Notes For Intellectual Property
Notes For Intellectual Property
Notes For Intellectual Property
- Republic Act No. 8293, as amended, otherwise known as the Intellectual Property
Code of the Philippines (IPC)
Introduction:
Trademark, copyright and patents are different intellectual property rights that
cannot be interchanged with one another. A trademark is 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. In relation thereto, a trade
name means the name or designation identifying or distinguishing an enterprise.
Meanwhile, the scope of a copyright is confined to literary and artistic works which
are original intellectual creations in the literary and artistic domain protected from
the moment of their creation. Patentable inventions, on the other hand, refer to any
technical solution of a problem in any field of human activity which is new, involves
an inventive step and is industrially applicable. (Kho vs. Court of Appeal, G.R. No.
115758. March 19, 2002)
I. PATENTS
DEFINITIONS:
PATENTS
Refer to any technical solution of a problem in any field of human activity
which is new, involves an inventive step and is industrially applicable.
NOVELTY
An invention shall not be considered 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 the filing date or the priority date of the application claiming
the invention.
INVENTIVE STEP
An invention involves an inventive step if, having regard to prior art, it is not
obvious to a person skilled in the art at the time of the filing date or priority
date of the application claiming the invention.
INDUSTRIAL APPLICABILITY
An invention that can be produced and used in any industry shall be
industrially applicable.
Requisites of Patent:
1. Technical solution of a problem in any field of human activity;
2. It must be a novel invention;
3. Involves inventive step;
4. It must be industrially applicable.
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 shall be Patentable. It may
be, or may relate to, a product, or process, or an improvement of any of the
foregoing.
Non-Patentable Inventions.
The following shall be excluded from patent protection:
a. Discoveries, scientific theories and mathematical methods;
b. Schemes, rules and methods of performing mental acts, playing games or
doing business, and programs for computers;
c. Methods for treatment of the human or animal body by surgery or therapy
and diagnostic methods practiced on the human or animal body. This
provision shall not apply to products and composition for use in any of these
methods;
d. Plant varieties or animal breeds or essentially biological process for the
production of plants or animals. This provision shall not apply to micro-
organisms and non-biological and microbiological processes.
e. Aesthetic creations; and
f. Anything which is contrary to public order or morality.
Purpose of Patent
The patent law has a three-fold purpose: "first, patent law seeks to foster and
reward invention; second, it promotes disclosures of inventions to stimulate further
innovation and to permit the public to practice the invention once the patent
expires; third, the stringent requirements for patent protection seek to ensure that
ideas in the public domain remain there for the free use of the public." (Pearl & Dean
(Phil.) v. Shoemart, Incorporated, G.R. No. 148222, August 15, 2003)
Right to Patent
- The right to a patent belongs to the inventor, his heirs, or assigns. When two (2) or
more persons have jointly made an invention, the right to a patent shall belong to
them jointly. (Sec. 28, IPC)
- First to file Rule - If two (2) or more 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 such invention, or where two or more applications are filed
for the same invention, to the applicant who has the earliest filing date or, the
earliest priority date. (Sec. 29, IPC)
- The person who commissions the work shall own the patent, unless otherwise
provided in the contract.
- 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 invention is the result of the performance of his
regularly-assigned duties, unless there is an agreement, express or implied, to
the contrary.
NOTE: Ideas, once disclosed to the public without the protection of a valid patent,
are subject to appropriation without significant restraint. (Pearl & Dean (Phil.) v.
Shoemart, Incorporated)
Doctrine of equivalents
- Recognizes that minor modifications in a patented invention are sufficient to put the
item beyond the scope of literal infringement.
- An infringement also occurs when a device appropriates a prior invention by
incorporating its innovative concept and, albeit with some modification and change,
performs substantially the same function in substantially the same way to achieve
substantially the same result.
DEFINITIONS
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.
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.
FUNCTIONS
a. To indicate the origin of the goods to which they are attached;
b. To guarantee the standard of quality of the goods; and
c. To advertise the goods.
NOTE: The rights in a mark shall be acquired through registration made validly in accordance
with the provisions of this law. (Sec. 122, IPC)
2. Registration is necessary before one can file an action for infringement.
3. There must be actual use.
i. Prior use in the Philippines is not required before registration.
ii. There must be actual use after registration.
iii. Registration is not important to protect the goodwill that identifies in the
mind of the public the goods he manufactures or deals in.
iv. Registration of a mark is not necessary for purposes of filing a case for
unfair competition or false designation of origin.
Any person who shall employ deception or any other means contrary to good faith
by which he shall pass off the goods manufactured by him or in which he deals, or his
business, or services for those of the one having established such goodwill, or who
shall commit any acts calculated to produce said result, shall be guilty of unfair
competition, and shall be subject to an action therefor.
