Intellectual Property Law (RA 8293, as amended up to RA 10372)

Intellectual property law (ra 8293, AS AMENDED UP TO RA 10372)

Rationale behind the Intellectual Property Code

The Intellectual Property Code (IPC) gives life to Sec. 13, Art. XIV of the Constitution which
mandates that the State shall protect and secure the exclusive rights of scientists, investors,
artists and other gifted citizens to their intellectual property and creations, particularly when
beneficial to the people, for such period as may be provided by law.
The State recognizes that an effective intellectual and industrial property system is vital to
the development of domestic and creative activity, facilitates transfers of technology and
attracts foreign investments; and ensures market access for our products (IPC, Sec. 2)

PATENTS

The primary purpose of the patent system is not the reward of the individual but the
advancement of the arts and sciences. The function of a patent is to add to the sum of
useful knowledge and one of the purposes of the patent system is to encourage
dissemination of information concerning discoveries and inventions.
Three-fold purpose of patent law:
To foster and reward invention;
To promote disclosures of inventions to stimulate further innovation and to permit the public
to practice the invention once the patent expires; and
To ensure that ideas in the public domain remain there for the free use of the public(Pearl &
Dean Inc.v. Shoemart, Inc., G.R. No. 148222, August 15, 2003).

Coverage of patents

Invention – any technical solution of a problem in any field of human activity which is new,
involves an inventive step and is industrially applicable. It may be, or may relate to, a product,
or process, or an improvement of any of the foregoing (Sec. 21, IPC).
Utility Model – An invention qualifies for registration as a utility model if it is new and
industrially applicable (Sec. 109, IPC).
Industrial Design – any composition of lines or colors or any three-dimensional form,
whether or not associated with lines or colors, provided that such composition or form gives
a special appearance to and can serve as pattern for an industrial product or handicraft; and
must be new or ornamental (Sec. 112, 113 IPC).
An industrial design is not considered new if it differs from prior designs only in
minor respects that can be mistaken as such prior designs by an ordinary observe (World
Intellectual Property Organization, 2004).

A. INVENTION

Term or duration of a patent

It shall be twenty (20) years from the filing date of the application (Sec. 54, IPC).
Right to a patent
The right to a patent belongs to the inventor, his heirs, or assigns. When two (2) or more
persons have jointly made an invention, the right to a patent shall belong to them jointly (Sec.
28, IPC).
Q: May patent rights be assigned or transferred?
A: YES. For a valid assignment of patent rights, the assignment must be in writing and must
be duly notarized (IPC, Sec. 105).

Patentable inventions
Any technical solution of a problem in any field of human activity which is:
new;
involves an inventive step; and
is industrially applicable.
It may be, or may relate to, a product, or process, or an

1. novelty

General Rule: When a work has already been made available to the public, it shall be non-
patentable for absence of novelty.
Exception: Doctrine of Non-Prejudicial Disclosure

DOCTRINE OF NON-PREJUDICIAL DISCLOSURE

The disclosure of information contained in the application during the twelve (12) months
preceding the filing date or the priority date of the application shall not prejudice the
applicant on the ground of lack of novelty if such disclosure was made by:
The inventor;
A patent officer and the information was contained (a) in another publication filed by the
inventor and should not have been disclosed by the office, or (b) in an application filed,
without the knowledge or consent of the inventor, by a third party who obtained the
information directly or indirectly from the inventor; or
A third party who obtained the information directly or indirectly from the inventor. (IPC, Sec.
25)

If the disclosure was made by the designer in the case of industrial design, the period is 6
months. In other words, the application must be filed within 6 months after disclosure for it
to be non- prejudicial.

Doctrine of prejudicial disclosure

The right to patent arises from application date. If the inventor voluntarily discloses his
creation, such as by offering it for sale, the world is free to copy and use it with impunity.
Ideas, once disclosed to the public without the protection of a valid patent, are subject to
appropriation without significant restraint. (Pearl & Dean, Inc. v. Shoemart, Inc., 409 SCRA
231, August 15, 2003).

