INTELLCTUAL PROPERTY LAW

CONSTITUTIONAL BASIS o Industrially Applicable: An invention that

can be produced and used in any industry.
 The state shall protect and secure the
exclusive rights of scientists, investors, artists THREE-FOLD PURPOSE OF PATENT
and other gifted citizens to their intellectual
(1) To foster and reward invention
property and creations, particularly when
(2) To promote disclosures of inventions to
beneficial to the people, for such period as
stimulate further innovation and to permit
may be provided by law.
the public to practice the invention once the
COVERAGE OF INTELLECTUAL PROPERTY patent expires
RIGHTS (3) To ensure that ideas in the public domain
remain there for the free use of the public.
(1) Copyright
NON-PATENTABLE INVENTIONS
(2) Trademarks and Service Marks
(3) Geographic Designs (1) Discoveries and ideas – discoveries, scientific
(4) Industrial designs theories, math methods, or simply finding a
(5) Patents new form or use of a known drug, unless it
(6) Layout designs clearly makes the drug work better.
(7) Protection of undisclosed information (2) Methods and rules – such as ways of thinking,
playing games, doing business, or computer
SUMMARY programs. (NOTE: The new discovered game
can be protected by trademark if it will be use
in business, not patent)
(3) Medical methods – ways to treat or diagnose
humans or animals (like surgeries or
therapies). But products used for these
methods can still be patented.
(e.g., A new type of heart surgery technique
— cannot be patented, but a special tool used
in the surgery can be patented.)
(4) Plants and animals – plant varieties, animal
PATENT breeds, or natural ways to produce them.
However, this doesn't apply to micro-
 Any technical solution of a problem in any organisms or scientific processes.
field of human activity which is new, involves (e.g., A new mango variety grown through
an inventive step and is industrially. It may be, natural breeding — not patentable.
or may relate to, a product, or process, or an But a genetically modified bacteria — can be
improvement of any of the foregoing. patented.)
 It is patentable, if it is: (5) Artistic creations – like paintings, sculptures,
o New: Novelty in which not forms part or designs meant just for beauty.
Prior Art (6) Immoral or illegal things – anything against
o Involves and inventive step: Involves and public morals or law.
inventive step: An invention an inventive PRIOR ART
step if, having regard to prior art, it is not
obvious to a person skilled in the art at Prior art refers to anything already known before
the time of the filling date or priority date someone files a patent. It is used to check if an
of the application claiming the invention. invention is truly new. It includes:
 INTELLCTUAL PROPERTY LAW
(1) Anything that has been made available to the employee uses the time, facilities and
public anywhere in the world before the filing materials of the employer
or priority date of the patent application. b. The employer, if the invention is the
(2) The full content of any earlier patent, utility result of the performance of his regularly-
model, or industrial design application filed or assigned duties, unless there is an
effective in the Philippines, with an earlier agreement, express or implied, to the
filing or priority date and published under the contrary.
law. TERM OF DURATION OF A PATENT

THE RIGHT TO A PATENT

 The term of a patent shall be twenty years
Who has the right to a patent? (20) from the filing date of the application
(1) Inventor
(2) Heirs PREJUDICIAL AND NON-PREJUDICIAL
(3) Assigns DISCLOSURE
(4) In case the invention jointly belongs to 2 or
more persons the patent shall belong to them PREJUDICIAL DISCLOSURE
jointly
NOTE: Patent rights can be transferred or A patent is based on the date of its application. If
assigned to another person provided it is in the inventor shares or sells the invention publicly
writing and duly notarized before filing a patent for more than 12 months,
anyone can copy or use it freely. Once an idea is
FIRST TO FILE RULE made public without patent protection, it can be
 If two (2) or more persons have made the taken and used by others without legal
invention separately and independently of consequences.
NON-PREJUDICIAL DISCLOSURE
each other, the right to the patent shall
belong to the person who filed an application
for such invention, or where two or more Public disclosure won’t affect the patent’s novelty
applications are filed for the same invention, if it happened within 12 months before the patent
to the applicant who has the earliest filing application was filed, and if the disclosure was
date or, the earliest priority date. made by:
 If the person who first filed the patent a. The inventor themselves
application merely copied the invention from b. A patent office, if the information came from:
the original inventor, the original inventor i. An earlier application by the inventor that
may file a petition in court to cancel the should not have been disclosed, or
patent, be recognized as the rightful patentee, ii. An application filed without the inventor's
and claim damages. permission by someone who got the idea
from the inventor
COMMISSIONS IN PATENT iii. A third party who got the information
(1) The person who commissioned (client) the directly or indirectly from the inventor
work shall own the patent, unless otherwise
DOCTRINE OF RIGHT OF PRIORITY
provided in the contract.
