations, translations, adaptations, abridgments,
2. The exclusive right of the owner of a well-known mark arrangements, and other alterations of literary or artistic
which is registered in the Philippines, shall extend to goods works; and
and services which are not similar to those in respect of (b) Collections of literary, scholarly or artistic works, and
which the mark is registered: Provided, That use of that compilations of data and other materials which are
mark in relation to those goods or services would indicate original by reason of the selection or coordination or
a connection between those goods or services and the arrangement of their contents. (Sec. 2, [P] and [Q], P.D. No.
owner of the registered mark: Provided further, That the 49)
interests of the owner of the registered mark are likely to The works referred to in paragraphs (a) and (b) above shall be
be damaged by such use. (Sec 147) protected as new works: Provided however, That such new
work shall not affect the force of any subsisting copyright upon
Well known mark the original works employed or any part thereof, or be
Is identical with, or confusingly similar to, or constitutes a construed to imply any right to such use of the original works,
translation of a mark which is considered by the competent or to secure or extend copyright in such original works. (Sec. 8,
authority of the Philippines to be well-known internationally P.D. 49; Art. 10, TRIPS) (Sec. 173.1)
and in the Philippines, whether or not it is registered here, as
being already the mark of a person other than the applicant for Published Edition of Work
registration, and used for identical or similar goods or services: In addition to the right to publish granted by the author, his
Provided, That in determining whether a mark is well-known, heirs, or assigns, the publisher shall have a copyright consisting
account shall be taken of the knowledge of the relevant sector merely of the right of reproduction of the typographical
of the public, rather than of the public at large, including arrangement of the published edition of the work. (Sec 174)
knowledge in the Philippines which has been obtained as a
result of the promotion of the mark. (Sec 123.1 (e) Copyright ownership shall be governed by the following
rules:
THE LAW ON COPYRIGHT 1. Single author
– Original literary and artistic works - belong to the
Literary and Artistic Works. author of the work.
Literary and artistic works, hereinafter referred to as "works", 2. Joint authorship or Co-authorship
are original intellectual creations in the literary and artistic – Work wherein the part cannot be used separately and
domain protected from the moment of their creation and shall and the author of each part cannot be identified
include in particular: • Works of joint authorship - the co-authors shall be
(a) Books, pamphlets, articles and other writings; the original owners of the copyright and in the
(b) Periodicals and newspapers; absence of agreement, their rights shall be
(c) Lectures, sermons, addresses, dissertations prepared for governed by the rules on co-ownership.
oral delivery, whether or not reduced in writing or other – Work of joint authorship consists of parts that can be
material form; used separately and the author of each part can be
(d) Letters; identified
(e) Dramatic or dramatico-musical compositions; • The author of each part shall be the original owner
choreographic works or entertainment in dumb shows; of the copyright in the part that he has created.
(f) Musical compositions, with or without words; (Sec 178, R.A. 8293)
(g) Works of drawing, painting, architecture, sculpture,
engraving, lithography or other works of art; models or Unprotected Subject Matter
designs for works of art; No protection shall extend, under this law, to
(h) Original ornamental designs or models for articles of 1. Any idea
manufacture, whether or not registrable as an industrial 2. Procedure
design, and other works of applied art; 3. System
(i) Illustrations, maps, plans, sketches, charts and three- 4. Method or operation,
dimensional works relative to geography, topography, 5. Concept
architecture or science; 6. Principle
(j) Drawings or plastic works of a scientific or technical 7. Discovery or mere data as such, even if they are expressed,
character; explained, illustrated or embodied in a work;
(k) Photographic works including works produced by a 8. News of the day and Other miscellaneous facts having the
process analogous to photography; lantern slides; character of mere items of press information;
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ATTY. JOHNSON A.H. ONG, CPA, MBA
9. Any official text of a legislative, administrative or legal (k) Any use made of a work for the purpose of any judicial
nature, as well as any official translation thereof. (Sec 175, proceedings or for the giving of professional advice by a
R.A. 8293) legal practitioner.