II. INVENTIVE STEP

General Rule: An invention involves an inventive step if, having regard to prior art, it is not
obvious to a person skilled in the art at the time of the filing date or priority date of the
application claiming the invention (IPC Sec. 26).
Exception: In the case of drugs and medicines, there is no inventive step if the invention
results from the mere discovery of a new form or new property of a known substance which
does not result in the enhancement of the known efficacy of that substance (IPC, as
amended by R.A. 9502, Sec. 26.2).

TEST OF NON-OBVIOUSNESS

If any person possessing ordinary skill in the art was able to draw the inferences and he
constructs that the supposed inventor drew from prior art, then the latter did not really invent
it.
Person skilled in the art
A person skilled in the art is a person with ordinary skills in a certain art or field, who is aware
of what is a common general knowledge in the field at the time of the application. “He is
presumed to have knowledge of all references that are sufficiently related to one another
and to the pertinent art and to have knowledge of all arts reasonably pertinent to the
particular problems with which the inventor was involved. He is presumed also to have had
at his disposal the normal means and capacity for routine work and experimentation”
(Revised IRR for R.A. No. 8293, Rule 207).

III. INDUSTRIAL APPLICABILITY

An invention that can be produced and used in any industry meets the industrial application
requirement of patent registrability. This means an invention is not merely theoretical, but
also has a practical purpose. If the invention is a product, it should be able to produce a
product and if the invention is a process, it should be able to lay out a process (WIPO, IP
Handbook 2nd Edition, Chapter 2: “Fields of Intellectual Property Protection” Publication No.
489 (E), p. 18).

B. Utility models

A name given to inventions in the mechanical field.

Utility models differ from inventions for which patents for invention are available mainly in
two respects. First, the technological progress required is smaller than the technological
progress (“inventive step”) required in the case of an invention for which a patent for
invention is available. Second, the maximum term of protection provided in the law for a
utility model is generally much shorter than the maximum term of protection provided in the
law for an invention for which a patent for invention is available (WIPO Handbook, Chapter 2,
“Fields of Intellectual Property Protection”, WIPO Publication No. 489 (E), 2nd Edition, p. 40.).
Term of a utility model
Seven (7) years from date of filing of the application (IPC, Sec. 109.3).

NON-PATENTABLE INVENTIONS
The following are non-patentable inventions (IPC as amended by R.A. 9502, Sec. 22):
Methods for treatment of the human or animal body by surgery or therapy and diagnostic
methods practiced on the human or animal body. This provision shall not apply to products
and composition for use in any of these methods;
Aesthetic creations
Plant varieties or animal breeds or essentially biological process for the production of plants
or animals. This provision shall not apply to micro- organisms and non-biological and
microbiological processes
Schemes, rules and methods of performing mental acts, playing games or doing business,
and programs for computers
Anything which is contrary to public order or morality
In the case of drugs and medicines, mere discovery of a new form or new property of a
known substance which does not result in the enhancement of the efficacy of that
substance or the new use for a known substance, or the mere use of a known process
unless such known process results in a new product that employs atleast one new reactant
Discoveries, scientific theories and mathematical methods

Ownership of patent

Persons entitled to a patent :

Inventor, his heirs, or assigns (IPC, Sec 28)
Joint invention – Jointly by the inventors (IPC, Sec. 28)
Two or more persons invented separately and independently of each other – To the person
who filed an application
Two or more applications are filed – the applicant who has the earliest filing date or, the
earliest priority date. (First to file rule) (IPC, Sec. 29).

Steps in the registration of a patent

The procedure for the grant of patent may be summarized as follows:
Filing of the application
Accordance of the filing date
Formality examination
Classification and Search
Publication of application
Substantive examination
Grant of Patent
Publication upon grant
Issuance of certificate (Salao, 2008)

GROUNDS FOR THE CANCELLATION OF THE PATENT

Any interested party may petition to cancel any patent or any claim or parts of a claim any of
the following grounds:
Invention is not new or patentable;
Patent does not disclose the invention in a manner sufficiently clear and complete for it to be
carried out by any person skilled in the art;
The patent is contrary to public order or morality (IPC, Sec. 61.1);
The patent is found invalid in an action for infringement (IPC, Sec. 82); or
The patent includes matters outside the scope of the disclosure contained in the application
(IPC, Sec 21, Regulations on Inter Partes Proceeding, Sec.1).
NOTE: If the ground for cancellation relates to some of the claims or parts of the claim only,
cancellation may be effected to such extent only (IPC, Sec. 61.2).