RIGHTS CONFERRED
The owner of a registered mark shall have the exclusive right to prevent all third
parties not having the owner's consent from using in the course of trade identical or
similar signs or containers for goods or services which are identical or similar to
those in respect of which the trademark is registered where such use would result in
a likelihood of confusion. In case of the use of an identical sign for identical goods or
services, a likelihood of confusion shall be presumed.
2. Holistic Test – requires that the entirety of the marks in question be considered in
resolving confusing similarity. Comparison of words is not the only determining
factor. The trademarks in their entirety as they appear in their respective labels or
hang tags must also be considered in relation to the goods to which they are
attached. The discerning eye of the observer must focus not only on the
predominant words but also on the other features appearing in both labels in order
that he may draw his conclusion whether one is confusingly similar to the other.
III. COPYRIGHT
Definition – Copyright is the right over literary and artistic works which are original
intellectual creations in the literary and artistic domain protected from the moment of
creation. (Kho vs. Court of Appeals)
NOTE: Under the law, there are other definitions which are not mentioned in these notes,
including those provided in R.A. 10372, or the amendment to the Intellectual Property Code.
- Article 712 of the New Civil Code provides that ownership is acquired by occupation
and by intellectual creation.
- Thus, intellectual creation is one of the modes of acquiring ownership.
(1) The author with regard to his literary, dramatic, historical, legal, philosophical,
scientific or other work;
(2) The composer; as to his musical composition;
(3) The painter, sculptor, or other artist, with respect to the product of his art;
(4) The scientist or technologist or any other person with regard to his discovery or
invention. (Art. 721, NCC)
(5) Letters and other private communications in writing are owned by the person to
whom they are addressed and delivered, but they cannot be published or
disseminated without the consent of the writer or his heirs. (Art. 723, NCC)
-EXCEPTION: The court may authorize their publication or dissemination if
the public good or the interest of justice so requires.
C. Derivative Works
Unprotected Works
a. Creator – the creator, his heirs, or assigns, shall own the copyright.
b. If Joint creation – 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.
Exception: Work of joint authorship consists of parts that can be used
separately and the author of each part can be identified, the author of each
part shall be original owner of the copyright in the part that he has created.
c. Commissioned work – the person commissioning owns the work; ownership of
copyright remains with the creator, unless there is a written stipulation to the
contrary.
d. Audio-visual work – producer for purposes of exhibition; for all other purposes, the
producer, the author of the scenario, the composer, the film director, the
photographic director and the author of the work are the owners.
e. Pseudonymous and anonymous works – unless the author is undisputably known,
the publisher shall be presumed to be the representative of the author. (Secs. 178
and 179, IPC)
f. Employee’s work during course of employment – employer, if the result of regular
functions or duties but the employee owns it if it is not part of his duties.
NOTE: 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. (Sec. 174, IPC)
RIGHTS OF AUTHORS
A. Copyright or Economic Rights – Economic rights shall consist of the exclusive right to
carry out, authorize or prevent the following acts:
a. Reproduction of the work or substantial portion of the work;
b. Dramatization, translation, adaptation, abridgment, arrangement or other
transformation of the work;
c. The first public distribution of the original and each copy of the work by sale
or other forms of transfer of ownership;
d. Rental of the original or a copy of an audiovisual or cinematographic work, a
work embodied in a sound recording, a computer program, a compilation of
data and other materials or a musical work in graphic form, irrespective of
the ownership of the original or the copy which is the subject of the rental;
e. Public display of the original or a copy of the work;
f. Public performance of the work; and
g. Other communication to the public of the work.
B. Moral Rights – The author of a work shall, independently of the economic rights in
Section 177 or the grant of an assignment or license with respect to such right, have
the right:
a. To require that the authorship of the works be attributed to him, in
particular, the right that his name, as far as practicable, be indicated in a
prominent way on the copies, and in connection with the public use of his
work;
b. To make any alterations of his work prior to, or to withhold it from
publication;
c. To object to any distortion, mutilation or other modification of, or other
derogatory action in relation to, his work which would be prejudicial to his
honor or reputation; and
d. To restrain the use of his name with respect to any work not of his own
creation or in a distorted version of his work.
NOTE: Moral rights shall last during the lifetime of the author and for fifty (50) years
after his death and shall not be assignable or subject to license.