Limitations on Copyright. Fair Use of a Copyrighted Work
The following acts shall not constitute infringement of The fair use of a copyrighted work for criticism, comment,
copyright: news reporting, teaching including multiple copies for
(a) The recitation or performance of a work, once it has been classroom use, scholarship, research, and similar purposes is
lawfully made accessible to the public, if done privately not an infringement of copyright. (Sec 185)
and free of charge or if made strictly for a charitable or
religious institution or society; (Sec. 10(1), P.D. No. 49) Decompilation may constitute fair use
(b) The making of quotations from a published work if they are Decompilation, which is understood here to be the
compatible with fair use and only to the extent justified for reproduction of the code and translation of the forms of the
the purpose, including quotations from newspaper articles computer program to achieve the inter-operability of an
and periodicals in the form of press summaries: Provided, independently created computer program with other
That the source and the name of the author, if appearing on programs may also constitute fair use.
the work, are mentioned; (Sec. 11, third par., P.D. No. 49)
(c) The reproduction or communication to the public by mass Factor whether the use made of a work in any particular
media of articles on current political, social, economic, case is fair use
scientific or religious topic, lectures, addresses and other (a) The purpose and character of the use, including whether
works of the same nature, which are delivered in public if such use is of a commercial nature or is for non-profit
such use is for information purposes and has not been educational purposes;
expressly reserved: Provided, That the source is clearly (b) The nature of the copyrighted work;
indicated; (Sec. 11, P.D. No. 49) (c) The amount and substantiality of the portion used in
(d) The reproduction and communication to the public of relation to the copyrighted work as a whole; and
literary, scientific or artistic works as part of reports of (d) The effect of the use upon the potential market for or value
current events by means of photography, cinematography of the copyrighted work.
or broadcasting to the extent necessary for the purpose; The fact that a work is unpublished shall not by itself bar a
(Sec. 12, P.D. No. 49) finding of fair use if such finding is made upon consideration of
(e) The inclusion of a work in a publication, broadcast, or all the above factors. (Sec 185)
other communication to the public, sound recording or
film, if such inclusion is made by way of illustration for Term of Moral Rights
teaching purposes and is compatible with fair use: The rights of an author under this chapter shall last during the
Provided, That the source and of the name of the author, if lifetime of the author and for fifty (50) years after his death and
appearing in the work, are mentioned; shall not be assignable or subject to license. The person or
(f) The recording made in schools, universities, or educational persons to be charged with the posthumous enforcement of
institutions of a work included in a broadcast for the use of these rights shall be named in writing to be filed with the
such schools, universities or educational institutions: National Library. In default of such person or persons, such
Provided, That such recording must be deleted within a enforcement shall devolve upon either the author's heirs, and
reasonable period after they were first broadcast: in default of the heirs, the Director of the National Library. (Sec
Provided, further, That such recording may not be made 198.1.)
from audiovisual works which are part of the general
cinema repertoire of feature films except for brief excerpts
of the work;
(g) The making of ephemeral recordings by a broadcasting
organization by means of its own facilities and for use in its
own broadcast;
(h) The use made of a work by or under the direction or
control of the Government, by the National Library or by
educational, scientific or professional institutions where
such use is in the public interest and is compatible with fair
use;
(i) The public performance or the communication to the
public of a work, in a place where no admission fee is
charged in respect of such public performance or
communication, by a club or institution for charitable or
educational purpose only, whose aim is not profit making,
subject to such other limitations as may be provided in the
Regulations; (n)
(j) Public display of the original or a copy of the work not
made by means of a film, slide, television image or
otherwise on screen or by means of any other device or
process: Provided, That either the work has been
published, or, that the original or the copy displayed has
been sold, given away or otherwise transferred to another
person by the author or his successor in title; and
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