Remedies of the actual owner/inventor

If a person other than the applicant is declared by final court order or decision as having the
right to a patent, he may within 3 months after such decision has become final:
Prosecute the application as his own
File a new patent application
Request the application to be refused; or
Seek cancellation of the patent (IPC, Sec. 67.1)
Time to file action in court:
The actions indicated in Sections 67 and 68 shall be filed within one (1) year from the date of
publication made in accordance with Sections 44 and 51, respectively (IPC, Sec. 70).

PATENT INFRINGEMENT

Civil Infringement

The making, using, offering for sale, selling, or importing a patented product or a product
obtained directly or indirectly from a patented process, or the use of a patented process
without the authorization of the patentee constitutes patent infringement.

Exemptions to civil infringement

Parallel importation for patented drugs and medicines;

A parallel importer is one who imports, distributes, and sells genuine products in the market,
independently of an exclusive distributorship or agency agreement with the manufacturer;
In the case of drugs and medicines, where the act includes testing, using, making or selling
the invention including any data related thereto, solely for purposes reasonably related to the
development and submission of information and issuance of approvals by government
regulatory agencies required under any law of the Philippines or of another country that
regulates the manufacture, construction, use or sale of any product;
Compulsory licensing; and
Use of Invention by Government;
Procedures on Issuance of a Special
Compulsory License under the TRIPS Agreement for patented drugs and medicines.
Contributory Infringement
Anyone who actively induces the infringement of a patent or provides the infringer with a
component of a patented product or of a product produced because of a patented process
knowing it to be especially adopted for infringing the patented invention and not suitable for
substantial non- infringing use shall be liable as a contributory infringer and shall be jointly
and severally liable with the infringer (Sec. 76.6, IPC).
To succeed on a claim of inducement, patentee must show, first that there has been direct
infringement, and second, that the alleged infringer knowingly induced infringement and
possessed of specific intent to encourage another’s infringement. (Amador, 2007)

Criminal Infringement
If infringement is repeated by the infringer or by anyone in connivance with him after finality
of the judgment of the court against the infringer, the offenders shall, without prejudice to
the institution of a civil action for damages, be criminally liable (IPC, Sec. 84).
The criminal liability will arise only if the infringement is repeated, even if after the finality of
judgment of the court in the civil action against the infringer or anyone in connivance with
him,

TESTS IN DETERMINING INFRINGEMENT

Literal Infringement:

To determine whether the particular item falls within the literal meaning of the patent claims,
the Court must compare the claims of the patent and the accused product within the overall
context of the claims and specifications, to determine whether there is exactly identity of all
material elements.

Doctrine of Equivalents
Account shall be taken of elements which are equivalent to the elements expressed in the
claims, so that a claim shall be considered to cover not only all the elements expressed
therein, but also equivalents (Sec. 75, IPC).

According to the doctrine of equivalents, an infringement also occurs when a device

appropriates a prior invention by incorporating its innovative concept and, despite some
modification and change, performs substantially the same function in substantially the same
way to achieve substantially the same result.

Trademark

Any visible sign capable of distinguishing the goods (trademark) or services (service mark)
of an enterprise and shall include a stamped or marked container of goods.
Purposes of trademark:
To indicate origin or ownership of the articled to which they are attached
To guarantee that those articles come up to a certain standard of quality
To advertise the articles they symbolized (Mirpuri v. CA, 318 SCRA 516, November 19, 1999)
Marks that may be registered

Any word, name, symbol, emblem, device, figure, sign, phrase, or any combination thereof
except those enumerated under Section 123, IPC.

NON-REGISTRABLE MARKS

Consists of immoral, deceptive or scandalous matter or falsely suggest a connection with

persons, institutions, beliefs, or national symbols
Consists of the flag or coat of arms or other insignia of the Philippines or any of its political
subdivisions, or of any foreign nation.
Consists of a name, portrait or signature identifying a particular living individual except by his
written consent, or the name, signature, or portrait of a deceased President of the Philippines,
during the life of his widow except by written consent of the widow.

