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During the Marcos administration,
Presidential Decree No. 49 (1972) replaced
Act No. 3134.
BUSINESS PROTECTION LAWS The Philippines joined key international
agreements such as the Berne Convention
Instructor: Atty. Alvinson Dayrit
(1951) and the WIPO Convention (1980).
The 1987 Constitution emphasized IP
protection, and the country aligned with
MODULE 1 global standards by joining TRIPS (1995).
To consolidate its IP laws, the government
A. WHAT IS INTELLECTUAL PROPERTY? passed RA 8293 (1997), which remains the
foundation of modern IP law in the
- "Intellectual Property (IP)" is the term used to Philippines.
describe intangible assets resulting from the
creative work of an individual or organization. C. STATE POLICY
- IP also refers to creations of the mind, such as The Philippine government recognizes that
inventions, literary and artistic works, and a strong intellectual and industrial property
symbols, names, images and designs used in system is essential for fostering creativity,
commerce. technology transfer, foreign investment, and
market access. The State guarantees
B. HISTORY OF THE IP LAWS IN THE exclusive rights to scientists, inventors, and
PHILIPPINES artists for their intellectual property,
especially when it benefits the public.
SUMMARY Intellectual property serves a social
The Intellectual Property Code of the function, and the State promotes knowledge
Philippines (RA 8293) became effective on dissemination for national development and
January 1, 1998, but the country’s the common good. Additionally, the
intellectual property (IP) system dates back government aims to simplify registration
to the Spanish colonial period. The Spanish procedures for patents, trademarks, and
Law on Intellectual Property (1879) copyrights, liberalize technology transfer
governed copyrights, while patent regulations, and strengthen the enforcement
applications were sent to Spain for of intellectual property rights.
approval.
Under American rule (1898–1946), the D. INTELLECTUAL PROPERTY RIGHTS
Treaty of Paris (1898) ensured continued 1. What does it consist of?
protection of existing IP rights. The The term “intellectual property rights”
Philippine legislature adopted U.S. patent consists of:
laws (1913) and enacted Act No. 3134 a) Copyright and Related Rights;
(1924), based on the U.S. Copyright Law of b) Trademarks and Service Marks;
1909. c) Geographic Indications;
After independence (1946), the Philippines d) Industrial Designs;
passed Republic Act 165 (patents) and e) Patents;
Republic Act 166 (trademarks) in 1947.
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f) Layout-Designs (Topographies) of A trademark protects a brand name or
Integrated Circuits; and product identifier,
g) Protection of Undisclosed Information (n,
TRIPS). (Sec. 4, IPC) A copyright protects creative works,
2. Differences between Copyright, A patent protects technical inventions.
Trademark, and Patent.
Simply registering a name or design under
copyright or patent law does not
Copyright Trademark Patent
automatically give exclusive rights to use it
A copyright A trademark is A patent as a trademark.
protects any visible protects
literary and sign capable of inventions that
artistic works distinguishing provide a
E. Functions Of The Intellectual Property
that are the goods technical Office (IPO)
original (trademark) or solution to a
intellectual services problem, To administer and implement the State
creations. (service mark) requiring
of an novelty, an policies declared in this Act, there is
It grants the enterprise. inventive step, hereby created the Intellectual Property
creator the and industrial Office (IPO) which shall have the
exclusive right It may also applicability. following functions:
to reproduce, include a
distribute, and stamped or It grants the
display their marked inventor the a. Examine applications for grant of letters
work but does container of exclusive right patent for inventions and register utility
not cover goods to produce,
models and industrial designs;
product names . use, or sell the
or containers. It serves as a invention for a
source certain period. b. Examine applications for the registration
In the case, the identifier, of marks, geographic indication, integrated
petitioner, ensuring that In the case,
circuits;
Elidad Kho, consumers Kho claimed
registered the associate a patent rights
name "Chin product with a over the Chin c. Register technology transfer
Chun Su" and particular Chun Su arrangements and settle disputes
its container manufacturer product, but
design as a or seller. the court
involving technology transfer payments
copyright, but clarified that covered by the provisions of Part II, Chapter
the court ruled In the case, the product names IX on Voluntary Licensing and develop and
that these were court ruled that and containers implement strategies to promote and
not proper the name and do not fall
subjects of container of under patents, facilitate technology transfer;
copyright Chin Chun Su as patents are
protection. are proper meant for d. Promote the use of patent information as
subjects of a inventions and a tool for technology development;
trademark and technical
not copyright improvements.
