INTELLECTUAL PROPERTY LAW The agency of the government in charge of the

implementation of the Intellectual Property Code is

(RA NO. 8293) the Intellectual Property Office which replaced the
Bureau of Patents, Trademarks and Technology
SECTION 1. Also known as the “Intellectual
Transfer. It is divided into six Bureaus, namely:
Property Code of the Philippines”

 Bureau of Patents;
 Bureau of Trademarks;
What is IP?  Bureau of Legal Affairs;
 Documentation, Information and Technology
 Intangible assets resulting from the
Transfer Bureau;
creative work of an individual or organization.
 Management Information System and EDP
 Refers to creations of the mind, such as
Bureau; and
inventions; literary and artistic works;
 Administrative, Financial and Personnel
designs; and symbols, names and images
Services Bureau.
used in commerce.
 Legal rights which result from intellectual
activities in the industrial, scientific, literary SECTION 5. Functions of the Intellectual
and artistic fields. Property Office

SECTION 2. Declaration of State Policy  Examine applications for grant of letters

 The State recognizes that an effective patent for inventions and register utility
intellectual and industrial property models and industrial designs;
system is vital to the development of  Examine applications for the registration of
domestic and creative activity, marks, geographic indication, integrated
facilitates transfer of technology, circuits;
attracts foreign investments, and  Register technology transfer arrangements
ensures market access for our products. and settle disputes involving technology
It shall protect and secure the exclusive transfer payments covered by the provisions
rights of scientists, inventors, artists and of Part II, Chapter IX on Voluntary Licensing
other gifted citizens to their intellectual and develop and implement strategies to
property and creations, particularly when promote and facilitate technology transfer;
beneficial to the people, for such periods as  Promote the use of patent information as a
provided in this Act. tool for technology development;
 The use of intellectual property bears a  Publish regularly in its own publication the
social function. To this end, the State shall patents, marks, utility models and industrial
promote the diffusion of knowledge and designs, issued and approved, and the
information for the promotion of national technology transfer arrangements registered;
development and progress and the common  Administratively adjudicate contested
good. proceedings affecting intellectual property
 It is also the policy of the State to streamline rights; and
administrative procedures of registering  Coordinate with other government agencies
patents, trademarks and copyright, to and the private sector efforts to formulate
liberalize the registration on the transfer of and implement plans and policies to
technology, and to enhance the enforcement strengthen the protection of intellectual
of intellectual property rights in the property rights in the country.
Philippines.
PATENT
SECTION 3. International Conventions and
Reciprocity.  A patent is an exclusive right that allows
the inventor to exclude others from
SECTION 4. “Intellectual Property” consists of: making, using, or selling the product of
his invention during the life of the
patent. Patent owners may also give
 a) Copyright and Related Rights; permission to, or license, other parties to use
 b) Trademarks and Service Marks; their inventions on mutually agreed terms.
 c) Geographic Indications; Owners may also sell their invention rights to
 d) Industrial Designs; someone else, who then becomes the new
 e) Patents; owner of the patent.
 f) Layout-Designs (Topographies) of  In general, the exclusive rights are only
Integrated Circuits; and applicable in the country or region in
 g) Protection of Undisclosed Information (n, which a patent has been filed and
TRIPS) granted, in accordance with the law of that
country or region.
SECTION 6. Organizational Structure of the IPO  The Intellectual Property Code of the
Philippines sets three conditions for an
The Office shall be headed by a Director General who invention to be deemed patentable: it has
shall be assisted by two (2) Deputies Director to be new, involves an inventive step,
General. and industrially applicable.
  An invention involves an inventive step if, SECTION 171. Definitions. - For the purpose of
having regard to prior art, it is not obvious to this Act, the following terms have the following
a person skilled in the art at the time of the meaning:
filing date or priority date of the application
claiming the invention. An invention that can SECTION 172. Literary and Artistic Works.
be produced and used in any industry is
considered industrially applicable.
 The term of a patent shall be twenty  172.1. Literary and artistic works, hereinafter
(20) years from the filing date of the referred to as “works”, are original
application. intellectual creations in the literary and
 Ex: Michael Jackson anti-gravity illusion artistic domain protected from the moment
of their creation and shall include in
particular:

TRADEMARK (a) Books, pamphlets, articles and other

writings;
 A trademark is a word, a group of words, sign, (b) Periodicals and newspapers;
symbol, logo or a combination thereof that (c) Lectures, sermons, addresses,
identifies and differentiates the source of the dissertations prepared for oral delivery,
goods or services of one entity from those of whether or not reduced in writing or other
others. material form;
 A trademark protects a business’ brand (d) Letters;
identity in the marketplace.  172.2. Works are protected by the sole
 Registration of it gives the owner the fact of their creation, irrespective of their
exclusive rights to prevent others from using mode or form of expression, as well as of
or exploiting the mark in any way. their content, quality and purpose. (Sec. 2,
P.D. No. 49a)
SECTION 121