Identical with a registered mark belonging to a different proprietor or a mark with an earlier
filing or priority date, in respect of:

The same goods or services;

Closely related goods or services; or
If it nearly resembles such a mark as to be likely to deceive or cause confusion.
5. Is identical with an internationally well-known mark, whether or not it is registered here,
used for identical or similar goods or services Provided, that in determining whether a mark
is well-known, account shall be taken of;
6. Is identical with an internationally well-known mark which is registered in the Philippines
with respect to non-similar goods or services. Provided, that the interests of the owner of the
registered mark are likely to be damaged by such use.
7. Is likely to mislead the public as to the nature, quality, characteristics or geographical
origin of the goods or services.
8. Consists exclusively of signs that are generic for the goods or services that they seek to
identify.
9. Consists exclusively of signs that have become customary or usual to designate the
goods or services in everyday language and established trade practice.
10. Consists exclusively that may serve in trade to designate the kind, quality, quantity,
intended purpose, value, geographical origin, time or production of the goods or rendering of
the services, or other characteristics of the goods or services.
11. Consists of shapes that may be necessitated by technical factors or by the nature of the
goods themselves or factors that affect their intrinsic value.
12. Consists of color alone, unless defined by a given form.
13. Is contrary to public order or morality (IPC, Sec. 123)
KINDS OF TERMS:
1. Generic terms are those which constitute "the common descriptive name of an article or
substance," or comprise the "genus of which the particular product is a species," or are
"commonly used as the name or description of a kind of goods,” or "imply reference to every
member of a genus and the exclusion of individuating characters," or "refer to the basic
nature of the wares or services provided rather than to the more idiosyncratic characteristics
of a particular product," and are not legally protectable.
2. Descriptive terms, as understood in its normal and natural sense, it "forthwith conveys the
characteristics, functions, qualities or ingredients of a product to one who has never seen it
and does not know what it is," or "if it forthwith conveys an immediate idea of the ingredients,
qualities or characteristics of the goods," or if it clearly denotes what goods or services are
provided in such a way that the consumer does not have to exercise powers of perception or
imagination, and therefore invalid as a trademark.
3. Suggestive terms are those which, in the phraseology of one court, require "imagination,
thought and perception to reach a conclusion as to the nature of the goods." Such terms,
"which subtly connote something about the product," are eligible for protection in the
absence of secondary meaning. While suggestive marks are capable of shedding "some
light" upon certain characteristics of the goods or services in dispute, they nevertheless
involve "an element of incongruity,” “figurativeness," or " imaginative effort on the part of the
observer."

DOCTRINE OF SECONDARY MEANING: "Under the doctrine of secondary meaning, a word or

phrase originally incapable of exclusive appropriation with reference to an article in the
market, because geographical or otherwise descriptive might nevertheless have been used
so long and so exclusively by one producer with reference to this article that, in that trade
and to that group of the purchasing public, the word or phrase has come to mean that the
article was his produce. (Ana Ang vs. Toribio Teodoro, 74 Phil. 56)

RIGHTS OVER A TRADEMARK CONFERRED

The rights in a mark shall be acquired through registration made validly in accordance with
the provisions of the IP Code (Sec. 122, IPC). The filing date of application is the operative
act to acquire trademark rights.

Actual prior use in commerce in the Philippines has been abolished as a condition for the
registration of trademark.

Rights conferred to the owner of a registered owner

The owner of a registered mark shall have the exclusive right to:
Use the mark for one’s own goods or services;
Prevent third parties from using, without his consent, signs or containers which are identical
or similar to the registered trademark where such use would result in a likelihood of
confusion.
In case of the use of an identical sign for identical goods or services, a likelihood of
confusion shall be presumed (IPC, Secs. 147, 147.1).

Life of a registered mark

It remains in force for 10 years, subject to indefinite renewals of 10 years each.

The registrant is required to file a declaration of actual use and evidence to that effect, or
show valid reasons based on the existence of obstacles to such use, within one (1) year
from the fifth anniversary of the date of the registration of the mark. Otherwise, the mark
shall be removed from the Register by the IPO (IPC, Secs. 145 and 146).