(a) The recitation or performance of a work, once it has been lawfully made
accessible to the public, if done privately and free of charge or if made strictly
for a charitable or religious institution or society;
(b) The making of quotations from a published work if they are compatible with
fair use and only to the extent justified for the purpose, including quotations
from newspaper articles and periodicals in the form of press summaries:
Provided, That the source and the name of the author, if appearing on the
work, are mentioned;
(c) The reproduction or communication to the public by mass media of articles
on current political, social, economic, scientific or religious topic, lectures,
addresses and other works of the same nature, which are delivered in public
if such use is for information purposes and has not been expressly reserved:
Provided, That the source is clearly indicated;
(d) The reproduction and communication to the public of literary, scientific or
artistic works as part of reports of current events by means of photography,
cinematography or broadcasting to the extent necessary for the purpose;
(e) The inclusion of a work in a publication, broadcast, or other communication
to the public, sound recording or film, if such inclusion is made by way of
illustration for teaching purposes and is compatible with fair use: Provided,
That the source and of the name of the author, if appearing in the work, are
mentioned;
(f) The recording made in schools, universities, or educational institutions of a
work included in a broadcast for the use of such schools, universities or
educational institutions: Provided, That such recording must be deleted
within a reasonable period after they were first broadcast: Provided, further,
That such recording may not be made from audiovisual works which are part
of the general cinema repertoire of feature films except for brief excerpts of
the work;
(g) The making of ephemeral recordings by a broadcasting organization by
means of its own facilities and for use in its own broadcast;
(h) The use made of a work by or under the direction or control of the
Government, by the National Library or by educational, scientific or
professional institutions where such use is in the public interest and is
compatible with fair use;
(i) The public performance or the communication to the public of a work, in a
place where no admission fee is charged in respect of such public
performance or communication, by a club or institution for charitable or
educational purpose only, whose aim is not profit making, subject to such
other limitations as may be provided in the Regulations;
(j) Public display of the original or a copy of the work not made by means of a
film, slide, television image or otherwise on screen or by means of any other
device or process: Provided, That either the work has been published, or, that
the original or the copy displayed has been sold, given away or otherwise
transferred to another person by the author or his successor in title; and
(k) Any use made of a work for the purpose of any judicial proceedings or for the
giving of professional advice by a legal practitioner.
- Fair use of a copyrighted work for criticism, comment, news reporting, teaching
including limited number of copies for classroom use, scholarship, research, and
similar purposes is not an infringement of copyright.
- Factors to be considered shall include:
(a) The purpose and character of the use, including whether such use is of a
commercial nature or is for non-profit educational purposes;
(b) The nature of the copyrighted work;
(c) The amount and substantiality of the portion used in relation to the
copyrighted work as a whole; and
(d) The effect of the use upon the potential market for or value of the
copyrighted work.
- The fact that a work is unpublished shall not by itself bar a finding of fair use if such
finding is made upon consideration of all the above factors.
INFRINGEMENT
Definition – Infringement of a copyright is a trespass on a private domain owned and
occupied by the owner of the copyright, and, therefore, protected by law, and infringement
of copyright, or piracy, which is a synonymous term in this connection, consists in the doing
by any person, without the consent of the owner of the copyright, of anything the sole right
to do which is conferred by statute on the owner of the copyright. (Microsoft Corporation v.
Manansala et al, G.R. No. 166391, Oct. 21, 2015)
Extent – To constitute infringement, it is not necessary that the whole or even a large
portion of the work shall have been copied. If so much is taken that the value of the original
is sensibly diminished, or the labors of the original author are substantially and to an
injurious extent appropriated by another, that is sufficient in point of law to constitute
piracy. (Habana et al., vs Robles et al., G.R. No. 131522 July 19, 1999)
Infringement – A person infringes a right protected under the IPC when one: (as amended
by RA 10372)
Remedy – Any person infringing a right protected under this law shall be liable:
(a) To an injunction restraining such infringement. The court may also order the
defendant to desist from an infringement, among others, to prevent the
entry into the channels of commerce of imported goods that involve an
infringement, immediately after customs clearance of such goods.
(b) To pay to the copyright proprietor or his assigns or heirs such actual
damages, including legal costs and other expenses, as he may have incurred
due to the infringement as well as the profits the infringer may have made
due to such infringement, and in proving profits the plaintiff shall be required
to prove sales only and the defendant shall be required to prove every
element of cost which he claims, or, in lieu of actual damages and profits,
such damages which to the court shall appear to be just and shall not be
regarded as penalty: Provided, That the amount of damages to be awarded
shall be doubled against any person who:
(c) Deliver under oath, for impounding during the pendency of the action, upon
such terms and conditions as the court may prescribe, sales invoices and
other documents evidencing sales, all articles and their packaging alleged to
infringe a copyright and implements for making them.
(d) Deliver under oath for destruction without any compensation all infringing
copies or devices, as well as all plates, molds, or other means for making such
infringing copies as the court may order.
(e) Such other terms and conditions, including the payment of moral and
exemplary damages, which the court may deem proper, wise and equitable
and the destruction of infringing copies of the work even in the event of
acquittal in a criminal case.