Intellectual Property Law (R.A. No. 8293 a.k.a.

date or priority date of the application claiming

Intellectual Property Code of the Philippines) the invention.
A. The Law on Patents 4. (Industrial Applicability) It must be industrially
i. Definition of Patent – It is a grant issued by the applicable. An invention that can be produced
government through the Intellectual Property Office and used in any industry shall be industrially
of the Philippines (IP Philippines). It is an exclusive applicable.
right granted for a product, process or an v. Non-Patentable Inventions.
improvement of a product or process which is new, 1. Discoveries, scientific theories and mathematical
inventive and useful. This exclusive right gives the methods;
inventor the right to exclude others from making, 2. Schemes, rules and methods of performing
using, or selling the product of his invention during mental acts, playing games or doing business,
the life of the patent. and programs for computers;
ii. Mode of Creation of right – It must be registered 3. Methods for treatment of the human or animal
with IPO to be protected by law (Created by body by surgery or therapy and diagnostic
Registration with IPO). methods practiced on the human or animal
iii. Terms of Patent – A patent has a term of protection body. This provision shall not apply to products
of twenty (20) years providing an inventor significant and composition for use in any of these
commercial gain. In return, the patent owner must methods;
share the full description of the invention. This 4. Plant varieties or animal breeds or essentially
information is made available to the public in the biological process for the production of plants or
form of the Intellectual Property Official Gazette and animals. This provision shall not apply to micro-
can be utilized as basis for future research and will in organisms and non-biological and microbiological
turn promote innovation and development. processes. Provisions under this subsection shall
iv. Requisites of Patentable Inventions not preclude Congress to consider the enactment
1. It must be a technical solution to a problem in of a law providing sui generis protection of plant
any field of human activity. It may be, or may varieties and animal breeds and a system of
relate to, a product, or process, or an community intellectual rights protection
improvement of any of the foregoing. 5. Aesthetic creations; and
2. (Novelty) It must be new. An invention shall not 6. Anything which is contrary to public order or
be considered new if it forms part of a prior art. morality.
Prior art shall consist of: vi. First to File Rule - If two (2) or more persons have
a. Everything which has been made available to made the invention separately and independently of
the public anywhere in the world, before the each other, the right to the patent shall belong to the
filing date or the priority date of the person who filed an application for such invention, or
application claiming the invention; and where two or more applications are filed for the
b. The whole contents of an application for a same invention, to the applicant who has the earliest
patent, utility model, or industrial design filing date or, the earliest priority date.
registration, published in accordance with vii. Right of Priority - An application for patent filed by
this Act, filed or effective in the Philippines, any person who has previously applied for the same
with a filing or priority date that is earlier invention in another country which by treaty,
than the filing or priority date of the convention, or law affords similar privileges to
application: Provided, That the application Filipino citizens, shall be considered as filed as of the
which has validly claimed the filing date of date of filing the foreign application: Provided, That:
an earlier application under Section 31 of (a) the local application expressly claims priority; (b)
this Act, shall be prior art with effect as of it is filed within twelve (12) months from the date
the filing date of such earlier application: the earliest foreign application was filed; and (c) a
Provided further, That the applicant or the certified copy of the foreign application together
inventor identified in both applications are with an English translation is filed within six (6)
not one and the same. (Sec. 9, R.A. No. 165a) months from the date of filing in the Philippines.
3. (Inventive Step) It must involve an inventive viii. Right to a Patent - The right to a patent belongs to
step. An invention involves an inventive step if, the inventor, his heirs, or assigns. When two (2) or
having regard to prior art, it is not obvious to a more persons have jointly made an invention, the
person skilled in the art at the time of the filling right to a patent shall belong to them jointly.