Filing date of a foreign applicant

An application for registration of a mark filed in the Philippines by a foreign national of a

country with whom the Philippines extends reciprocity rights, and who previously duly filed
an application for registration of the same mark in one of those countries, shall be
considered as filed as of the day the application was first filed in the foreign country (IPL,
Sec. 131.1).
However, the owner of a well-known mark in the Philippines that is identical with, or
confusingly similar to, or constitutes a translation of a mark, although not registered, may
oppose the application of a mark of foreign origin, or petition the cancellation of its
registration or sue for unfair competition (IPC, Sec. 131.3).

Obligations under the paris convention

In view of the obligations under the Paris Convention, the Philippines is obligated to assure
nationals of the signatory-countries that they are afforded an effective protection against
violation of their intellectual property rights in the Philippines in the same way that their own
countries are obligated to accord similar protection to Philippine nationals. "Thus, under
Philippine law, a trade name of a national of a State that is a party to the Paris Convention,
whether or not the trade name forms part of a trademark, is protected "without the obligation
of filing or registration. Thus, the applicant for registration of trademark is not the lawful
owner thereof and is not entitled to registration if the trademark has been in prior use by a
national of a country which is a signatory to the Paris Convention.

Person who may file an opposition to application for trademark registration

Any person who believes that he would be damaged by the registration of a mark may, upon
payment of the required fee and within thirty (30) days after the publication referred to in
Subsection 133.2 of the IP Code, file with the IP Office an opposition to the application (IPC,
Sec. 134).
Admission of non-compliance with the requirement of filing a Declaration of Actual Use is
tantamount to a judicial admission of abandonment of trademark (Mattel, Inc. v. Francisco,
G.R. No. 166886, July 30, 2008).
Periods for the submission of Declaration of Actual Use and proof of use:
three (3) years from the filing date of the application; and
one (1) year from the 5th anniversary of the date of registration of the mark.

SIMILARITY BETWEEN MARKS

The likelihood of confusion is a relative concept to be determined only according to the

particular and sometimes peculiar circumstances of each case. In trademark cases, even
more than in any other litigation, precedent must be studied in light of the facts of the
particular case. The wisdom of the likelihood of confusion test lies in its recognition that
each trademark infringement case presents its own unique set of facts.
Two (2) types of confusion
Confusion of Goods – The ordinarily prudent purchaser would be induced to purchase one
product in the belief that he was purchasing the other.
Confusion of Origin (Confusion of Business) – The goods of the parties are different, the
defendant’s product is such as might reasonably be assumed to originate from the plaintiff,
and the public would then be deceived either into that belief or into the belief that there is
some connection between the plaintiff and defendant which, in fact, does not exist.

Two tests to determine colorable imitation

DOMINANCY TEST:
It focuses on the similarity of the prevalent features of the competing marks. If the
competing trademark contains the main, essential or dominant features of another, and
confusion and deception are likely to result, infringement takes place. Duplication or
imitation is not necessary; nor is it necessary that the infringing label should suggest an
effort to imitate (C. Neilman Brewing Co. v. Independent Brewing Co., 191 F. 489, 495, citing
Eagle White Lead Co. vs. Pflugh [CC] 180 FED. 579).
The question is whether the use of marks involved is likely to cause of confusion or mistake
in the mind of the public or deceive purchasers.

TOTALITY OR HOLISTIC TEST:

Confusing similarity is to be determined on the basis of visual, aural, connotative
comparisons and overall impressions engendered by the marks in controversy as they are
encountered in the marketplace.
The trademarks in their entirety as they appear in their respective labels are considered in
relation to the goods to which they are attached. The discerning eye of the observer must
focus not only on the predominant words but also on the other features appearing in both
labels in order that he may draw his conclusion whether one is confusingly similar to the
other (Bristol Myers Co. vs. Director of Patents, 17 SCRA 131; See also Fruit of the Loom Inc.
vs. CA, GR No. L-32747, November 29, 1984).
The dominancy test only relies on visual comparisons between two trademarks whereas the
totality or holistic test relies not only on the visual but also on the aural and connotative
comparisons and overall impressions between the two trademarks (Societe Des Produits
Nestl, S.A. v. CA, G.R. No. 112012, Apr. 4, 2001).
Tests to determine well-known marks (theory of dilution)

A junior user of a well-known mark on goods or services which are not similar to the goods
or services, and are therefore unrelated, to those specified in the certificate of registration of
the well-known mark is precluded from using the same on the entirely unrelated goods or
services, subject to the following requisites, to wit:

1. The mark is well-known internationally and in the Philippines;

2.. The use of the well-known mark on the entirely unrelated goods or services would result
to the likelihood of confusion of origin or business or some business connection or
relationship between the registrant and the user of the mark; and
3. The interests of the owner of the well-known mark are likely to be damaged (246
Corporation, doing business under the name and style of Rolex Music Lounge v. Hon.
Reynaldo B. Daway, in his capacity as Presiding Judge of RTC Branch 90, Quezon City, G.R.
No. 157216, November 20, 2003).