(2) In case the employee made the invention in
the course of his employment contract, the The Right of Priority lets an inventor use the filing
patent shall belong to: date of a previous application made in another
a. The employee, if the inventive activity is country, as long as that country offers the same
not a part of his regular duties even if the patent rights to Filipino citizens. This means that
the inventor’s patent application in the
 INTELLCTUAL PROPERTY LAW
Philippines can be treated as if it were filed on the o The patent does not disclose the
same date as the first foreign application. invention in a manner sufficiently clear
and competent for it to be carried out by
any person skilled in the art.
 To qualify, the following conditions must be o The patent was issued to one who was
met: not the true and actual inventor.
o The Philippine application must claim
COPYRIGHT
priority from the foreign application.
o It must be filed within 12 months from  A right over literary and artistic works which
the date of the earliest foreign are original intellectual creations in the
application. literary and artistic domain protected from
o A certified copy of the foreign application, the moment of creation.
along with an English translation, must be  Does not require registration and deposit for
submitted within 6 months from the filing a creator to be able to file action for
date in the Philippines. infringement of his rights. These are just pre-
requisites to an action for damages.
PATENT INFRINGEMENT
DURATION
 Occurs when someone makes, uses, sells, or
imports a patented invention without the  Copyright shall last during the lifetime of the
patent holder's permission, violating their author and 50 years after his death
exclusive rights.
ELEMENTS OF COPYRIGHTABILITY
TESTS TO ESTABLISH PATENT (1) Originality: Must have been created by the
INFRINGEMENT author’s own skill, labor and judgement
(1) Literal Infringement: This happens when the without directly copying or evasively imitating
copied product is exactly the same as the the work of another.
patented one — all the important parts are (2) Expression: Must be embodied in a medium
the same. sufficiently permanent or stale to permit it to
(2) Doctrine of Equivalents: This applies when be perceived, reproduced or communicated
the copied product is not exactly the same, for a period more than a transitory duration.
but it still does the same job, in the same way,
and gets the same result as the original COPYRIGHTABLE WORKS
invention — even with some changes.
I. Original Works (Literary and Artistic
REMEDIES INCASE OF PATENT
Works)
INFRINGEMENT
a. Books, pamphlets, articles and other
 The true and actual inventor may file an writings
action in court for substitution as patentee, or b. Lectures, sermons, addresses,
cancellation of the patent. dissertations prepared for Oral
 The patentee may sue for the patent delivery, whether or not reduced in
infringement, and secure an injunction for the writing or other material form
protection of his rights. He may recover from c. Letters
the infringement damages, attorneys fees and d. Dramatic, choreographic works
other expenses of litigation. e. Musical compositions
 Defenses that may be invoked. f. Works of Art
o The patent is invalid g. Periodicals and Newspapers
o The patent is not new or patentable
 INTELLCTUAL PROPERTY LAW
h. Works relative to Geography,
topography, architecture or science
i. Works of Applied art
j. Works of a Scientific or technical
character
k. Photographic works OWNERSHIP OF COPYRIGHT
l. Audiovisual works and (1) In case of original or literary and artistic
cinematographic works works: author of the work
m. Pictorial illustrations and (2) In case of joint authorship: The co-authors
advertisements shall own the copyright
n. Computer programs; and If the works can be considered separately,
o. Other literary, scholarly, scientific and then each author shall own his own parts.
artistic works (3) If the work was created in the course of his
II. Derivative Works: a new work based on employment the copyright shall belong to:
or derived from a pre-existing work a. The employee: If the creation is not part
a. Dramatizations, translations, of his assigned duties, even if he used the
adaptations, abridgements, time, facilities, and materials of the
arrangements, and other alterations employers
of literary or artistic works; b. The employer: if the work is result of his
b. Collections of literary, scholarly, or regular assigned duties.
artistic works and compilations of (4) In case of commissioned work, the work shall
data and other materials which are belong to the person who commissioned the
original by reason of the selection or work, but the copyright shall belong to the
coordination or arrangement of their creator.
contents (IPC, Sec. 173). (5) In case of audiovisual work: Copyright shall
belong to the producer, the author of the
NON-COPRIGHTABLE WORKS scenario, the composer of the music, the film
director, and the author of the work so
(1) Idea, procedure, system, method or adapted. They are separated.
operation, concept, principle, discovery or (6) In case of letters: Copyright shall belong to the
mere data as such person to who sent.