or patent
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e. Publish regularly in its own publication ● Must be new, inventive, and
the patents, marks, utility models and industrially applicable.
industrial designs, issued and approved, ● Can be a product, process, or an
and the technology transfer arrangements improvement of existing inventions.
registered;
2. Requisites for Patentability
f. Administratively adjudicate contested
proceedings affecting intellectual property ● Novelty: Must not be part of prior art
rights; and (Sec. 23-25, IPC).
● Inventiveness: Must not be obvious to a
g. Coordinate with other government skilled person in the field (Sec. 26, IPC).
agencies and the private sector efforts to ● Industrial Application: Must be usable
formulate and implement plans and policies in an industry (Sec. 27, IPC).
to strengthen the protection of intellectual
property rights in the country. (Sec. 5,IPC) 3. Non-Patentable Inventions (Sec. 22,
IPC)
● Scientific discoveries, mathematical
MODULE 2 methods.
● Business methods, computer programs.
● Medical treatments and diagnostic
methods.
I. Purpose of Patent Law ● Plant varieties, animal breeds, biological
processes.
1. Encourages innovation and rewards ● Aesthetic creations.
inventors. ● Anything against public order or
2. Promotes public disclosure to stimulate morality.
further innovation.
3. Ensures ideas in the public domain
remain free for public use.
IV. Ownership of a Patent
● The inventor, heirs, or assigns own the
II. Term of Patent patent (Sec. 28-30, IPC).
● First-to-File Rule: If multiple inventors
● A patent is valid for 20 years from the apply separately, the first filer gets the
filing date (Sec. 54, IPC). patent.
● Employer vs. Employee Ownership:
○ Employee owns it unless it was
III. Patentable vs. part of assigned duties.
Non-Patentable Inventions ○ Employer owns it if invention
resulted from regular duties.
1. Patentable Inventions (Sec. 21, IPC)
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○ Take over the application.
V. Important Rules in Patent
○ File a new application.
Protection ○ Request application refusal.
○ Seek patent cancellation (Sec.
1. Non-Prejudicial Disclosure (Sec. 25, 67, IPC).
IPC)
II. Rights Conferred by a
● Information disclosed within 12
months before the filing date does not Patent
affect novelty if:
○ Disclosed by the inventor. ● Patent owners have the exclusive right
○ Disclosed without the inventor’s to:
consent. ○ Make, use, sell, offer for sale, or
○ Published by a patent office in import the patented product.
another application. ○ Control the use of a patented
process.
2. Right of Priority (Sec. 31, IPC) ○ Assign, transfer, or license the
patent (Sec. 71, IPC).
● If an inventor has already applied for a
patent in another country, they can claim
the same filing date in the Philippines
III. Limitations on Patent
if: Rights
○ The local application claims
priority. Patent owners cannot prevent:
○ It is filed within 12 months of
the foreign application. 1. Use of a product sold with their consent.
○ A certified copy is submitted 2. Private, non-commercial use.
within 6 months. 3. Use for scientific or educational
research.
MODULE 3 4. Testing and approvals for drug
regulations.
5. Pharmacy preparation based on a
I. Remedies of the True and prescription.
6. Use in foreign ships, aircraft, or vehicles
Actual Inventor in transit (Sec. 72, IPC).
● If deprived of a patent through fraud, the 1. Prior User Rights
court may:
○ Substitute the true inventor as ● If an invention was used in good faith
the patentee. before the patent was filed, the user may
○ Cancel the patent. continue use but cannot transfer the
○ Award damages (Sec. 68, IPC). right separately from their business
● If another person is declared the rightful (Sec. 73, IPC).
owner, they may:
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2. Government Use of Patents 1. Tests for Patent Infringement
● The government can use a patented a. Literal Infringement
invention without the owner's consent
for: ● Occurs when the accused product
○ National security, health, directly copies every element of the
nutrition, or other public patent.
interests. ● The court compares the claims and the
○ Addressing anti-competitive product to see if they match exactly.
practices.