SECTION 173. Derivative Works. - 173.1. The

 “Mark” means any visible sign capable of following derivative works shall also be
distinguishing the goods (trademark) or protected by copyright:
services (service mark) of an enterprise
and shall include a stamped or marked
container of goods; (Sec. 38, R.A. No. 166a)  (a) Dramatizations, translations,
 “Collective mark” means any visible sign adaptations, abridgments,
designated as such in the application for arrangements, and other alterations of
registration and capable of literary or artistic works; and
distinguishing the origin or any other  (b) Collections of literary, scholarly or artistic
common characteristic, including the works, and compilations of data and other
quality of goods or services of different materials which are original by reason of the
enterprises which use the sign under the selection or coordination or arrangement of
control of the registered owner of the their contents. (Sec. 2, (P) and (Q), P.D. No.
collective mark; (Sec. 40, R.A. No. 166a) 49)
 “Trade name” means the name or
designation identifying or distinguishing SECTION 174. Published Edition of Work
an enterprise; (Sec. 38, R.A. No. 166a)
 In addition to the right to publish granted by
SECTION 122. How Marks are Acquired the author, his heirs, or assigns, the
publisher shall have a copyright
 The rights in a mark shall be acquired consisting merely of the right of reproduction
through registration made validly in of the typographical arrangement of the
accordance with the provisions of this published edition of the work.
law. (Sec. 2-A, R.A. No. 166a)
Terms of Protection
Terms of Protection
 The term of protection for copyright in
 A trademark can be protected in literary and artistic works, and in derivative
perpetuity if regularly monitored and works is generally the lifetime of the
properly maintained. author plus fifty (50) years. However,
 The period of protection is ten (10) years different rules may apply in:
from the date of registration and is
renewable for a period of ten (10) years - Works of joint authorship
at a time. - Works of anonymous or pseudonymous works
- Photographic works
- Works of applied art
COPYRIGHT - Audio-visual works

 Copyright protects literary and artistic

works, such as books and other writings, LAW ON PATENTS
musical works, films, paintings and other
works, and computer programs
What is Patent? invention is not merely theoretical, but also has a
- A Patent is a grant given by the government to practical purpose.
inventors/applicants in return for disclosing an
Invention. It is a legal right to exclusively exploit the Rule: When a work has already been made
invention for the life of the patent. available to the public it shall be non-
patentable for absence of novelty
Purpose of the Patent Law
1. To foster invention
2. To promote disclosure of those inventions A Utility Model is a protection option, which is
3. In order for these inventions to be available to the designed to protect innovations that are not
public domain sufficiently inventive to meet the inventive threshold
required for standard patents application. It may be
Benefits of a Patent any useful machine, implement, tools, product,
A patent is an exclusive right that allows the composition, process, improvement or part of the
inventor to exclude others from making, using, same, that is of practical utility, novelty and
or selling the product of his invention during industrial applicability. A utility model is entitled to
the life of the patent. Patent owners may also give seven (7) years of protection from the date of filing,
permission to, or license, other parties to use their with no possibility of renewal.
inventions on mutually agreed terms. Owners may
also sell their invention rights to someone else, who
then becomes the new owner of the patent.
Benefits of utility model

A utility model allows the right holder to prevent

Term or Protection others from commercially using the protected utility
The term of a patent shall be twenty (20) years model, without his authorization. Compared with
from the filing date of the application. patents, it is relatively inexpensive and easier to
obtain.

Basic Patent Principles

Patent vs. utility model

1. Territorial - Patents are only valid in the country
or region in which they have been granted. • A patent requires an inventive step while a
utility model does not. Patent application requires
2. First-To-File — applicant who files first will get the substantive examination after publication whereas a
patent utility model application is readily registered without
undergoing substantive examination after meeting all
3. Disclosure - applicant shall disclose the invention formality requirements.
in a manner sufficiently clear and complete
Exception: Doctrine of Non-prejudicial
• Quid Pro Quo Principle - protection in exchange
Disclosure
for disclosure
The disclosure of information contained in the
application during the 12-month period before the
4. Conditional - patents are granted only upon
filing date or the priority date of the application if
compliance with the criteria and patentability
such disclosure was made by:
5. Limited rights
1. The inventor;
Patentable Inventions
- any technical solution of a problem in any field of 2. A patent office and the information was contained:
human activity which is new, involves an inventive A. In another application filed by the inventor and
step and is industrially applicable. It may be, or may should have not been disclosed by the office, or
relate to, a product, or process or an B. In an application filed without the knowledge or
improvement of any of the foregoing. (Sec. 21, IPC) consent of the inventor by a third party which obtain
the information directly or indirectly from the
Criteria for Patentability inventor;

