PART I

Intellectual Property Office

Declaration of State Policy

1. The intellectual property system is viewed by the state as an essential element that
contributed to the development of economic, technology, and foreign relations.
2. The said law shall govern in protecting the exclusive rights of the following:
a. scientists
b. inventors
c. artists and
d. other gifted citizen

Intellectual Property
1. Intangible assets resulting from the creative work of an individual or organization
2. CREATION OF MINDS such as:
a. Inventions
b. Literary or artistic works
c. Symbols, names, images, and designs used in commerce

Intellectual Property Rights

1. Consists of the Following:
a. copyright and related rights;
b. trademarks and service marks
c. geographical indications
d. industrial designs
e. patents
f. layout designs (topographies) of integrated circuits; and
g. protection of undisclosed information.
TRIVIA:

Technology Transfer Arrangements

- Refers to the contract or agreement involving the transfer of systematic knowledge for
the manufacture of a product, application of a process, or rendering of a service to
another party, which may involve the transfer, assignment or licensing of intellectual
property rights.

Intellectual Property Office

- The one who has the right to administer and implement the state policies regarding the
Intellectual Property Act.

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 PART II
The Law on Patents

Basic Patent Principles

1. Territoriality - Patents are valid only in the country or region in which they have been
granted.
2. First to File - Applicant who files first will get the patent.
a. If two (2) or more persons have made the invention separately and
independently of each other, the right to patent shall belong to the person who
filed an application for such invention or
b. Where two (2) of more applicants are filed for the same invention, to the
applicant which has the earliest filling date
3. Disclosure - applicant shall disclose the invention in a manner sufficiently clear and
complete.
FOLLOWS the Quid pro quo principle which means that “you give, for me to give as
well”
4. Conditional - patents are granted only upon compliance with the criteria of patentability
5. Limited Rights

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

Criteria for Patentability

1. Novelty - An invention shall not be considered new if it forms part of a prior art.
a. Prior art
i. Everything which has been available to the public anywhere in the world,
before the filing date or the priority date of the application claiming the
invention

RULE: When a work has already been made available to the public, it shall be non-
patentable for absence of novelty

EXCEPT: Doctrine of Non-Prejudicial Disclosure

- The disclosure of information contained in the application during the 12 month
period before the filing date or the priority date of the application if such
disclosure was made by:
I. The inventor
II. A patent office and the information was contained:
A. In an application filed by the inventor and should have not been
disclosed by the office or
B. In an application filed without the knowledge or consent of the
inventor by a third party which obtained the information directly or
indirectly from the inventor;
III. A third party who obtained the information directly or indirectly from the
inventor;
2. Inventive Step - if, having regard to prior art, it is not obvious to a person skilled in
the art at the time of the filling date or priority date of the application claiming the
invention.

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 Test of Non-Obviousness:
- If any person possessing ordinary skill in the art was able to draw the
inferences and he constructs that the supposed inventor drew from
prior art, then the latter did not really invent it.
- Person Skilled in the art-Ordinary practitioner (fictional person)
- Has access and understanding of all the prior art
- Aware of common general knowledge in the specific art
- Observes developments in the related technical field (could be a
team; need not have inventive ability)

3. Industrially Applicable - an invention that can be produced and used in any industry.
This means that an invention is not merely theoretical, but also has a practical purpose.

Non-Patentable Inventions
1. Plant varieties or animal breeds or essentially biological process for the production of
plants or animals.
a. Exception: Microbiological process and microorganisms are patentable.
2. Aesthetic creations
3. Discoveries, scientific theories and mathematical methods;
4. Schemes, rules, and methods of performing mental acts, playing games or doing
business, and programs for computers;
5. Anything contrary to public order or morality
6. Methods for treatment of the human or animal body
7. In the case of drugs and medicines, mere discovery of a new form or new property
of a known substance which does not result in the enhancement of the efficacy of
that substance.

QUESTION: Is the COVID-19 Patentable?

Ownership of Patents
- The right to a patent belongs to the inventor, his heirs, or assigns.
- When two (2) of more persons have jointly made an invention, the right to a patent
shall belong to them jointly.
- Patent rights may be assigned or transferred but it must be:
- In writing
- Duly notarized
Inventions Created Pursuant to a Commission
1. Pursuant to a Commission
- The person who commissions the work shall own the patent, unless otherwise
provided in the contract.
2. Pursuant to employment
- In case the employee made the invention in the course of his employment
contract, the patent shall belong to:
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. The EMPLOYER, if the inventive activity is the result of the performance
of his regularly-assigned duties, unless there is an agreement, express
or implied, to the contrary
Patent Registration
1. Filing of the application
2. Accordance of the filing date
3. Formality examination
4. Classification and Search

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 5. Publication of application
6. Substantive examination
7. Grant of Patent
8. Publication upon grant
9. Issuance of Certificate

Patent Application
- The patent application shall be in Filipino or English and shall contain the following:
1. A request for the grant of patent;
2. A description of the invention;
3. Drawings necessary for the understanding of the invention;
4. One or more claims; and
5. An abstract

Question: Can the patent still be cancelled if you have already issued one?