ix. Inventions Created Pursuant to a Commission - The
person who commissions the work shall own the
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 patent, unless otherwise provided in the contract. In ii. Mode of Creation of right – Trademark, service mark
case the employee made the invention in the course and collective mark must be registered with IPO to
of his employment contract, the patent shall belong be protected by law while trade name need not be
to: registered to be protected. (Created by Registration)
1. The employee, if the inventive activity is not a iii. Non-registrable marks – a mark cannot be registered
part of his regular duties even if the employee if it:
uses the time, facilities and materials of the 1. Consists of immoral, deceptive or scandalous
employer. matter, or matter which may disparage or
2. The employer, if the invention is the result of the falsely suggest a connection with persons,
performance of his regularly-assigned duties, living or dead, institutions, beliefs, or
unless there is an agreement, express or implied, national symbols, or bring them into
to the contrary. contempt or disrepute;
x. Tests of Patent Infringement 2. Consists of the flag or coat of arms or other
1. Literal Infringement – In using literal infringement
insignia of the Philippines or any of its
as a test, resort must be had, in the first instance,
political subdivisions, or of any foreign
to the words of the claim. If accused matter
nation, or any simulation thereof;
clearly falls within the claim, infringement is made
3. Consists of a name, portrait or signature
out and that is the end of it. To determine
identifying a particular living individual
whether the particular item falls within the literal
except by his written consent, or the name,
meaning of the patent claims, the court must
juxtapose the claims of the patent and the signature, or portrait of a deceased President
accused product within the overall context of the of the Philippines, during the life of his
claims and specifications, to determine whether widow, if any, except by written consent of
there is exact identity of all material elements. the widow;
2. Doctrine of equivalent infringement – It provides 4. Is identical with a registered mark belonging
that infringement also takes place when a device to a different proprietor or a mark with an
appropriates a prior invention by incorporating its earlier filing or priority date, in respect of: (i)
innovative concept an, although with some The same goods or services, or (ii) Closely
modification and change, performs substantially related goods or services, or (iii) If it nearly
the same function in substantially the same way resembles such a mark as to be likely to
to achieve substantially the same result. It deceive or cause confusion;
requires satisfaction of the function-means-and- 5. Is identical with, or confusingly similar to, or
result test. constitutes a translation of a mark which is
considered by the competent authority of
B. The Law on Trademarks, Services Marks and Trade the Philippines to be well-known
Names
internationally and in the Philippines,
i. Definition of Terms
whether or not it is registered here, as being
1. “Trademark” – It means any visible sign capable
already the mark of a person other than the
of distinguishing the goods of an enterprise and
applicant for registration, and used for
shall include a stamped or marked container of
identical or similar goods or services:
goods
Provided, That in determining whether a
2. “Service mark” – It means any visible sign
capable of distinguishing goods of an enterprise mark is well-known, account shall be taken of
and shall include a stamped or marked container the knowledge of the relevant sector of the
of services public, rather than of the public at large,
3. “Collective mark” – means any visible sign including knowledge in the Philippines which
designated as such in the application for has been obtained as a result of the
registration and capable of distinguishing the promotion of the mark;
origin or any other common characteristic, 6. Is identical with, or confusingly similar to, or
including the quality of goods or services of constitutes a translation of a mark
different enterprises which use the sign under considered well-known in accordance with
the control of the registered owner of the the preceding paragraph, which is registered
collective mark. in the Philippines with respect to goods or
4. “Trade name” means the name or designation services which are not similar to those with
identifying or distinguishing an enterprise.
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 respect to which registration is applied for: 1. Trademark Infringement means any person who
Provided, That use of the mark in relation to shall use, without the consent of the registrant,
those goods or services would indicate a any reproduction, counterfeit, copy or colorable
connection between those goods or services, imitation of any registered mark or trade-name
and the owner of the registered mark: in connection with the sale, offering for sale, or
Provided further, That the interests of the advertising of any goods, business or services
owner of the registered mark are likely to be on or in connection with which such use is likely
damaged by such use; to cause confusion or mistake or to deceive
7. Is likely to mislead the public, particularly as purchasers or others as to the source or origin
to the nature, quality, characteristics or of such goods or services, or identity of such
geographical origin of the goods or services; business; or reproduce, counterfeit, copy or
8. Consists exclusively of signs that are generic colorably imitate any such mark or trade-name
for the goods or services that they seek to and apply such reproduction, counterfeit, copy,
identify; or colorable imitation to labels, signs, prints,
9. Consists exclusively of signs or of indications packages, wrappers, receptacles or
that have become customary or usual to advertisements intended to be used upon or in
designate the goods or services in everyday connection with such goods, business or
language or in bona fide and established services, shall be liable to a civil action by the
trade practice; registrant for any or all of the remedies herein
10. Consists exclusively of signs or of indications provided. (1) the validity of plaintiff’s mark; (2)
that may serve in trade to designate the kind, the plaintiff’s ownership of the mark; and (3)
quality, quantity, intended purpose, value, the use of the mark or its colorable imitation by
geographical origin, time or production of the alleged infringer results in likelihood of
the goods or rendering of the services, or confusion.