(2) News of the day and other items of press (7) In case of anonymous or pseudonymous
information works: The publishers shall be deemed to
(3) Any official text of a legislative, represent the authors unless the contrary
administrative or legal nature, as well as appears.
any official translation thereof
(4) Pleadings THE RIGHTS OF COPYRIGHT OWNER
(5) Decisions of courts and tribunals – this
refers to original decisions and not to ECONOMIC RIGHTS
annotated decisions such as the SCRA or
SCAD as these already fall under the  The right to carry out, authorize or prevent
classification of derivative works, hence the following acts:
copyrightable o Reproduction of the work or substantial
(6) Any work of the government of the portion thereof
Philippines o Carry-out derivative work (dramatization,
(7) TV programs, format of TV programs
translation, adaptation, abridgement,
(8) Systems of bookkeeping; and
(9) Statutes.
 INTELLCTUAL PROPERTY LAW
arrangement or other transformation of author), the author or their heirs have a
the work) permanent right to receive 5% of the total
o First distribution of the original and each sale or lease price.
copy of the work by sale or other forms of
transfer of ownership
o Rental right
o Public display
o Public performance
o Other communications to the public. LIMITATIONS OF COPYRIGHT
MORAL RIGHTS (1) Private or Free Performances:
o You can recite or perform a work privately
 Moral rights are personal rights of the author
and without charging money, or if it’s
that are separate from economic rights (like
done for a charity or religious group, as
selling or earning from the work). These rights
long as the work is already made public
belong only to the creator (a natural person),
legally.
and they remain with the author even if they
(2) Fair Quotation:
sell or license their work.
o You can quote from a published work if it
The author has the right to:
follows the rules of fair use and is only as
o Be recognized as the creator – Their
much as needed for the purpose (like for
name should be shown clearly on the
reporting or education).
work and in public use of it.
o The author’s name and source must be
o Control the release or changes – They can
mentioned if available.
change the work or choose not to publish
(3) Use in Mass Media for Information Purposes
it.
o News and media can share articles,
o Protect the work’s integrity – They can
lectures, or speeches about current
stop others from changing the work in a
events (like politics, economics, science,
way that harms their reputation.
religion) if they were publicly delivered
o Stop misuse of their name – Others can't
and not restricted by the speaker.
use the author's name on works they
o The source must be clearly stated.
didn’t create or on altered versions of
(4) Use in News Reports
their work.
o You can reproduce or broadcast parts of a
 Term of Moral Rights: Last during the lifetime
literary, artistic, or scientific work if it's
of the author and in perpetuity after his death
part of a news report about a current
except letters b, c, d above (shall be
event.
conterminous with the economic rights)
o Example: Music or sounds heard during a
DROITE DE SUITE OR “ART PROCEEDS RIGHT” sports event that are captured while
reporting the event.
 This is the artist’s resale right. It means that
o Use must be only as much as needed for
when an artwork is resold, a percentage of
the report.
the resale price must be given to the original
(5) Use for Teaching
artist.
o You can include a work in a publication,
 This right continues even after the artist dies,
recording, or broadcast for educational
as long as the artwork is still protected by
purposes, as long as it's within fair use.
copyright.
o The author’s name and source must be
 Every time an original painting, sculpture, or
mentioned if they are shown in the
original manuscript of a writer or composer is
original work.
sold or leased again (after the first sale by the
(6) Educational Recordings
 INTELLCTUAL PROPERTY LAW
o Schools can record a broadcast for a. Protected during the life of the last
educational use, but the recording must surviving author + 50 years after his death
be deleted after a reasonable time. (3) Published Anonymous or Pen Name Works
(7) Temporary (Ephemeral) Recordings a. Protected for 50 years from first
o Broadcasting companies can make publication
temporary recordings using their own b. If the author's identity is revealed before
equipment, but only for their own the end of 50 years→ Same rule as original
broadcasts. works
(8) Government and Public Use (4) Unpublished Anonymous or Pen Name
o Government agencies, the National Works
Library, or educational and scientific a. Protected for 50 years from the date it was
institutions can use a copyrighted work if made
it's in the public interest and follows fair (5) Applied Art (e.g., functional art, designs)
use rules. a. Protected for 25 years from the date of
(9) Free Public Performances creation
o A work can be performed or shown to the (6) Photographs
public for free, especially if done by a a. Protected for 50 years from publication, or
non-profit group, club, or institution for if unpublished, 50 years from the date it
charitable or educational purposes, as was taken
long as it follows the rules set in the (7) Audio-Visual Works (e.g., films, videos)
regulations. a. Protected for 50 years from publication, or
(10) Public Display (Non-digital) if unpublished, 50 years from the date it
o You can publicly display an original or was made
copy of a work (like a poster on a wall) if:
 The work has been published, or DOCTRINE OF FAIR USE
 The displayed item has been sold,
given away, or legally transferred by  Fair use is a rule that allows someone other
the author. than the copyright owner to use a copyrighted
(11) Use in Court or Legal Advice work without permission, as long as the use is
o You can use a copyrighted work if it's for a reasonable and for good purpose.