Grounds for cancellation of Patent

- Any interested party may petition to cancel any patent or any claim or parts of a claim
any of the following grounds:
a. The invention is not new or patentable;
b. The patent does not disclose the invention in a manner sufficiently clear and
complete for it to be carried out by any person skilled in the art; or
c. Contrary to public order or morality
d. Patent is found invalid in an action for infringement
e. The patent includes matters outside the scope of the contained in the
application.
Patent Application by Persons Not Having the Right to a Patent
Remedies of persons with a right to a patent

If a person other than the applicant is declared by the final court order or decision as having
the right to a patent, he may within 3 months after such decision has become final:
a. Prosecute the application as his own
b. File a new patent application
c. Request the application to be referred; or
d. Seek cancellation of the patent

Time to file action: within one (1) year from the date of publication

Rights conferred by patent

1. In case of Product
- Right to restrain, prohibit and prevent any unauthorized person or entity from
MAKING, USING, OFFERING for sale, SELLING, or IMPORTING the product.
2. In case of Process
- Right to RESTRAIN, PROHIBIT, and PREVENT any unauthorized person or
entity from manufacturing, dealing in, using, offering from sale, selling, or
importing any product obtained directly or indirectly from such process.
3. Right to assign the patent, to transfer by succession and to conclude licensing
contracts.

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Limitations of Patent Rights
The owner of a patent has NO RIGHT to prevent third parties from making, using,
offering for sale, selling or importing a patented product in the following circumstances:

a. Using a patented product after it has been put on the market in the Philippines
by the owner of the product, or with his express consent.
● In case of drugs or medicine, the said limitation applies after a drug or
medicine has been introduced in the Philippines or anywhere else in
the world by the patent owner, or by any party authorized to use the
invention. This allows parallel importation for drugs and medicines.
● The right to import the drugs and medicine shall be available to any
government agency or any private third party.
b. Where the act is done PRIVATELY and on NON-COMMERCIAL purpose.
c. Exclusively for experimental use of the invention for scientific or educational
purposes.
d. In the case of drugs and medicines, where the act includes testing, using
making or selling the invention including any data related thereto, solely for
purposes reasonably related to the development and submission of information
and issuance of approvals by government regulatory agencies required under
any law of the Philippines or of another country that regulates the manufacture,
construction, use or sale of any product.

Other Limitations
Prior User
- Person other than the applicant, who in good faith, started using the invention
in the Philippines, or undertaken serious preparations to use the same, before
the filing date or priority date of the application shall have the right to continue
the use thereof, but this right shall only be transferred or assigned further with his
enterprise or business.

Use by government
- A government agency or third person authorized by the government may exploit
the invention even without agreement of the patent owner where:
a. The public interest, in particular, national security, nutrition, health or the
development of other sectors, as determined by the appropriate agency
of the government, so requires; or
b. A judicial or administrative body has determined that the manner of
exploitation, by the owner of the patent or his license is anti-competitive;
or
c. In the case of drugs and medicines, there is a national emergency or
other circumstances of extreme urgency requiring the use of the
invention; or
d. In the case of drugs and medicines, there is public non-commercial use
of the patentee, without satisfactory reason or;
e. In the case of drugs and medicines, the demand for the patented article
in the Philippines is not being met to an adequate extent and on
reasonable terms, as determined by the Secretary of the Department of
Health.

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Doctrine of Exhaustion
- Also known as the DOCTRINE OF FIRST SALE, it provides that the patent holder has
control of the first sale of his invention.
- He has the opportunity to receive the FULL CONSIDERATION for his invention from his
sale.
- He EXHAUST HIS RIGHTS in the FUTURE control of his invention

Patent Infringement
- The MAKING, USING, OFFERING for sale, SELLING, or IMPORTING a patented
product or a product obtained directly or indirectly from a patented process, or the USE
of a patented process without the authorization of the patentee.
- LITERAL Infringement
● Exist if an accused device falls directly within the scope of properly interpreted
claims.
- Doctrine of Equivalent Infringement
● When a device appropriated a prior invention by incorporating its innovative
concept and, despite some modification and change, performs substantially
the same function in substantially the same way to achieve substantially the
same result.