INTERNATIONALLY WELL-KNOWN MARKS

Considered by the competent authority of the Philippines to be “well-known” internationally

and in the Philippines as the mark of a person other than the applicant or registrant;
Need not be used or registered in the Philippines; and
Need not be known by the public at large but only by relevant sector of the public.

RULES REGARDING INTERNATIONALLY WELL-KNOWN MARKS

A mark cannot be registered if it is identical with, or confusingly similar to, or constitutes a

translation of a mark which is considered by the competent authority of the Philippines to be
well- known internationally and in the Philippines, whether or not it is registered here, as
being already the mark of a person other than the applicant for registration, and used for
identical or similar goods or services: Provided, That in determining whether a mark is well-
known, account shall be taken of the knowledge of the relevant sector of the public, rather
than of the public at large, including knowledge in the Philippines which has been obtained
as a result of the promotion of the mark.

EXAMPLES OF TRADEMARK INFRINGEMENT

It is the right of literary property as recognized and sanctioned by positive law. An intangible,
incorporeal right granted by statute to the author or originator of certain literary or artistic
productions, whereby he is invested, for a specific period, with the sole and exclusive
privilege of multiplying copies of the same and publishing and selling them. (Black’s Law
Dictionary)
In the Philippines, the owner of a work subject of a copyright is granted exclusive economic
and moral rights.
"Author" is the natural person who has created the work;
A "collective work" is a work which has been created by two (2) or more natural persons at
the initiative and under the direction of another with the understanding that it will be
disclosed by the latter under his own name and that contributing natural persons will not be
identified.

"Communication to the public" or "communicate to the public" means any communication to

the public, including broadcasting, rebroadcasting, retransmitting by cable, broadcasting and
retransmitting by satellite, and includes the making of a work available to the public by wire
or wireless means in such a way that members of the public may access these works from a
place and time individually chosen by them.
"Public lending" is the transfer of possession of the original or a copy of a work or sound
recording for a limited period, for non-profit purposes, by an institution the services of which
are available to the public, such as public library or archive.

“Published works" means works, which, with the consent of the authors, are made available
to the public by wire or wireless means in such a way that members of the public may
access these works from a place and time individually chosen by them:
Provided, That availability of such copies has been such, as to satisfy the reasonable
requirements of the public, having regard to the nature of the work.

ORIGINAL WORKS: Literary and artistic works, hereinafter referred to as "works", are original
intellectual creations in the literary and artistic domain protected from the moment of their
creation and shall include in particular:
1. Books, pamphlets, articles and other writings;
2. Periodicals and newspapers;
3. Lectures, sermons, addresses, dissertations prepared for oral delivery, whether or not
reduced in writing or other material form;
4. Letters;
5. Dramatic or dramatico-musical compositions; choreographic works or entertainment in
dumb shows;

6. Musical compositions, with or without words;

7. Works of drawing, painting, architecture, sculpture, engraving, lithography or other works
of art; models or designs for works of art;
8. Original ornamental designs or models for articles of manufacture, whether or not
registrable as an industrial design, and other works of applied art;
9. Illustrations, maps, plans, sketches, charts and three-dimensional works relative to
geography, topography, architecture or science;
10. Drawings or plastic works of a scientific or technical character;

11. Photographic works including works produced by a process analogous to photography;

lantern slides;
12. Audiovisual works and cinematographic works and works produced by a process
analogous to cinematography or any process for making audio-visual recordings;
13. Pictorial illustrations and advertisements;
14. Computer programs; and
15. Other literary, scholarly, scientific and artistic works.