3. A third-party who obtain the information directly or

1. Novelty - an invention shall not be considered indirectly from the inventor (IPC, Sec 25)
new if it forms part of a prior art.
• Prior Art - Everything which has been made
available to the public anywhere in the world, before Test Of Non-Obviousness
the filing date or the priority date of the application • If any person possessing ordinary skill in the art
claiming the invention was able to draw the inferences and the inferences
and he constructs that the supposed inventor drew
2. Inventive Step - if, having regard to prior art, it is from prior art then the latter did not really invent it
not obvious to a person skilled in the art at the time • Person skilled in the art-ordinary practitioner
of the filing date or priority date of the application (fictional Person)
claiming the invention. A. Has access and understanding of all the prior art
B. aware of common general knowledge in the
3. Industrially applicable - an invention that can be specific art
produced and used in any industry. This means an C. observes developments in the related technical
field, could be a team; need not have inventive contain the following:
ability A. A request for the grant of a patent;
B. A description of the invention;
Non-patentable Inventions C. Drawings necessary for the understanding of the
1. Plant varieties or animal breeds are essentially invention;
biological process for the production of plants or D. One or more claims; and
animals. This provision shall not apply to micro- E. An abstract
organisms and non-biological and microbiological
processes; 32.2. No patent may be granted unless the
application identifies the inventor. If the
2. Aesthetic creation applicant is not the inventor, the Office may require
him to submit said authority. (Sec. 13, R.A. No. 165a)
3. discoveries, scientific theories and mathematical
Patent Registration
methods;
The procedure for the grant of patent may be
summarized as follows:
4. Schemes, rules and methods of performing mental
1. Filing of the application
acts, playing games or doing business, and programs
2. accordance of the filing date
for computers;
3. formality examination
4. classification and search
5. anything which is contrary to public order or
5. publication of application
morality (IPC as amended by R.A. 9502, section 22);
6. substantive examination
7. grant of patent
6. methods for treatment of the human or animal
8. publication upon grant
body; and
9. Issuance of certificate
7. In the case of drugs and medicines, mere
discovery of a new form or new property of a known
Patentability
substance which does not result in the enhancement
SECTION 21. Patentable Inventions. Any technical
of the efficacy of that substance
solution of a problem in any field of human activity
which is new, involves an inventive step and is
industrially applicable shall be patentable. It may be,
Ownership of the patents
or may relate to, a product, or process, or an
Section 28. Right to a patent - the right to a patent
improvement of any of the foregoing. (Sec. 7, R.A.
belongs to the inventor, his heirs, or assigns. When
No. 165a)
two (2) or more persons have jointly made an
invention, the right to a patent shall belong to them
jointly. SECTION 22. Non-Patentable Inventions. The
following shall be excluded from patent protection:

First to file rule

• If two (2) or more persons have made the invention 22.1. Discoveries, scientific theories and
separately and independently of each other, the right mathematical methods, and in the case of drugs and
of the potent shall belong to the person who filed an medicines, the mere discovery of a new form or new
application for such invention, or property of a known substance which does not result
•where two or more applicants are filed for the same in the enhancement of the known efficacy of that
invention, to the applicant which has the earliest substance, or the mere discovery of any new
filing date (IPC, Section 29) property or new use for a known substance, or the
mere use of a known process unless such known
Inventions Created Pursuant To A Commission process results in a new product that employs at
Pursuant To A Commission: the person who least one new reactant.
commissions the work shall own the patent, unless
otherwise provided in the contract.
22.2. Schemes, rules and methods of performing
Pursuant to employment: in case the employee mental acts, playing games or doing business, and
made the invention in the course of his employment programs for computers;
contract, the patent shall belong to;
22.3. Methods for treatment of the human or animal
A. The employee, if the inventive activity is not a
body by surgery or therapy and diagnostic methods
part of his regular duties even if the employee uses
practiced on the human or animal body. This
the time, facilities and materials of the employer;
provision shall not apply to products and composition
B. The employer, if the inventive activity is the
for use in any of these methods;
result of the performance of his regular-assigned
duties, unless there is an agreement, express or
implied, to the contrary (IPC, Section 30). 22.4. Plant varieties or animal breeds or essentially
biological process for the production of plants or
animals. This provision shall not apply to micro-
Patent Application organisms and non-biological and microbiological
processes.
Section 32. The application - 32.1. The patent
application shall be in Filipino or English and shall 22.5. Aesthetic creations; and
22.6. Anything which is contrary to public order or SECTION 29. First to File Rule. If two (2) or more
morality. (Sec. 8, R.A. No. 165a) persons have made the invention separately and
independently of each other, the right to the patent
shall belong to the person who filed an application for
SECTION 23. Novelty. An invention shall not be such invention, or where two or more applications are
considered new if it forms part of a prior art. (Sec. 9, filed for the same invention, to the applicant who has
R.A. No. 165a) the earliest filing date or, the earliest priority date.
(3rd sentence, Sec. 10, R.A. No. 165a)
SECTION 24. Prior Art. Prior art shall consist of:
24.1. Everything which has been made available to SECTION 30. Inventions Created Pursuant to a
the public anywhere in the world, before the filing Commission.
date or the priority date of the application claiming
the invention; and 30.1. The person who commissions the work shall
own the patent, unless otherwise provided in the
SECTION 25. Non-Prejudicial Disclosure. 25.1. contract.
The disclosure of information contained in the
application during the twelve (12) months preceding
the filing date or the priority date of the application 30.2. In case the employee made the invention in the
shall not prejudice the applicant on the ground of course of his employment contract, the patent shall
lack of novelty if such disclosure was made by: belong to:

(a) The inventor; (a) The employee, if the inventive activity is not a
part of his regular duties even if the employee uses
the time, facilities and materials of the employer.
(b) A patent office and the information was contained
(a) in another application filed by the inventor and
should not have been disclosed by the office, or (b) in (b) The employer, if the invention is the result of the
an application filed without the knowledge or consent performance of his regularly-assigned duties, unless
of the inventor by a third party which obtained the there is an agreement, express or implied, to the
information directly or indirectly from the inventor; or contrary.

SECTION 35. Disclosure and Description of the

(c) A third party which obtained the information Invention.
directly or indirectly from the inventor.
25.2. For the purposes of Subsection 25.1, “inventor” 35.1. Disclosure. The application shall disclose the
also means any person who, at the filing date of invention in a manner sufficiently clear and complete
application, had the right to the patent. for it to be carried out by a person skilled in the art.
Where the application concerns a microbiological
process or the product thereof and involves the use
SECTION 26. Inventive Step. of a micro-organism which cannot be sufficiently
disclosed in the application in such a way as to
26.1. An invention involves an inventive step if, enable the invention to be carried out by a person
having regard to prior art, it is not obvious to a skilled in the art, and such material is not available to
person skilled in the art at the time of the filing date the public, the application shall be supplemented by
or priority date of the application claiming the a deposit of such material with an international
invention. depository institution.