Remedies of the Owners of the Patent Against Infringers

- Civil Action for infringement
- Criminal action for infringement
● If the infringement is REPEATED, the criminal action prescribes THREE (3)
years from the commission of the crime.
- Administrative remedy
● Where the amount of damages claimed is not less than P200,000.00.

Defenses in Action for Infringement

- The invention is not new or patentable;
- The patent does not disclose the invention in a manner sufficiently clear and
complete for it to be carried out by any person skilled in the art; or
- Contrary to public order or morality
- Invalidity of the patent
- Right of prior user
- Prescription (20 years)

Legal Life of Patent

- 20 years

Mode of Creation
- By Registration in the Intellectual Property Office

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 PART III
The Law on Trademarks, Service Marks, and Trade Names

Legal Definitions
1. Mark - means any visible sign capable of distinguishing the goods (trademark) or
services (service mark) of an enterprise and shall include a stamped or marked
container of goods; (Sec. 38, R.A. No. 166a)
2. Collective mark - means any visible sign designated as such in the application for
registration and capable of distinguishing the origin or any other common characteristic,
including the quality of goods or services of different enterprises which use the sign
under the control of the registered owner of the collective mark; (Sec. 40, R.A. No. 166a)
3. Trade name - means the name or designation identifying or distinguishing an enterprise;
(Sec. 38, R.A. No. 166a)

Distinctions between a Trademark vs Trade name

1. As to concept or definition, a trademark identifies or distinguishes the goods or services,
while a trade name identifies or distinguishes the business or enterprise.
2. As to registration, a trademark requires registration while a trade name does not require
registration.

Acquisition of ownership of a Trademark, service name, or trade name

1. The rights in a mark shall be acquired through registration made validly in accordance
with the provisions of this law, but the right to register a trademark should be based on
ownership.
2. Certificate of Registration - shall be prima facie evidence of the validity of the
registration, the registrant's ownership of the mark, and of the registrant's exclusive right
to use the same in connection with the goods or services and those that are related
thereto specified in the certificate.

Registration of Trademarks, Service marks, and Trade names

1. In order for a mark to be registered, it must exhibit the following:
a. A visible sign (words, letters, numerals, figures, pictures, logos)
b. Capable of distinguishing one’s goods or services from another
2. The owner of a trademark, trade name, or service mark used to distinguish his goods,
business, or services from the goods, business, or services of others shall have the right
to register the same unless:
a. Those contrary to law, morals, or public policy
b. Consist of immoral, deceptive, or scandalous matter
c. Consist of matters which may disparage or falsely suggest a connection with
persons
d. Consists of flags or coats of arms of nations
e. Consist of names, portraits, or signatures of living persons
f. Identical registered mark belonging to a different proprietor or a mark with an
earlier filing;
g. Same goods or services or closely related goods or services;
h. Those resemble such a mark as to be likely to deceive or cause confusion.
3. An application for registration of a collective mark shall designate the mark as a
collective mark and shall be accompanied by a copy of the agreement, if any, governing
the use of the collective mark.

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Requirements for the application of Trademarks, Service marks, and Trade names
1. The application for the registration of the mark shall be in Filipino or in English and shall
contain the following:
a. Request for registration;
b. Name and address of the applicant
c. Sworn statement of the applicant's domicile and citizenship
d. The applicant is a juridical entity
e. Appointment of an agent or representative
2. Declaration of Actual Use - within three (3) years from the filing date of the application.
Otherwise, the application shall be refused, or the mark shall be removed from the
Register by the Director.

Duration of effectivity of Trademark Registration

1. 10 years, subject to indefinite renewals of 10 years each.
2. The registrant is required to file a declaration of actual use and evidence to that effect or
show valid reasons based on the existence of obstacles to such use within one (1) year
from the fifth year anniversary of the date of the registration of the mark.

The distinctiveness of a mark

1. Fanciful trademark - made-up words that have been invented for the sole purpose of
functioning as a trademark and are considered to be the strongest type of mark.
(KODAK, EXXON, XEROX)
2. Arbitrary Trademarks - utilizes words having a common meaning that has no relation to
the goods or services being sold. (APPLE, DOVE, SHELL)
3. Suggestive Trademarks - marks that suggest a quality or characteristic of the goods or
services. This is far more common due to tying a mark to the product in a customer’s
mind. (MICROSOFT, NETFLIX)
4. Descriptive Trademarks - words that merely describe the goods or services on which the
mark is used. (SHARP, WINDOWS, BEST BUY)
5. Generic Trademarks - cannot be protected as they are devices that actually name a
product and are incapable of functioning as a trademark. (BANDAID, THERMOS)

Rights of a Trademark owner

1. Rights to exclusive use of the mark in connection with one’s own goods or services
resulting in the likelihood of confusion.
2. Rights to prevent others from use of an identical mark for the same, similar or related
goods or services.