PROTECTION COMMENCES: from the moment of creation, irrespective of the mode or form
expression, as well as the content, quality or purpose.
DERIVATIVE WORKS: The following are derivative works which shall also be protected by
copyright:
1. Dramatizations, translations, adaptations, abridgments, arrangements, and other
alterations of literary or artistic works; and
2. Collections of literary, scholarly or artistic works, and compilations of data and other
materials which are original by reason of the selection or coordination or arrangement of
their contents.

Derivative works shall be protected as a new works: Provided however, that such new work
shall not affect the force of any subsisting copyright upon the original works employed or
any part thereof, or be construed to imply any right to such use of the original works, or to
secure or extend copyright in such original works.

RIGHT OF PUBLISHER: In addition to the right to publish granted by the author, his heirs or
assigns, the publisher shall have copyright consisting merely of the right of reproduction of
the typographical arrangement of the published edition of the work.
“Reproduction" is the making of one (1) or more copies of a work or a sound recording in any
manner or form.

WORKS NOT PROTECTED: no protection shall extend to:

1. Any idea
2. Procedure
3. System method or operation,
4. Concept
5. Principle
6. Discovery or
7. Mere data as such, even if they are expressed, explained, illustrated or embodied in a work
8. News of the day and other miscellaneous facts having the character of mere items of
press information; or
9. Any official text of a legislative, administrative or legal nature, as well as any official
translation thereof

WORKS NOT PROTECTED: no protection shall extend to:

1. Any idea
2. Procedure
3. System method or operation,
4. Concept
5. Principle
6. Discovery or
7. Mere data as such, even if they are expressed, explained, illustrated or embodied in a work
8. News of the day and other miscellaneous facts having the character of mere items of
press information; or
9. Any official text of a legislative, administrative or legal nature, as well as any official
translation thereof

ECONOMIC RIGHTS OF AN AUTHOR: shall consist of the exclusive right to carry out,
authorize or prevent the following acts:
Reproduction of the work or substantial portion of the work;
Dramatization, translation, adaptation, abridgment, arrangement or other transformation of
the work;
The first public distribution of the original and each copy of the work by sale or other forms
of transfer of ownership;
Rental of the original or a copy of an audiovisual or cinematographic work, a work embodied
in a sound recording, a computer program, a compilation of data and other materials or a
musical work in graphic form, irrespective of the ownership of the original or the copy which
is the subject of the rental; (n)
Public display of the original or a copy of the work;
Public performance of the work; and
Other communication to the public of the work

LIMITATIONS ON COPYRIGHT: The following acts shall not constitute infringement of

copyright:
1. The reproduction or distribution of published articles or materials in a specialized format
exclusively for the use of the blind, visually and reading-impaired persons: Provided, that
such copies and distribution shall be made on a non- profit basis and shall indicate the
copyright owner and the date of the original publication.
2. The recitation or performance of a work, once it has been lawfully made accessible to the
public, if done privately and free of charge or if made strictly for a charitable or religious
institution or society;
3. The making of quotations from a published work if they are compatible with fair use and
only to the extent justified for the purpose, including quotations from newspaper articles and
periodicals in the form of press summaries: Provided, That the source and the name of the
author, if appearing on the work, are mentioned;

4. The reproduction or communication to the public by mass media of articles on current

political, social, economic, scientific or religious topic, lectures, addresses and other works
of the same nature, which are delivered in public if such use is for information purposes and
has not been expressly reserved: Provided, That the source is clearly indicated;
5. The reproduction and communication to the public of literary, scientific or artistic works
as part of reports of current events by means of photography, cinematography or
broadcasting to the extent necessary for the purpose;
6. The inclusion of a work in a publication, broadcast, or other communication to the public,
sound recording or film, if such inclusion is made by way of illustration for teaching
purposes and is compatible with fair use: Provided, That the source and of the name of the
author, if appearing in the work, are mentioned;

FAIR USE OF A COPYRIGHT WORK: The fair use of a copyrighted work for criticism,
comment, news reporting, teaching including limited number of copies for the classroom use,
scholarship, researched, and similar purposes is not an infringement of copyright.
In determining whether the use made of a work in any particular case is fair use, the factors
to be considered shall include:
1. The purpose and character of the use, including whether such use is of a commercial
nature or is for non-profit education purposes;
2. The nature of the copyrighted work;
3. The amount and substantiality of the portion used in relation to the copyrighted work as a
whole; and
4. The effect of the use upon the potential market for or value of the copyrighted work.