Procedure for Grant of Patent

26.2. In the case of drugs and medicines, there is no SECTION 40. Filing Date Requirements.
inventive step if the invention results from the mere
discovery of a new form or new property of a known 40.1. The filing date of a patent application shall be
substance which does not result in the enhancement the date of receipt by the Office of at least the
of the known efficacy of that substance, or the mere following elements:
discovery of any new property or new use for a
known substance, or the mere use of a known
process unless such known process results in a new (a) An express or implicit indication that a Philippine
product that employs at least one new reactant. patent is sought;

SECTION 27. Industrial Applicability. An invention (b) Information identifying the applicant; and
that can be produced and used in any industry shall
be industrially applicable.
(c) Description of the invention and one (1) or more
claims in Filipino or English.
Right to a Patent
40.2. If any of these elements is not submitted within
SECTION 28. Right to a Patent. The right to a patent
the period set by the Regulations, the application
belongs to the inventor, his heirs, or assigns. When
shall be considered withdrawn. (n)
two (2) or more persons have jointly made an
invention, the right to a patent shall belong to them
jointly. (Sec. 10, R.A. No. 165a) SECTION 50. Grant of Patent.
 50.1. If the application meets the requirements of If a person, who was deprived of the patent
this Act, the Office shall grant the patent: Provided, without his consent or through fraud is
that all the fees are paid on time. declared by final court order or decision to
be the true and actual inventor, the court
shall order for his substitution as patentee,
50.2. If the required fees for grant and printing are or at the option of the true inventor, cancel
not paid in due time, the application shall be deemed the patent, and award actual and other
to be withdrawn. damages in his favor if warranted by the
circumstances. Note that the actions shall be
filed within 1 year from the date of publication.
50.3. A patent shall take effect on the date of the
publication of the grant of the patent in the IPO Rights Conferred by a Patent
Gazette. (Sec. 18, R.A. No. 165a)
This right will only be conferred after publication

SECTION 51. Refusal of the Application. a. Where the subject matter of a patent is a
product, to restrain, prohibit and prevent any
51.1. The final order of refusal of the examiner to unauthorized person or entity from making,
grant the patent shall be appealable to the Director using, offering for sale, selling or importing
in accordance with this Act. that product;
b. Where the subject matter of a patent is a
process, to restrain, prevent or prohibit any
51.2. The Regulations shall provide for the procedure
unauthorized person or entity from using the
by which an appeal from the order of refusal from the
process, and from manufacturing, dealing in,
Director shall be undertaken. (n)
using, selling or offering for sale, or importing
any product obtained directly or indirectly
from such process.
Grounds for Cancellation of Patents
c. Patent owners shall also have the right to
Section 61 of RA 8293 states that any interested assign, or transfer by succession the patent,
persons may cancel a patent on any of the following and to conclude licensing contracts for the
grounds: same.

a. What is claimed as a new invention is not Limitations of Patent

nee or patentable.
The owner of the patent has no right to prevent third
b. Patent does not disclose the invention in a
parties from performing, without his authorization,
manner sufficiently clear and complete for it
the acts referred to in Section 71 hereof in the
to be carried out by any person skilled in the
following circumstances:
art.
c. The patent is contrary to public order or A. Using patented product which has been put
morality. on the market in the Philippines by the owner
d. Patent is found invalid because of patent of the product
infringement. (Section 82) 1. Drugs and medicines, the
limitation on patent rights shall apply
If the committee finds that the claims for
after a drug or medicine has been
cancellation has been proved, it shall order the
introduced in the Philippines or
patent to be cancelled. The right conferred to the
anywhere else in the world by the
patent shall also be terminated. It can also be
patent owner
restrained by the Director General even pending
2. The right to import the drugs and
appeal. If the committee finds that taking into
medicines shall be available to any
consideration the amendment made by the
government agency or private third
patentee during the cancellation proceedings, it
party
may decide to maintain the patent provided that
B. The act is done privately and on a non-
the fee for printing the new patent is paid. If the
commercial scale or for a non-commercial
fee is not paid in due time, the patent should be
purpose.
revoked.
C. Exclusively for experimental use of invention
Remedies of a Person with a Right to a Patent for scientific purposes and such other
activities directly related to such scientific or
If a person other than applicant is declared by the educational experimental use.
court to a have a right to the patent, that person D. Drugs and Medicines, where the act
may: includes testing, using making or selling the
invention including any data related, solely
a. Prosecute the application as his own for purposes reasonably related to the
application in place of the applicant. development and submission of information
b. File a new patent application in respect of the and issuance of approvals by gov. regulatory
same invention agencies required under any law of the Phil.
or of another country that regulates the
c. Request that the application be refused; or manufacture, construction, use or sale of any
product.
E. Preparation of individual cases, in a
d. Seek cancellation of the patent, if one has
pharmacy or by medical professional
already been issued.
 F. Invention is used in any ship, vessel, aircraft knowledge on the patent as a defense to
or land vehicle of any country entering the prove that he is innocent.
territory of the Philippines temporarily or
accidentally.
G. Prior user, who, in good faith was using LAW ON TRADEMARKS
the invention or has undertaken serious
RA No. 166 (An act to provide for the registration
preparation to use the invention in his
and protection of trademarks, and service marks,
enterprise, before the filing date or priority
defining unfair competition and marking and
date of application
providing remedies against the same and for other
H. Use of invention by Government
purposes)
Patent Infringement
WHAT IS MARK/TRADEMARK?

