INTELLECTUAL

PROPERTY
RIGHTS (IPR)
Commercial Law Review

CATHERINE B. PANTI
Intellectual Property
Any product or creation of
the human mind
Intellectual Property Rights
“The State shall protect and secure the
exclusive rights of scientists, inventors,
artists, and other gifted citizens to their
intellectual property and creations,
particularly when beneficial to the
people, for such periods as may be
provided by law.”

- Section 13, Article XIV of the

Constitution
Republic Act No. 8293
 Governing law on Intellectual
Property Rights
 Categories of IP Rights
INDUSTRIAL PROPERTY COPYRIGHT AND
RIGHTS RELATED RIGHTS
Trademark Literary and Artistic
Patent Works
Utility Model Derivative Works
Industrial Design
Geogrpahical
Indication
A. INDUSTRIAL PROPERTY
RIGHTS
1. Trademark
 Any visible sign capable of
distinguishing the goods (trademark) of
an enterprise and shall include a
stamped or marked container of goods
(Sec. 121.1, IPR Code)

 Protected for 10 years and renewable

every ten years
Right granted
Exclusive right to prevent all
third parties from using in the
course of trade identical or
similar signs
2. Patent
 Anytechnical solution of a problem in
any field of human activity which is
new, involves an inventive step and is
industrially applicable (Sec. 21, IP
Code)

 Term:
20 years from the filing date of
the application (Sec. 54, IP Code)
 Rights Granted (Sec. 71)
 Could be a product or a process

 PRODUCT: To restrain, prohibit and prevent any

unauthorized person or entity from making, using,
offering for sale, selling or importing such product
 PROCESS: To restraint, prevent or prohibit any
unauthorized person/entity from using the process
and from manufacturing, dealing in, using, selling
or offering for sale, or importing any product
obtained directlty or indirectly from such process
 Right to assign, or transfer by succession the patent
and to conclude licensing contracts for the same
 FIRST TO FILE RULE
 Iftwo 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, IP Code)
Are these
patentable?
 3. UTILITY MODEL
 Models of implement or tools of any industrial
product even if not possessed of the quality of
invention but which is of practical utility
(Sundiang)
 An invention qualifies for registration as a utility if it
is new and industrially applicable. (Sec. 109.1, IP
Code)

 Term:Seven (7) years after the date of the filing,

without any possibility of renewal (Sec. 109.3, IP
Code)
 4. INDUSTRIAL DESIGN
 Any composition of lines or colors or any three-
dimensional form, whether or not asociated with
lines or colors. Provided that such composition
or form gives a special appearance to and can
serve as pattern for an industrial product or
handicraft (Sec. 112, IP Code)

 Term:Five (5 years) from filing date of the

application and may be renewed for not more
than two (2) consecutive periods of 5 years
(Sec. 118)
5. Geographical Indication
A sign used on products that have
a specific geographical origin and
possess qualities or a reputation that
are due to that origin
 GI protectible as Collective
Mark
 Collective Mark
- Any visible sign designated as such in the
application of 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.
 6. Layout Design of Integrated
Circuits
 Thethree dimensional disposition, however
expressed, of the elements,at least one of
twhich is an active element, and of some
or all of the interconnections of an
integrated circuit, or such three-
dimensional disposition prepared for an
integrated circuit intended for
manufacture.
(Sec 112.3,as amended by Sec 1, R.A. 9150)
7. Undisclosed Information
(Trade Secrets)
 Any confidential business
information which provides an
enterprise a competitive edge and
is kept secret.
Trade Secrets
 Per IPOPHL IRR
1. Confidential information
2. Has commercial value
3. Subjected to reasonable steps to
keep it secret
4. No formal registration procedure
required
B. COPYRIGHT AND RELATED
RIGHTS
 Five things to remember about
copyright
1. Copyright protects expression, not ideas.
2. Copyright is automatically protected from the
moment of creation.
3. Copyright comprises a bundle of private and
exclusive economic and moral rights, subject to
limitations and exceptions.
4. Economic rights may be transferred or licensed
completely or partially permanently or temporarily.
5. Infringement of the author’s bundle of rights may
be committed unintentionally.
 1. While ideas are not
protected by copyright,
the expression of such
ideas are
Joaquin vs Drilon (1999)
 BJ Productions Inc. Was the holder of
copyright over the show Rhoda and Me. It
holds rights over the show’s format and style
of presentation.
 In 1991, BJPI president Francisco Joaquin saw
on TV- RPN 9’s show It’s a Date, a show which
appears to have the same format as Rhoda
and Me
 Rhoda and Me It’s a Date
1. Unmarried participatn of one gender Same
(searcher) appears on one side of a
divider while three (3) unmarried
participants of the other gender are
on the other side of the divider.