Reproduction of Published Work:

1. Reproduction of a single copy: The private reproduction of a published work in a single

copy shall be permitted, without the authorization of the owner of copyright in the work.
where:
a. The reproduction is made by a natural person
b. Exclusively for research and private study
EXCEPT: The permission granted shall not extend to the reproduction of:
a. A work of architecture in form of building or other construction;
b. An entire book, or a substantial past thereof, or of a musical work in which graphics form
by reprographic means;
c. A compilation of data and other materials;
d. Any work in cases where reproduction would unreasonably conflict with a normal
exploitation of the work or would otherwise unreasonably prejudice the legitimate interests
of the author;
e. A computer program*;

*Exception: the reproduction in one (1) back-up copy or adaptation by the lawful owner of
that computer program:
Provided, That the copy or adaptation is necessary for:
i. The use of the computer program in conjunction with a computer for the purpose, and to
the extent, for which the computer program has been obtained; and
ii. Archival purposes, and, for the replacement of the lawfully owned copy of the computer
program in the event that the lawfully obtained copy of the computer program is lost,
destroyed or rendered unusable

Ownership of the copyright

MORAL RIGHTS: The author of a work shall, independently of the economic rights or the
grant of an assignment or license
with respect to such right, have the right:
1. To require that the authorship of the works be attributed to him, in particular, the right that
his name, as far as practicable, be indicated in a prominent way on the copies, and in
connection with the public use of his work;
2. To make any alterations of his work prior to, or to withhold it from publication;
3. To object to any distortion, mutilation or other modification of, or other derogatory action
in relation to, his work which would be prejudicial to his honor or reputation; and
4. To restrain the use of his name with respect to any work not of his own creation or in a
distorted version of his work.

MORAL RIGHTS: The author of a work shall, independently of the economic rights or the
grant of an assignment or license
with respect to such right, have the right:
1. To require that the authorship of the works be attributed to him, in particular, the right that
his name, as far as practicable, be indicated in a prominent way on the copies, and in
connection with the public use of his work;
2. To make any alterations of his work prior to, or to withhold it from publication;
3. To object to any distortion, mutilation or other modification of, or other derogatory action
in relation to, his work which would be prejudicial to his honor or reputation; and
4. To restrain the use of his name with respect to any work not of his own creation or in a
distorted version of his work.

Waiver of Moral Rights: An author may waive his rights mentioned above by a written
instrument, but no such waiver shall be valid where its effects is to permit another:
1. To use the name of the author, or the title of his work, or otherwise to make use of his
reputation with respect to any version or adaptation of his work which, because of
alterations therein, would substantially tend to injure the literary or artistic reputation of
another author; or
2. To use the name of the author with respect to a work he did not create.

Term of Moral Rights: The moral rights of the author shall last during the lifetime of the
author and for fifty (50) years after his death and shall not be assignable or subject to
license except the right of attribution (no. 1) which shall be in perpetuity.
Rights to Proceeds in Subsequent Transfers: In every sale or lease of an original work of
painting or sculpture or of the original manuscript of a writer or composer, subsequent to the
first disposition thereof by the author, the author or his heirs shall have an inalienable right to
participate in the gross proceeds of the sale or lease to the extent of five percent (5%). This
right shall exist during the lifetime of the author and for fifty (50) years after his death.
The above shall not apply to prints, etchings, engravings, works of applied art, or works of
similar kind wherein the author primarily derives gain from the proceeds of reproductions.

Term of protection

CALCULATION OF TERM: The term of protection subsequent to the death of the author shall
run from the date of his death or of publication, but such terms shall always be deemed to
begin on the first day of January of the year following the event which gave rise to them.

Copyright infringement

COPYRIGHT INFRINGEMENT: A person infringes a right protected when one:

1. Directly commits an infringement;
2. Benefits of the infringing activity of another person who commits an infringement if the
person benefiting has been giving
notice of the infringing activity and has the right and ability to control the activities of the
other person;
3. With knowledge of infringing activity induces, cause or materially contributes to the
infringing conduct of another.