court case or for legal advice given by a  It’s meant to balance the creator’s rights with
lawyer. the public’s need for knowledge and
(12) Use for the Visually or Reading-Impaired creativity.
o It's allowed to reproduce or share  Fair use is not copyright infringement if the
materials in special formats (like Braille or work is used for things like:
audiobooks) for blind or reading-impaired o Criticism or commentary
persons, as long as: o News reporting
 It’s nonprofit, and o Teaching (including making a few copies
 The copyright owner and original for classroom use)
publication date are mentioned. o Scholarship or research
o Similar purposes that benefit public
TERMS OF PROTECTION OF COPYRIGHT
knowledge
(1) Original, Derivative, and Posthumous Works
a. Protected during the author's lifetime + 50 COPYRIGHT INFRINGEMENT
years after death Copyright infringement occurs when a
(2) Jointly Created Works copyrighted work is reproduced, distributed,
performed, publicly displayed, or made into a

PLAGIARISM
 INTELLCTUAL PROPERTY LAW
derivative work without the permission of the  The ownership of a tradename is acquired
copyright owner. through adoption and use. This will be
protected even without registration.

Plagiarism is the act of presenting someone else's

TRADEMARK
work, ideas, or words as your own, without
proper attribution or citation, and is considered a  The purpose of a trademark is to indicate
form of academic dishonesty and intellectual origin or ownership of the articled to which
theft. they are attached, to guarantee that those
articles come up to a certain standard of
quality and to advertise the articles they
symbolized.
 Only the owner of the trademark, trade name,
or service mark have the right to register the
same.
 The law requires that the trademark must be
visible. Thus, a scent or musical instrument
cannot register as trademark.
TRADEMARK
 Identifies or distinguishes the goods or
.
TRADEMARK, SERVICE MARK AND TRADE NAME services
 Registration is required
 Any visible sign capable of distinguishing the
goods (trademark) or services (Service mark) ACQUISITION AND OWNERSHIP OF MARK
of an enterprise and shall include a stamped  To acquire in a mark, registration is required
or marked container of goods. with the Intellectual Property Office. The
 Trademarks may consist of any word, name, exception to this is well-known marks.
symbol, emblem, sign or device, or any  It does not require prior use before filing the
combination thereof adopted and used by a application of a trademark. However, the law
manufacturer or merchant to identify his still requires use of the mark after filing.
goods and distinguish them for those
manufactured sold or dealt in by others. FILING DATE
TRADENAME An application is considered filed on the date
when the office receives all of the following:
 Tradename may include individual names and
o A clear or implied request to register a
surnames, firm names, devices or words used
to identify business, vocations, or trademark
occupations; the names or titles lawfully o The name of the applicant
adopted and used by natural or juridical o Contact details of the applicant or their
persons, unions, and any manufacturing, representative (if any)
industrial, commercial, agricultural, or other o A copy/image of the trademark
organizations engaged in trade or commerce. o A list of the goods or services the
 A tradename refers to the business and its trademark will be used for
goodwill and a trademark refers to the goods.
PRIORITY RIGHT
 Identifies or distinguishes the business or
enterprise If someone files a trademark application in
 Registration is not required the Philippines and they already applied for the
same mark in another country (that the
Philippines has an agreement with), the Philippine
 INTELLCTUAL PROPERTY LAW
application can be treated as if it was filed on the an earlier application date), especially if
same date as the foreign application — as long as used on:
the Philippine application is filed within 6 months b. The same products/services
of the foreign one. c. Related products/services
d. Or if it can confuse or deceive the public
If someone else files a trademark application in
(5) Same as a Well-Known International Mark
the Philippines after the priority date of a foreign
(Same Goods/Services)
applicant (who is claiming priority) — but before
a. If a mark is identical to a well-known
the foreign applicant actually files in the
international trademark, even if it's not
Philippines — their application can be refused if
registered in the Philippines, and used for
it’s identical to the mark with the earlier priority
the same or similar goods/services, it
date.
cannot be registered.