Trademark rights through assignment and transfers of registration

1. An application for registration of a mark, or its registration, may be assigned or
transferred with or without the transfer of the business using the mark.
2. The assignment of the application for registration of a mark, or of its registration, shall be
in writing and require the signatures of the contracting parties. Transfers by mergers or
other forms of succession may be made by any document supporting such transfer.

Cancellation of Registration
1. A petition to cancel a registration of a mark under this act may be filed with the Bureau of
Legal Affairs by any person who believes that he is or will be damaged by the
registration of a mark under this act as follows:
a. Within five (5) years from the date of the registration of the mark.
b. At any time, if the registered mark becomes the generic name for the goods or
services or its registration was obtained fraudulently.
c. At any time, if the registered owner of the mark without legitimate reasons fails to
use the mark within the Philippines

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Trademark infringement
1. Use without the consent of the trademark owners of any reproduction, counterfeit, copy
or colorable limitation of any registered mark, or trade name.
2. Elements when there is a trademark infringement:
a. Registration
b. Trademark is reproduced, counterfeit, or copied by another
c. Lack of consent by the owner
d. Use in connection with sale
e. Likelihood of confusion
i. Confusion of goods - as to the goods themselves
ii. Confusion of business - as to the source or origin of such goods

Tests of Confusion
1. Dominancy test - focuses on the prevalent features of the competing marks
2. Totality test - determined on the basis of visual, aural, connotative comparisons and
overall impressions engendered by the marks in controversy as they are encountered in
the marketplace.

Remedies and Jurisdiction for Trademark Infringement

1. Recover damages from any person who infringes his rights, and the measure of the
damages suffered shall be either the reasonable profit or profit made out of infringement.
2. In cases where actual intent to mislead the public or to defraud the complainant is
shown, in the discretion of the court, the damages may be doubled.
3. Seek injunction
4. Seek the destruction of infringing materials without compensation of any sort or disposed
of outside of commerce in such a manner as to avoid any harm caused

Distinction between Trademark infringement vs Unfair competition

1. As to definition, trademark infringement is the unauthorized use of a trademark, while
unfair competition is the passing off of one’s goods as those of another.
2. As to intent, in trademark infringement, fraudulent intent is unnecessary. In unfair
competition, fraudulent intent is essential.
3. As to registration, trademark infringement requires prior registration, while unfair
competition does not necessarily need registration.

Remedies and Jurisdiction for Unfair Competition

1. Liable in a civil action by any person injured, thereby any damages sustained in
consequences thereof
2. May file for criminal action
a. 2 - 5 years imprisonment
b. P50,000 - P200,000 in fine

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 PART IV
The Law on Copyright

Legal Definition
1. Copyright - a right over literary and artistic works which are original intellectual creations
in the literary and artistic domain protected from the moment of creation

Legal Life of Copyright – As a general rule, the legal life of copyright is the life of author plus
50 years after his death.

Copyrightable works
1. Literary and Artistic works include, in particular:
a. Books, pamphlets, articles, and other writings;
b. Periodicals and newspapers;
c. Lectures, sermons, dissertations for oral delivery;
d. Letters;
e. Dramatic composition or choreographic works;
f. Musical compositions;
g. Works of drawings, painting, architecture, sculpture or other works of art;
h. Original ornamental designs or industrial designs
i. Illustrations, maps, plans, sketches or other works relative to topography,
geography
j. Drawings of a scientific or technical character
k. Photographic works
l. Audiovisual works and cinematographic works
m. Pictorial illustrations
n. Computer programs; and
o. Other literary, scholarly, scientific, and artistic works

2. Derivative works - works based on or derived from one or more existing works and shall
also be protected by copyright are the following:
a. Dramatizations, translations, adaptations, and other alterations
b. Collections of literary, scholarly, or artistic works
3. Right of the Publisher - In addition to the right to publish granted by the author, his heirs,
or assigns, the publisher shall have a copyright consisting merely of the right of
reproduction of the typographical arrangement of the published edition of the work.