○ National emergency or b. Doctrine of Equivalents
extreme urgency.
● Even if there are minor modifications,
○ Ensuring public access to
infringement exists if the accused
essential drugs and medicines.
product:
○ When demand is not met at
○ Performs substantially the
reasonable terms (Sec. 74,
same function.
IPC).
○ Works in the same way.
○ Achieves the same result.
IV. Grounds for Patent
2. Defenses in Patent Infringement
Cancellation Cases
A patent can be canceled if:
● The accused can argue that the patent is
1. The invention is not new or patentable. invalid based on grounds for
2. The patent fails to disclose sufficient cancellation (Sec. 81, IPC).
details for others to reproduce it.
3. The patent is against public order or
morality (Sec. 61, IPC).
V. Patent Infringement
● Definition: Unauthorized making,
using, selling, or importing of a patented
product or process (Sec. 76, IPC).
● Exemptions:
○ Acts allowed under Section 72
(limitations on patent rights).
○ Government use under Section
74.
○ Compulsory licensing
provisions (Sec. 93, IPC).
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MODULE 4 III. Concept of Actual Use
● Before RA 8293, trademarks were
I. Types of Marks acquired through actual use.
● Under the Intellectual Property Code
MARKS COLLECTIVE TRADE (IPC), ownership is acquired through
MARKS NAME
registration.
● Continued actual use is required to
Any visible Any visible sign The
sign capable designated as such in name or maintain ownership.
of the application for designati ● Registration may be invalidated if:
distinguishing registration and on 1. The owner fails to use the
the goods capable of identifyi mark (non-use/abandonment).
(trademark) distinguishing the ng or 2. The registration was made in
or services origin or any other distingui bad faith.
(service common shing an 3. The mark becomes generic.
mark) of an characteristic, enterpris 4. The mark was wrongly
enterprise and including the quality e. (Sec.
registered (e.g., generic terms).
shall include a of goods or services 121.3,
5. The mark is used to mislead
stamped or of different IPC)
marked enterprises which use consumers.
container of the sign under the
goods. (Sec. control of the
121.1, IPC) registered owner of
IV. Effect of Registration
the collective mark.
(Sec. 121.2, IPC) ● Creates prima facie (first impression)
evidence of:
○ The validity of registration.
II. Acquisition of Trademark ○ The registrant’s ownership.
○ Exclusive right to use the mark.
Ownership (Sec. 138, IPC)
● Ownership is acquired through valid
registration, not merely by applying. V. Term of Trademark
(Sec. 122, IPC)
● Trademark registration does not
Registration
automatically grant ownership; actual
● A trademark registration lasts 10
ownership must be proven.
years.
● Foreign trademarks (even
● To maintain the registration, the owner
unregistered) are protected under the
must:
Paris Convention.
○ File a Declaration of Actual
● Exclusive distributors do not own
Use (DAU) within one year
trademarks unless explicitly agreed.
after the 5th anniversary of
● Trade names do not require
registration.
registration to be protected, but must be
○ Provide evidence of use or valid
previously used in commerce.
reasons for non-use.
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○ Failure to comply results in meaning (i.e., recognized by consumers
removal from the Register. as a brand rather than just a location).
(Sec. 145, IPC) (Shang Properties Realty Corp. v. St.
Francis Dev. Corp., 2014)
MODULE 5
3. Generic, Descriptive, and Suggestive
Terms
I. Registrable and
● Generic terms (e.g., "coffee" for coffee
Non-Registrable Marks products) cannot be exclusively
registered.
A mark cannot be registered if it:
● Descriptive terms may be allowed only
1. Contains immoral, deceptive, or if they acquire distinctiveness over
scandalous matter. time. (Societe des Produits Nestlé v.
2. Uses national symbols, such as flags or Puregold, 2017)
coats of arms.
3. Includes a name, portrait, or 4. Well-Known Marks
signature of a living person without
consent. ● Well-known international marks are
4. Is identical or similar to a registered protected in the Philippines even if
mark, causing confusion. unregistered. (Dy v. Koninklijke Philips
5. Resembles a well-known international Electronics, 2017)
or Philippine mark.