The making, using, offering for sale, selling, or Mark is any visible sign capable of
importing a patented product or a product obtained distinguishing the goods (trademark) or services
directly or indirectly from a patented process, or the (service mark) of an enterprise and shall include a
use of a patented process without the authorization stamped or marked container of goods.
of the patentee constitutes patent infringement:
Provided, That, this shall not apply to instances
covered by Sections 72.1 and 72.4 (Limitations of
Patent Rights); Section 74 (Use of Invention by
Government); Section 93.6 (Compulsory Licensing);
and Section 93-A (Procedures on Issuance of a
Special Compulsory License under the TRIPS
Agreement) of this Code.

2 Test for Infringement

Literal Infringement

Doctrine of Equivalent- function-means-results

test WHAT IS COLLECTIVE MARK?

Any patentee, or anyone possessing any right, title or It is used to identify and distinguish the
interest in and to the patented invention, whose source or origin of goods or sevices; its sole function
rights have been infringed, may bring a civil action is to indicate the person displaying the mark is a
before a court of competent jurisdiction, to recover member of an organized collective group.
from the infringer such damages sustained thereby,
WHAT IS TRADENAME?
plus attorney’s fees and other expenses of litigation,
and to secure an injunction for the protection of his A tradename is an official name under which
rights. A foreign national can also claim its rights or an individual or company conducts businesses. It is a
take an action as long as the requirements stated in name under which a person transacts business, other
Section 3 of this Act is met. than one’s legal name or personal name or a
registered corporate name.
Remedies of the Owners of the Patent Against
Infringers
ACQUISITION OF OWNERSHIP OF MARK
1. Criminal Action for Infringement- criminal
cases only applies in repeated infringement. Under the Philippine IP Code, rights to
The offender shall be criminally liable and a trademark are acquired through registration with
shall suffer imprisonment for the period of the Bureau of Trademarks of the IPO. Generally,
not less than 6 months but no more than 3 protection against infringement is accorded only to
years and/or a fine of not less than 100,000 marks duly registered with the IPO. Also, priority of
but not more than 300,000. The criminal rights in a trademark is not anymore based on prior
action herein provided shall prescribe in three actual use but on prior filing of an application for
years from the date of the commission of the registration.
crime.
Why should you register your trademark?
2. Administrative case if the damage claimed is
not less than 200k.
3. Destruction of the infringed material without  Your trademark distinguishes your goods
compensation from others. It represents your business
identity, image, and reputation that sets it
apart from your competitors.
 Your trademark is your asset and property. It
Defense of an Infringer is worth a lot of money!
 Registration of your trademark will protect
1. Other than the defenses made by the
your business and shield it from unscrupulous
defendant, he may state that he lacks
persons who want to ride on the goodwill
 which your business has painstakingly (d) Is identical with a registered mark belonging to a
created through the years. different proprietor or a mark with an earlier filing or
 There are remedies available to owners of priority date, in respect of:
registered marks from infringers such as Civil (i) The same goods or services, or
and criminal actions for infringement, unfair
competition, false or fraudulent declaration
and false designation of origin. There are also (ii) Closely related goods or services, or
Administrative Actions before the Bureau of
Legal Affairs of the IPO for violation of IP
(infringement, unfair competition, false (iii) If it nearly resembles such a mark as to be likely
designation of origin) under Section 10.2 of to deceive or cause confusion;
the IP Code and Inter Partes Cases
(opposition, cancellation) and/ or Border
(e) Is identical with, or confusingly similar to, or
Measure before the Bureau of Customs.
constitutes a translation of a mark which is
considered by the competent authority of the
 Independent of the civil and Philippines to be well-known internationally and in
administrative penalties imposed by the Philippines, whether or not it is registered here,
law, a criminal liability of two to five as being already the mark of a person other than the
years' imprisonment and a fine ranging applicant for registration, and used for identical or
from P50,000 to P200,000 will be similar goods or services: Provided, That in
imposed on a person found guilty of determining whether a mark is well-known, account
infringement 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
 Trademark registration is valid for a been obtained as a result of the promotion of the
period of ten years and can be renewed mark;
every ten years. The trademark
protection is no longer valid if the
trademark holder does not renew the (f) Is identical with, or confusingly similar to, or
trademark. Renewal must be settled six constitutes a translation of a mark considered well-
months prior to its expiration. known in accordance with the preceding paragraph,
which is registered in the Philippines with respect to
goods or services which are not similar to those with
ACQUISITION OF OWNERSHIP OF TRADENAME respect to which registration is applied for: Provided,
That use of the mark in relation to those goods or
services would indicate a connection between those
Rights to a tradename is acquired through goods or services, and the owner of the registered
registration with DTI. The only difference of mark: Provided further, That the interests of the
acquisition of ownership of trademarks and owner of the registered mark are likely to be
tradenames is they vary on rights to be granted after damaged by such use;
approval upon registration.