Non-copyrightable works
1. Idea, procedure, system, method, concept, principle, discovery or mere data
2. News of the day and other items of press information
3. Any official text of a legislative, administrative or legal nature
4. Pleadings
5. Decisions of courts and tribunals
6. Any work of the government of the Philippines
7. TV programs
8. Systems of bookkeeping
9. Statutes

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Rights of Copyright owners
1. Economic rights - the right to carry out, authorize or prevent the following acts:
a. Reproduction of the work
b. Carry-out derivative work
c. First distribution of the original copy
d. Rental right
e. Public display
f. Public performance
g. Other communications to the public
2. Moral right - for reasons of professionalism and propriety, the author has the right:
a. To require that authorship of the works be attributed to him
b. To make any alterations of his work
c. To preserve integrity of work, object to any distortion, mutilation or modification
d. To restrain the use of his name with respect to any work, not of his own creation

Ownership of Copyright
1. Copyright ownership shall be governed by the following rules:
a. Original literary and artistic works - belongs to the author of the work
b. Works of Joint Authorship - the co-authors shall be the original owners of the
copyright and in the absence of agreement, their rights shall be governed by the
rules on co-ownership.
c. Works during Employment:
i. Employee - if the creation of the object of copyright is not a part of his
regular duties even if the employee uses the time, facilities and materials
of the employer.
ii. Employer - if the work is the result of the performance of his regularly-
assigned duties, unless there is an agreement, express or implied, to the
contrary.
d. Commissioned work - the person who so commissioned the work shall have the
ownership of the work but the copyright thereto shall remain with the creator
e. Audiovisual work - the copyright shall belong to the producer, the author of the
scenario, the composer of the music, the film director, and the author of the work
so adapted.
f. Letters - belongs to the writer subject to the provisions of the Civil Code
g. Anonymous and Pseudonymous works - the publishers shall be deemed to
represent the authors of articles and other writings published without the names
of the authors or under pseudonyms.

Transfer, Assignment and Licensing of Copyright

1. The copyright may be assigned in whole or in a part only if there is a written indication of
such intention.
2. If two (2) or more authors jointly own a copyright or any part thereof, neither of the
owners shall be entitled to grant licenses without the prior written consent of the other
owners.
3. The extent of authority granted to the publisher of newspapers, periodicals, or magazine
constitutes only a license to make a single publication unless expressly stated otherwise.

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Copyright infringement
1. Occurs when there is a violation of any of the exclusive economic or moral rights granted
to the copyright owner. It may also consist in aiding or abetting such infringement.
2. The IP Code also provides for the liability of a person who at the time when copyright
subsists in a work has in his possession an article which he knows, or ought to know, to
be an infringing copy of the work for the following purposes:
a. Selling or letting for hire
b. Distributing the article for the purpose of trade
c. Trade exhibit of the article in public

Remedies available to an owner of a copyright against an infringer

1. Any person infringing a right protected under this law is liable for civil or administrative
action such as:
a. Injunction restraining such infringement
b. Claim damages to the copyright proprietor including legal costs and other
expenses
c. Deliver under oath all articles, sales invoices and other documents evidencing
sales alleged to infringe a copyright
d. Deliver under oath for destruction without any compensation all infringing copies
or devices

2. Any person infringing any right secured by aiding or abetting such infringement shall be
guilty of a crime punishable by:
a. 1-3 years imprisonment plus a fine of P50,000 to P150,000 for the first offense
b. 3 years and 1 day to 6 years imprisonment plus a fine of P50,000 - P150,000 for
the second offense
c. 6 years and 1 day to 9 years imprisonment plus a fine of P500,000 - P1,000,000
for the third and subsequent offenses.

Limitations of Copyright
1. The following acts shall not constitute an infringement of copyright:
a. The inclusion of a work in a publication, broadcast or other communication to the
public as a way of illustration for teaching purposes and is compatible with fair
use
b. Reproduction or distribution of published articles or materials in a specialized
format exclusively for the use of the blind, visually and reading-impaired persons
c. The recitation or performance of a work, once it has been lawfully published, if
done privately and free of charge or it made strictly for charitable or religious
institutions

Fair Use of Copyright

1. The fair use of a copyrighted work for criticism, comment, news, reporting, teaching
including multiple copies for classroom use, scholarship, research and similar purposes
is not an infringement of copyright
2. To determine whether the use made of a work in particular case is fair use, the following
factors must be considered:
a. Purpose and character of the use
b. Nature of the copyrighted work
c. Amount and substantiability of the portion used in relation to the work as a whole
d. Effect of the use upon the potential market for or value of the work

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