6. Misleads the public about the product’s 5. Strength of a Mark (Kolin
nature or origin. Electronics v. Kolin Philippines, 2021)
7. Is generic, customary, or commonly
used in trade. Marks are ranked by distinctiveness:
8. Uses a functional shape or a single
1. Fanciful (strongest) – Made-up words
color without distinction.
(e.g., "Kodak").
9. Is contrary to public order or
2. Arbitrary – Common words unrelated
morality. (Sec. 123, IPC)
to the product (e.g., "Apple" for
computers).
1. Surnames
3. Suggestive – Hints at a product’s nature
● Personal names/surnames cannot be (e.g., "Sunny" for lamps).
monopolized as trademarks unless 4. Descriptive – Directly describes the
associated with a specific brand. product (e.g., "Fast Car").
(Emerald Garment Mfg. Corp. v. CA, 5. Generic (weakest) – Common product
1995) names (e.g., "Chair" for chairs).
2. Descriptive Geographical Terms II. Rights Conferred by
● Geographic terms cannot be registered Trademark Registration
unless they have acquired secondary
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● Trademark owners can prevent third 2. When to File?
parties from using identical or similar
marks if it leads to consumer confusion. A petition may be filed:
(Sec. 147, IPC)
● Exceptions: Importation of generic ● Within 5 years from registration. (Sec.
drugs and off-patent medicines is 151.1(a), IPC)
allowed if the registered trademark ● At any time if:
remains intact. 1. The mark becomes generic.
2. The mark is abandoned.
3. Registration was obtained
III. Likelihood of Confusion: fraudulently or in violation of
Tests Used the law.
4. The mark misrepresents the
source of goods/services.
1. Dominancy Test (McDonald's v. Big 5. The mark is not used for 3
Mak, 2004) years or more without a
legitimate reason.
● Focuses on the main features of the
mark (e.g., "Big Mak" vs. "Big Mac").
● If the dominant part of a mark is
copied, confusion is likely. (Great
White Shark v. Caralde, 2012) II. Trademark Infringement
& Unfair Competition
2. Holistic/Totality Test (Del Monte v.
CA) 1. Key Differences
● Considers the entire mark, including
packaging, font, and design. Trademark Unfair
● Less used today; Dominancy Test is Infringement Competition
preferred. (Kolin Electronics v. Kolin
Philippines, 2021)
Unauthorized use of a Passing off one’s
MODULE 6 registered trademark. goods as
another’s.
I. Cancellation of Trademark
Registration Fraudulent intent is Fraudulent intent
not required. is essential.
1. Where to File?
● A petition to cancel a trademark must Prior registration is Prior registration
be filed with the Bureau of Legal required. is not required.
Affairs. (Sec. 151.1, IPC)
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(Co v. Yeung, G.R. No. 212705, 2014)
MODULE 7
2. Elements of Trademark
Infringement I. What is Copyright?
To prove infringement, the plaintiff must show: ● The exclusive right to print, publish,
copy, distribute, and sell works.
1. The mark is valid. (Microsoft Corp. v. Manansala, 2015)
2. The plaintiff owns the mark. ● Requires fixation (must be embodied in
3. The defendant’s use of a similar mark a tangible medium). (WIPO)
causes consumer confusion. (Superior ● Copyright is separate from physical
Commercial Enterprises v. Kunnan, ownership of an object (e.g., buying a
2010) book does not transfer copyright). (Sec.
181, IPC)
3. Elements of Unfair Competition ● No registration needed—protection
begins upon creation. (Sec. 172.2, IPC)
1. Confusing similarity in product
appearance.
2. Intent to deceive the public and
defraud a competitor. (Co v. Yeung,
2014) II. Copyrightable Works
● Confusion does not have to result (Sec. 172-173, IPC)
from identical trademarks; similar
packaging or branding may also
mislead consumers. (In-N-Out Burger v.
1. Original Works
Sehwani, 2008)
● Books, articles, newspapers.
● Speeches, lectures, letters.
● Musical, dramatic, artistic, and
audiovisual works.
III. Related vs. Unrelated ● Computer programs.
● Maps, illustrations, architectural works,
Goods in Trademark and scientific drawings.
Conflicts
2. Derivative Works
● Even if products are different,
confusion can still occur if consumers ● Translations, adaptations, and
associate them with a common origin. compilations.