(g) Is likely to mislead the public, particularly as to

 Tradename registration is valid for a the nature, quality, characteristics or geographical
period of 5 years and can be renewed origin of the goods or services;
every 5 years. Renewal must be settled
six months prior to its expiration.
(h) Consists exclusively of signs that are generic for
the goods or services that they seek to identify;
NON-REGISTRABLE MARKS

(i) Consists exclusively of signs or of indications that

A trademark cannot be registered if it: have become customary or usual to designate the
(a) Consists of immoral, deceptive or scandalous goods or services in everyday language or in bona
matter, or matter which may disparage or falsely fide and established trade practice;
suggest a connection with persons, living or dead,
institutions, beliefs, or national symbols, or bring
them into contempt or disrepute; (j) Consists exclusively of signs or of indications that
may serve in trade to designate the kind, quality,
quantity, intended purpose, value, geographical
(b) Consists of the flag or coat of arms or other origin, time or production of the goods or rendering
insignia of the Philippines or any of its political of the services, or other characteristics of the goods
subdivisions, or of any foreign nation, or any or services;
simulation thereof;

(k) Consists of shapes that may be necessitated by

(c) Consists of a name, portrait or signature technical factors or by the nature of the goods
identifying a particular living individual except by his themselves or factors that affect their intrinsic value;
written consent, or the name, signature, or portrait of
a deceased President of the Philippines, during the
life of his widow, if any, except by written consent of (l) Consists of color alone, unless defined by a given
the widow; form; or
(m) Is contrary to public order or morality. The owner of a registered mark may recover
damages from any person who infringes his rights,
and the measure of the damages suffered shall be
But as regards signs or devices mentioned in either the reasonable profit which the complaining
paragraphs (j), (k), and (l), nothing shall prevent the
party would have made, had the defendant not
registration of any such sign or device which has
infringed his rights, or the profit which the defendant
become distinctive.
actually made out of the infringement, or in the event
such measure of damages cannot be readily
ascertained with reasonable certainty, then the court
may award as damages a reasonable percentage
RIGHTS CONFERRED OF REGISTRATION based upon the amount of gross sales of the
The owner of a registered mark shall defendant or the value of the services in connection
have the exclusive right to prevent all third with which the mark or trade name was used in the
parties not having the owner’s consent from infringement of the rights of the complaining party.
using in the course of trade identical or similar
On application of the complainant, the court
signs or containers for goods or services which are
identical or similar to those in respect of which the may impound during the pendency of the action,
trademark is registered where such use would result sales invoices and other documents evidencing sale.
in a likelihood of confusion. In case of the use of an
In cases where actual intent to mislead the
identical sign for identical goods or services, a
likelihood of confusion shall be presumed. public or to defraud the complainant is shown, in the
discretion of the court, the damages may be doubled.
The exclusive right of the owner of a The complainant, upon proper showing, may
well-known mark which is registered in the also be granted injunction.
Philippines, shall extend to goods and services
which are not similar to those in respect of In any suit for infringement, the owner of the
which the mark is registered: Provided, that use registered mark shall not be entitled to recover
of that mark in relation to those goods or services profits or damages unless the acts have been
would indicate a connection between those goods or committed with knowledge that such imitation is
services and the owner of the registered mark:
likely to cause confusion, or to cause mistake, or to
Provided further, that the interests of the owner of
deceive. Such knowledge is presumed if the
the registered mark are likely to be damaged by such
use. registrant gives notice that his mark is registered by
displaying with the mark the words "Registered Mark"
or the letter R within a circle or if the defendant had
TRADEMARK INFRINGEMENT otherwise actual notice of the registration.

Any person who shall, without the consent of the

owner of the registered mark:
REGISTRATION OF MARKS UNDER THE MADRID
1. Use in commerce any reproduction, counterfeit, PROTOCOL
copy, or colorable imitation of a registered mark or
the same container or a dominant feature thereof in ACCESSION
connection with the sale, offering for sale,
The Philippines acceded to the Madrid
distribution, advertising of any goods or services
Protocol with effect on 25 July 2012. The Madrid
including other preparatory steps necessary to carry
Protocol is a treaty that allows natural or
out the sale of any goods or services on or in
juridical persons of member countries to file
connection with which such use is likely to cause
international registrations through their
confusion, or to cause mistake, or to deceive; or
respective trademark offices (as office of
2. Reproduce, counterfeit, copy or colorably imitate a origin) designating other member countries to
registered mark or a dominant feature thereof and be covered by the international registration.
apply such reproduction, counterfeit, copy or The Madrid Protocol’s basic effect is being able to
colorable imitation to labels, signs, prints, packages, obtain individual national registrations in the
wrappers, receptacles or advertisements intended to designated countries similar to securing trademark
be used in commerce upon or in connection with the registrations directly and separately in the
sale, offering for sale, distribution, or advertising of designated countries, if the latter issues a grant of
goods or services on or in connection with which such protection. In the Philippines, the office of origin is
use is likely to cause confusion, or to cause mistake, the Philippine Intellectual Property Office (IPOPHIL).
or to deceive, shall be liable in a civil action for
infringement by the registrant for the remedies
hereinafter set forth: Provided, that the infringement REGISTRATION REQUIREMENTS
takes place at the moment any of the acts stated are
committed regardless of whether there is actual sale To file an international registration
of goods or services using the infringing material. under the Madrid Protocol through IPOPHIL, the
applicant must have a basic application/registration
(I.e., a mark filed/registered with the IPOPHIL under
the applicable Philippine trademark law), which basic
REMEDIES
application/registration will be the basis for The applicant should appoint a Philippine
international registrations designating other member agent/representative to respond to the notice of
countries. The applicant must also be eligible to provisional refusal or request an extension to
apply for international registration through IPOPHIL. respond.