(6) Same as a Well-Known International Mark
RIGHTS OF AN OWNER OF A REGISTERED
(Different Goods/Services)
MARK
a. Even if the goods/services are not similar,
The owner must use the trademark for their own if the mark is identical to a well-known
products or services. They also have the right to mark that is registered in the Philippines, it
stop others from using similar or identical signs, can’t be registered if it may harm the
logos, or containers without permission, interests of the rightful owner.
especially if it could confuse customers. (7) Misleading Marks
a. Marks that are likely to mislead or confuse
the public about the type, quality,
characteristics, or origin of the product or
DURATION OF TRADEMARK
service are not allowed.
It remains in force for 10 years, subject to (8) Generic Terms
indefinite renewals of 10 years each. a. Marks made up only of generic words that
are commonly used to name the
NON-REGISTRABLE TRADEMARK
goods/services (e.g., "Milk" for a milk
(1) Offensive or Misleading Content product) can’t be registered.
a. Marks that are immoral, deceptive, (9) Common or Usual Terms
scandalous, or falsely suggest a connection a. Marks that only use terms commonly used
with people, institutions, beliefs, or in daily language or trade practice to refer
national symbols. to the goods/services are not allowed
(2) Use of Official Symbols (10) Descriptive Signs
a. Marks that include the flag, coat of arms, a. Marks that only describe the type, quality,
or insignia of the Philippines or any foreign quantity, purpose, value, origin, production
country. time, or other features of the
(3) Names or Images of People goods/services are not allowed.
a. Marks that use the name, photo, or (11) Functional or Necessary Shapes
signature of a living person without their a. Marks that are just shapes required by
written permission. technical reasons, or by the nature or value
b. Also includes the name or image of a of the product, cannot be registered.
deceased Philippine President, if his widow (Example: The shape of a bottle that’s
is still alive, unless she gives written necessary for it to work.)
consent. (12) Color Alone or Immoral Content
(4) Already Registered or Similar Marks a. Marks that are just a color with no specific
a. Marks that are identical or too similar to an shape/form cannot be registered.
existing registered trademark (or one with
 INTELLCTUAL PROPERTY LAW
b. Also, marks that go against public order or  If two marks sound alike when spoken, they
morality are not allowed. may be considered confusingly similar —
especially if they’re used for similar products.
 The key question: Would an average listener
COLORABLE IMITATION
have a hard time telling them apart just by
 any mark which so resembles a registered hearing them?
mark as to be likely to cause confusion or
WELL-KNOWN MARKS
mistake or to deceive.
 There are two tests to determine colorable  A well-known mark is a brand or logo
imitation: Dominancy Test and Holistic Test recognized internationally and in the
Philippines, officially declared by a
DOMINANCY TEST
government authority.
This test looks at the main or dominant features  When deciding if a mark is well-known, what's
of two trademarks. important is the awareness of the relevant
 If one mark has the same key features as group of people, not just the general public.
another, and this can confuse or mislead the This includes recognition gained through
public, it may be considered infringement — advertising.
even without exact copying or obvious  The owner of a well-known mark has legal
attempts to imitate. protection in the Philippines, even if the mark
 What matters is whether the average buyer isn’t registered there.
might be confused or deceived because the
DOCTRINE OF UNRELATED GOODS
marks look or sound too similar in their
important parts.  Trademark owner cannot prevent another
party from using the same or similar mark on
HOLISTIC TEST
goods or services that are completely
This test checks if trademarks are confusingly unrelated, as there's no likelihood of
similar by looking at the whole picture, not just consumer confusion or dilution of the
the main words. trademark's reputation.
TRADEMARK INFRINGEMENT
 It compares the marks based on how they
look (visual), sound (aural), and what they
mean (connotation) — as they appear in the Trademark infringement happens when someone
real market. uses a registered brand or logo without
 The marks are viewed as a whole, including all permission in a way that might confuse people,
design elements, fonts, colors, and how they cause mistakes, or deceive. This includes:
relate to the products they represent.  Selling, advertising, or using a fake or similar-
 The observer must consider everything on the looking mark that can confuse customers.
label, not just the main or dominant parts, to  Copying a registered mark and using it on
decide if the marks are likely to confuse labels, packaging, signs, ads, etc., especially if
buyers. it might mislead people into thinking it's the
real brand.
IDEM SONANS
CONFUSION OF GOODS AND CONFUSION
 Idem Sonans means "sounding the same." It's OF BUSINESS
a test used to check if two trademarks are
Confusion of Goods: The purchaser would be
confusingly similar based on how they sound,
induced to purchase one produce in the belief
even if their spellings are different.
that he was purchasing the other
 INTELLCTUAL PROPERTY LAW
Confusion of Business: Even if the products are
different, trademark infringement can still happen
if the public might think the infringer’s product is
connected to or comes from the trademark
owner. This can mislead people into believing
there's a relationship between the two
businesses, even when there isn’t.