2. The arrangement was done to

ensure that the seracher does not
see the searchees
 Rhoda and Me It’s a Date
1. Searcher asks a question to be Same
answered by each of the searchees.

2. The purpose is to determing who

among the searchees is the most
compatible with the searcher.
Is It’s a Date an infringement of
the copyright of Rhoda and
Me?
 Joaquin vs Drilon (1999)
 The law in enumerating what are subject to
copyright, refers to finished wOrks and not to
concepts.
 The copyright does not extend to an idea,
procedure, process, system, method of operation,
concept, principle or discovery, regardless of the
form in which it is described, explained, illustrated
or embodied in such work.
 The copyright does not extend to the general
concept or format of its dating game show
Joaquin vs Drilon (1999)
 What then is the subejct matter of
petitioner’s copyright?
- The Supreme Court is of the opinion
that petitioner BJPI’s copyright covers
audio-visual recordings of each episode
of Rhoda and Me
2. WHEN COPYRIGHT VESTS
FROM THE MOMENT OF CREATION

(No need for any formality for

protection particulary deposit and
registration)
When copyright vests
Works are protected by the
sole fact of their creation,
irrespective of the mode or
form of expression as well as
their content, quality and
purpose. (Sec. 172.2)
Sec. 218 Affidavit Evidence
 Theaffidavit shall be admitted in evidence in
any proceedings under thi Chapter and shall
be prima facie proof of the matters therein
stated until the contrary is provided and the
court before whch such affidavit is produced
shall assume that the affidavit was made by
or on behalf of the owner of the copyright.
QUESTION!
 Rudy is a fine arts student in a univeristy and is
roommates with Bernie. During his free time, Rudy
would paint and leave his finished works lying
around the boarding house.
 One day, Rudy saw one of his painting on display
at the university cafeteria. The cafeteria operator
said he purchased the painting from Bernie who
represented himself as its painter and owner.
 Rudy and the cafeteria operator immediately
confronted Bernie. While admitting that he did not
do the painting, bernie claimed ownership of its
copyright sice had already reistered it in his name
with the National Library as provided in the IP
Code.
 Who owns the copyright to the painting?
 = independent
Originality creation +
creativity
Yellow pages

White pages
 Creativity
 There is nothing remotely creative about
aranging names alphabetically in a white
pages directory. It is an age-old practice, firmly
rooted in tradition and is so commonplace
that it has come to be expected as a matter
of course.
Feist Publication vs. Rural telephone
(499 U.S. 340, 111 S. Ct. 1282, 1991)
Requisite for = originality +
copyright copyrightable
protection subject matter
Unprotected Subject Matter
(Sec. 175)
 Ideas, concepts, principle
 Procedure, system method or operation
 Discovery or mere data
 News, items of press information
 Official text translation of laws
 Works of the government
 Original literary and artistic works
 Original intellectual creations in the literary and
artistic domain protected from the moment of
their creation and shall include in particular:
LITERARY ARTISTIC SCIENTIFIC
- Books, - Dramatic or dramatico- - illustrations, maps,
pamphlets, musical compositions, plans, sketches,
articles choreographic works charts and 3D works
- Periodicals and - Musical compositions related to
newspapers - Works of drawing, geography,
- Lectures, painting, architecture topography,
sermons, - Photographic works architecture and
addresses, - Audiovisual and science
dissertations cinematographic works - Computer programs
prepared for oral - Pictorial illustartions and
delivery advertisment
- Letters
Original Works
Derivative Works (Sec. 172.1)
 Dramatizations, translations, adaptations
and other alterations
 Collections of literary, scholarly or artistic
works; compilation of data
- collection/compilation must be original by
reason of the selection/arrangement of
contents
Derivative Works
Protection and exploitation of
derivative works (Sec. 173.2)
 They are also protected as new (original)
works
 But the new work shall not:
- Affect the force of any subsisting copyright
upon the original works employed or any part
thereof, or
- Be construed to imply any right to such use of
the original work (negative rights)
- To secure or extend copyright in such original
works
TERM OF PROTECTION FOR
COPYRIGHT
 Generally, lifetime of author +
50 years after death
3. Copyright comprises a
bundle of private and
exclusive economicand
moral rights subject to
limitations and exceptions
 Private and exclusive
- Bundle of rights belongs to a single
person or group
- To the exclusion (through denial)
of others
Bundle of rights
Economic Rights Moral Rights
- A.k.a copyright - Highlight the
- Allow the owner to personal link
derive financial existing between
reward from the the author and the
use and work
exploitation of the Right to attribution
work Right to maintain
integrity of work
Economic Rights (Sec. 177)
- exclusive right to authorize, prevent or
carry out:
 Reproduction of the work or substantial portion of the
work
 Dramatization, translation, adaptation, abridgment,
arrangement or other transformation of the work
(adaptation)
 First public distribution of the original and each copy of
the work by sale or other forms of transfer of ownership
 Rental of the original or a copy
 Public display of the original or a copy of the work
 Public performance of the work
 Other communication to the public of the work
Is Copyright an Absolute
Right?
 Limitations to copyright (Sec.
184-185, IP Code)
 Reproduction or distribution of published
articles or materials in a specialized format
exclusively for the use of the blind, visually and
reading impaired persons;
 By libraries when work is fragile or for
preservation;
 Fair use: for criticism, comment, news reporting,
teaching, scholarship, research and similar
purposes
Limitations to copyright
 The making of quotations from a published work if
they are compatible with fair use and ontly 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; (Se 184.1b);
 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 the name of the author, if appearing in the
work are mentioned (Sec 184.1e)
 Moral Rights (Sec. 193)
 Attribution or paternity
- To be named as the author
- To restrain the use of one’s name with
respect to distorted versions of the work
o Integrity of the Work
- To make any alterations to own work
- To object to any distortion, mutilation or
other prejudicial modification
Moral Rights
 Non- transferrable
 Waivable, except when waiver allows other
- To use the name of the auhtor, or the title of
his work or otherwise to make use of his
reputation with respect to any version or
adaptation of his work which because of
alterations therein, would substantially tend to
injure the literary or artistic reputation of
another author
- To use the name of the author with respect to
a work he did not create
 “Author” is the natural person who
has created the work (Sec 171.1)