If the applicant successfully traverses the

objections raised in the notice of provisional refusal,
QUALIFIED APPLICANTS the mark will be published for opposition. If the
application is not opposed, IPOPHIL will issue a
The applicant must be a national of, is
statement of grant of protection.
domiciled in, or must have have a real and effective
industrial or commercial establishment in the
Philippines LAW ON COPYRIGHT

WHAT IS COPYRIGHT?
USE OF THE MARK
- is the right of" literary property" as
Philippine trademark regulations specifically recognized and sanctioned by positive law. An
intangible, incorporeal right granted by statute to the
require trademark owners (including holders of
author or originator of certain literary or artistic
international registrations) to submit a declaration of
productions, whereby he is invested, for a specific
actual use of the mark in the Philippines within three period, with the sole and exclusive privilege of
years from the filing date (i.e., international multiplying copies of the same and publishing and
registration date) and within one year from the fifth selling them. (Black Law’s Dictionary)
year anniversary of the registration date (i.e., date of
grant in cases of international registration. - the Philippine copyright law or officially
Otherwise, the mark will be removed from the known as the Republic Act No. 8293 is based
registry by operation of law on the copyright law of United States, this law
also protects trademarks, patents, and even various
forms of intellectual property.

DESIGNATION OF RESIDENT AGENT

Non-Philippine trademark proprietors who COPYRIGHTABLE WORKS

hold international registrations designating the 1. Literary and artistic works (Sec 172)
Philippines should appoint a resident agent for
purposes of filing responses to office actions, Literary and artistic works, hereinafter referred to as
declarations of actual use, and recording instruments “works”, are original intellectual creations in the
affecting the mark with IPOPHIL. literary and artistic domain protected from the
moment of their creation and shall include in
particular:

SUBSEQUENT DESIGNATION a. Books, pamphlets, articles, and other writings

The holder of an international registration b. Lectures, sermons, addresses, dissertations
may subsequently designate other member prepared for Oral delivery, whether or not in
writing or other material form
countries to be included in the international
registration. However, subsequent designation is c. Letters
possible only if the international registration date is d. Dramatic, choreographic works
on or after 25 July 2012, which is the date of entry e. Musical compositions
into force of the Madrid Protocol in the Philippines.
The Philippines’ accession to the Madrid Protocol f. Works of Art
included a reservation that the protection resulting g. Periodicals and Newspaper
from international registrations granted before the h. Works relative to Geography, topography,
entry into force of the Madrid Protocol in the architecture or science
Philippines cannot be extended to the Philippines. i. Works of applied art
j. Works of Scientific or technical character
k. Photographic works
PROVISIONAL REFUSAL
l. Audiovisual works or cinematographic works
If a notice of provisional refusal is issued, the m. Pictorial illustrations and advertisement
applicant should file a written response within two (2)
months from the date of notification indicated in the
n. Computer programs and
notice. A single extension of two (2) months to o. Other literary, scholarly, scientific and artistic
respond may be requested. If no response or works
extension request is timely filed, the application will
be considered abandoned. The abandoned
application may be revived within three (3) months
from the date the period to respond lapsed.
2. DERIVATIVE WORKS (Sec.173) thereto shall remain with the
creator, unless there is a
•Dramatizations, translations, adaptations,
written stipulation to the
abridgments, arrangements, and other alterations of
contrary;
literary or artistic works; and
Audiovisual In the case of audiovisual
•Collections of literary, scholarly or artistic works, Work work, the copyright shall
and compilations of data and other materials which belong to the producer, the
are original by reason of the selection or coordination author of the scenario, the
or arrangement of their contents composer of the music, the
film director, and the author
NON-COPYRIGHTABLE WORKS of the work so adapted.
However, subject to contrary
Any idea, procedure, System method or operation,
or other stipulations among
concept, principle, discovery, mere data as such
the creators, the producer
1. News of the day and other items of press
shall exercise the copyright
conference
to an extent required for the
2. Any official text of a legislative,
exhibition of the work in any
administrative, or legal nature, as well as
manner, except for the right
any official translation thereof
to collect performing license
3. Any work of the Government of the
fees for the performance of
Philippines
musical compositions, with or
4. Statutes
without words, which are
incorporated into the work;
OWNERSHIP OF COPYRIGHT
and
WORKS OWNER
Letter Copyright shall belong to the
Original Author writer
Works of Joint The co-authors shall be the Anonymous The publishers shall be
Authorship original owners of the and deemed to represent the
copyright and in the absence Pseudonymous authors of articles and other
of agreement, their rights Works writings published without
shall be governed by the the names of the authors or
rules on co-ownership. If, under pseudonyms, unless
however, a work of joint the contrary appears, or the
authorship consists of parts pseudonyms or adopted
that can be used separately name leaves no doubt as to
and the author of each part the author’s identity, or if the
can be identified, the author author of the anonymous
of each part shall be the works discloses his identity
original owner of the
copyright in the part that he
has created;
Works during In the case of work created TRANSFER AND ASSIGNMENT OF COPYRIGHT
employment by an author during and in
the course of his A transfer of copyright rights is usually either:
employment, the copyright
shall belong to: 1. Assignment of copyright rights - The
original owner sells its rights to a third party and can
(a) The employee, if the
no longer exercise control over how the third party
creation of the object of uses those rights.
copyright is not a part of his
regular duties even if the 2. Copyright Licensing - is an agreement
employee uses the time,
where the copyright owner maintains its ownership of
facilities and materials of the
the rights involved but allows a third party to
employer.
exercise some or all of those rights without fear of a
(b) The employer, if the copyright infringement suit.
work is the result of the
performance of his regularly
assigned duties, unless there
is an agreement, express or RIGHTS OF COPYRIGHT OWNER
implied, to the contrary. √ ECONOMIC RIGHTS
Commissioned In the case of a work
Work commissioned by a person √ MORAL RIGHTS
other than an employer of
the author and who pays for
it and the work is made in EONOMIC RIGHTS [ SEC.177]
pursuance of the
commission, the person who - shall consist of the exclusive right to carry out,
so commissioned the work authorize or prevent the following acts:
shall have ownership of the
work, but the copyright
1. Reproduction of the work or substantial portion of photographic the protection shall be
the work. works for fifty (50) years from
publication of the work
2. Dramatization, translation, adaptation, and, if unpublished, fifty
abridgement, arrangement, or other (50) years from the
transformation of the work. making.