(Che v. PPO, 1965) ● Derivative works must respect
● Products sold in different markets original copyrights (Sec. 173, IPC).
(e.g., gasoline vs. cigarettes) are less
likely to be confused. (Esso Standard
Eastern v. CA, 1982)
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III. Non-Copyrightable 1. General Rule
Works (Sec. 175-176, IPC) ● Copyright belongs to the author.
● Ideas, procedures, methods, and 2. Joint Works
principles.
● News and facts. ● Co-authors share ownership, unless
● Official government texts and laws. parts can be used separately.
● Government works (except when used
for profit, subject to approval). 3. Employee-Created Works
● Employee owns it if not part of
regular duties, even if company
resources were used.
IV. Rights Conferred by ● Employer owns it if created as part of
Copyright assigned duties.
1. Economic Rights (Sec. 174, IPC) 4. Commissioned Works
The copyright owner has exclusive rights to: ● Person who commissions the work
owns the physical copy, but copyright
● Reproduce the work. remains with the creator unless there
● Translate, adapt, or transform it. is a written agreement.
● Distribute, sell, rent, or publicly
display copies. 5. Audiovisual Works
● Publicly perform or broadcast the
work. ● Copyright belongs to:
○ Producer
2. Moral Rights (Sec. 193, IPC) ○ Screenwriter
○ Composer
The author has the right to: ○ Film director
● Be recognized as the creator. 6. Anonymous & Pseudonymous
● Modify or withdraw the work.
Works
● Object to distortions that harm their
reputation. ● Publisher represents the author unless
● Prevent their name from being used on the author reveals their identity.
unauthorized works.
V. Ownership of Copyright
(Sec. 178-179, IPC)
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II. Limitations on Copyright
MODULE 8 (Sec. 184, IPC)
The following do not constitute copyright
I. Term of Copyright (Sec. infringement:
213-214, IPC) 1. Private & charitable performances
(non-commercial use).
2. Quotations for news, criticism, or
Type of Work Duration of Protection
research (must credit the author).
3. News reports & public speeches (if
used for information purposes).
Original & Life of the author + 50 4. Use for teaching & education (fair use
derivative works years after death applies).
5. Government & public interest use
(libraries, schools, scientific purposes).
Joint authorship 50 years after the last 6. Judicial proceedings & legal advice.
surviving author’s 7. Reproduction for the blind or visually
death impaired (non-profit basis).
● Use must not harm the normal
market value of the copyrighted
work.
Anonymous & 50 years from
pseudonymous publication or creation
works
III. Doctrine of Fair Use (Sec.
Works of applied 25 years from creation 185, IPC)
art
Fair use allows limited copying for:
● Criticism & commentary.
Photographs & 50 years from
● News reporting.
audiovisual works publication or creation
● Teaching & research.
● Scholarship & educational purposes.
● The copyright term always starts on Factors to determine fair use:
January 1 of the year following the
author’s death/publication. (Sec. 214, 1. Purpose & character of use
IPC) (commercial vs. educational).
● Moral rights last perpetually after the 2. Nature of the copyrighted work.
author’s death. (Sec. 198.1, IPC) 3. Amount & substantiality of the portion
used.
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4. Effect on market value of the original
work.
● No fair use applies if no copying is
proven. (ABS-CBN v. Gozon, 2015)
IV. Copyright Infringement
(Sec. 216, IPC)
A person commits infringement if they:
1. Directly copy or distribute copyrighted
material without permission.
2. Benefit from someone else’s
infringement while having control over
it.
3. Induce or assist in infringement.
Key Cases on Copyright Infringement
1. Piracy is a trespass on a copyright
owner’s rights. (Habana v. Robles,
1999)
2. Selling pirated software is enough to
prove infringement. (Microsoft v.
Manansala, 2015)
3. Playing copyrighted music in a
restaurant via radio/loudspeakers is
infringement. (FILSCAP v. Anrey, 2022
& Icebergs v. FILSCAP, 2023)
4. Unauthorized live performances &
background music in restaurants are
infringement. (Cosac v. FILSCAP,
2023)
● Even unintentional infringement is
still a violation. (Columbia Pictures v.
CA, 1996)
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