Source:
https://www.npr.org
/sections/thetwo-
way/2017/09/12/55
0417823/-animal-
rights-advocates-
photographer-
compromise-over-
ownership-of-
monkey-selfie
RULES ON OWNERSHIP OF COPYRIGHT

CREATOR IS OWNER
His heirs or assigns

1. ONE CREATOR
2. JOINT CREATION

CO-AUTHORS ARE
OWNERS
3. COMMISIONED WORK
PERSON
COMMISIONING
OWNS THE WORK

OWNERSHIP OF
COPYRIGHT IS WITH
CREATOR
4. AUDIO-VISUAL WORK
PRODUCER=
EXHIBITION

OTHER PURPOSES=
PRODUCER, AUTHOR
OF SCENARIO,
COMPOSER, FILM
DIRECTOR AND
AUTHOR OF WORK
5. ANONYMOUS WORK

PUBLISHER=
REPRESENTATIVE OF
AUTHOR
6. EMPLOYEE’S WORK DURING
COURSE OF EMPLOYMENT

EMPLOYER IS THE
OWNER
INFRINGEMENT OF COPYRIGHT (Sec.
126)
1. Directly committing an infringement
- Violating the exclusive right of owner to
authorize, prevent, carry out reproduction, etc.)
2. Benefits from the infringing activity of another
person who commits an infringement
3. With knowledge of infringing activity, induces,
causes or materially contributes to the infringing
conduct of another
Will an excuse of “no copyright
infringement intended” exempt
one from liability?

No copyright infringement
intended
 Penalty for “Unintentional”
Infringement
 The court may reduce in its discretion
the award of statutory damages to a
sum of not more than Ten Thousand
Pesos (Php 10,000)
 Double damages awarded tothose
- Who circumvent effective technological
measures or
- Alter digital rights management
information
PLAGIARISM
“Deliberate and knowing presentation
of another person’s original ideas or
creative expression as one’s own.”

- Blacks Law Dictionary

Plagiarism in the IP Code
 The IP Code does not define plagiarism
 Closest concept: Infringement of moral
right to be attributed
- the author of the work shall
independently of the economic rights, have
the right to require that the authorship of
the works be attributed to him xxx (Sec
193.1)
 Plagiarism vs Copyright Infringement
Plagiarism Copyright Infringement
The use of another’s information, The unauthorized use of
language or writing when done copyrighted material in a manner
without proper acknowledgment that violates one of the copyright
of the original source owner’s exclusive rights
Specific ct as it refers only to Broad term that describes a
using someone else’s work variety of acts (e.g. duplication,
without proper acknowledgment rewriting, performing a writte
work or doing anything which is
an exclusive right of a copyright
holder)
Copying need noe be substantial Substantial
May exist even if none of the Copying must refer to the
same words are used to express expression of an idea
an idea
Thank you!

References:
1. Republic Act No. 8293
2. Commercial Law Review by Sundiang,
Part VII- Intellectual Property Code
3. 1987 Philippine Constitution
4. Discussions on IPR by Atty. Louie
Calvario, Attorney VI-Bureau of
Patents,IPO-PHL