3. The first public distribution of the original and each Audiovisual works the term shall be fifty
copy of the work by sale or other forms of transfer (50) years from date of
of ownership. publication and, if
4. Rental of the original or a copy of an audiovisual or unpublished, from the
cinematographic work, a work embodied in a date of making.
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
MORAL RIGHTS [Sec.193]
subject of the rental.
For reasons of professionalism and propriety, the
5. Public display of the original or a copy of the work. author has the right:

6. Public performance of the work. 1. To require that the authorship of the works
be attributed to him, in particular, the right that his
7. Other communication to the public of the work name, as far as practicable, be indicated in a
prominent way on the copies, and in connection
with the public use of his work.
TERM OF PROTECTION [Sec.213] 2. To make any alterations of his work prior to,
or to withhold it from publication.
In general, the copyright in works under Sections 172
and 173 shall be protected during the life of the 3. To object to any distortion, mutilation, or
author and for fifty (50) years after his death. This other modification of, or other derogatory action in
rule also applies to posthumous works. relation to his work which would be prejudicial to
Posthumous work – a work made accessible to the his honor or reputation.
public after the death of the author. 4. To restrain the use of his name with respect to any
Note: Once the copyright term ends for a work, it work not of his own creation or in a distorted version
enters the public domain (not subject to copyright) of his work.

DURATION OF COPYRIGHT

Works of joint the economic rights -Paternity Right/ Right of Attribution -- During the
authorship shall be protected lifetime of the author and in perpetuity after his
during the life of the last death
surviving author and for
fifty (50) years after his -Alteration and Non-Publication Right; Right to
death. preservation of Integrity; and Right to against False
Attribution - Coterminous with Economic Rights
Anonymous or The copyright shall be
protected for fifty (50) COPYRIGHT INFRINGEMENT
pseudonymous years from the date on
works which the work was first The unauthorized use of copyrighted material in a
lawfully published: manner that violates one of the copyright owner's
Provided, That where, exclusive rights, such us the right to reproduce or
before the expiration of perform the copyrighted work or to make derivative
the said period, the works that build upon it.
author’s identity is
revealed or is no longer Criminal Penalties. [ Sec.217]
in doubt, the provisions
Any person infringing any right secured by provisions
of Subsections 213.1.
of Part IV of this Act or aiding or abetting such
and 213.2 shall apply,
infringement shall be guilty of a crime punishable by:
as the case may be:
Provided, further, That
such works if not
(a) Imprisonment of one (1) year to three (3) years
plus a fine ranging from Fifty thousand pesos
published before shall
(P50,000) to One hundred fifty thousand pesos
be protected for fifty
(P150,000) for the first offense.
(50) years counted from
the making of the work.
(b) Imprisonment of three (3) years and one (1) day
Works of applied the protection shall be to six (6) years plus a fine ranging from One
art for a period of twenty- hundred fifty thousand pesos (P150,000) to Five
five (25) years from the hundred thousand pesos (P500,000) for the
date of making. second offense.
(c) Imprisonment of six (6) years and one (1) day to
nine (9) years plus a fine ranging from Five
hundred thousand pesos (P500,000) to One
million five hundred thousand pesos (P1,500,000)
for the third and subsequent offenses.

(d) In all cases, subsidiary imprisonment in cases of

insolvency

FAIR USE OF A COPYRIGHT WORK:

The fair use of a copyrighted work for criticism,

teaching, comment, scholarship, news, reporting,
teaching including limited number of copies for the
classroom use, scholarship, researched and similar
purposes is not an infringement of copyright.

Factors to be considered in determining fair use (Sec.

185)

• Purpose and character of the use

• Nature of the copyrighted work

• Amount and substantiality of the portion used in

relation to the copyrighted work as a whole and
•Effect of the use upon the potential market for or
value of the copyrighted work.

Copyright vs. Plagiarism

Copyright Plagiarism
infringement

The unauthorized use The use of

of copyrighted another’s
material in a manner information,
that violates one of language, or
the copyright owner’s writing, when
exclusive rights, such done without
as the right to proper
reproduce or perform acknowledgem
the copyrighted work, ent of the
or to make derivative original source.
work that build upon
it.