other characteristics of the goods or services; 2. Unfair competition has been defined as the
11. Consists of shapes that may be necessitated passing off (or palming off) or attempting to
by technical factors or by the nature of the pass off upon the public of the goods or
goods themselves or factors that affect their business of one person as the goods or business
intrinsic value; of another with the ends and probable effect of
12. Consists of color alone, unless defined by a deceiving the public. The essential elements of
given form; or Is contrary to public order or unfair competition are (1) confusing similarity in
morality. the general appearance of the goods; and (2)
iv. Term of Trademark and Service Mark – it has a term intent to deceive the public and defraud a
of 10 years but subject to unlimited times of competitor. Jurisprudence also formulated the
renewal. Therefore, it has indefinite life. following true test of unfair competition:
v. Tests of Trademark Infringement whether the acts of the defendant have the
1. Dominancy test – if focuses on the similarity of intent of deceiving or are calculated to deceive
the main, prevalent or essential features of the the ordinary buyer making his purchases under
competing trademarks that might cause the ordinary conditions of the particular trader
confusion. Infringement takes place when the
to which the controversy relates. One of the
competing trademark contains the essential
essential requisites in an action to restrain
features of another. Imitation or an effort to
unfair competition is proof of fraud; the intent
imitate is unnecessary. The question is whether
to deceive, actual or probable must be shown
the use of the marks is likely to cause confusion
before the right to recover can exist.
or deceive purchasers.
3. Note: there can be trademark infringement
2. Holistic test – It considers the entirety of the
marks, including labels and packaging, in without unfair competition such as when the
determining confusing similarity. The focus is not infringer discloses on the labels containing the
only on the predominant words but also on the mark that he manufactures the goods, thus
other features appearing on the labels. preventing the public from being deceived that
vi. Difference between Trademark Infringement and the goods originate from the trademark owner.
Unfair Competition In this case, no issue of confusion arises
because the same manufactured products are

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 sold; only the ownership of the trademarks is at c. Right of integrity (to object to any prejudicial
issue. distortion)
d. Right to restrain use of his name
C. The Law on Copyright vi. Ownership of copyright
i. Definition of Copyright – It is the legal protection 1. Generally, the natural person who created the
extended to the owner of the rights in an original literary and artistic work owns the copyright to
work. the same.
ii. Definition of “Original Work” – It refers to every 2. For work created during or in the course of
production in the literary, scientific and artistic employment (works for hire):
domain. Among the literary and artistic works a. Employee – if the work is not part of his
enumerated in the IP Code includes books and other regular duties, even if he used the time
writings, musical works, films, paintings and other facilities, and materials of the employer;
works, and computer programs. b. Employer – if the work is the result of the
iii. Mode of creation of right - Works are protected by performance of his regularly assigned duties,
the sole fact of their creation, irrespective of their unless there is an express or implied
mode or form of expression, as well as of their agreement to the contrary.
content, quality and purpose. Thus, it does not 3. For commissioned works: the person who
matter if, in the eyes of some critics, a certain commissioned the work owns the work but the
copyright thereto remains with the creator, unless
work has little artistic value. So long as it has been
there is written agreement to the contrary.
independently created and has a minimum of
4. For audiovisual works: the producer, the author of
creativity, the same enjoys copyright protection.
the scenario, the composer of the music, the film
(From the moment of Creation without a need for
director, and the author of the work so adapted.
registration)
vii. Infringement of Copyright – It consists in infringing
iv. Term of copyright – In general, the term of
any right secured or protected under the Code. It
protection of copyright for original and derivative
may also consist in aiding or abetting such
works is the life of the author plus fifty (50) years
infringement. The law also provides for the liability of
after his death. The Code specifies the terms of
a person who at the time when copyright subsists in
protection for the different types of works. In
a work has in his possession an article which he
calculating the terms of protection, the term of
knows, or ought to know, to be an infringing copy of
protection subsequent to the death of the author
the work for the purpose of:
shall run from the date of his death or if publication,
1. Selling or letting for hire, or by way of trade
but such terms shall always be deemed to begin on
offering or exposing for sale or hire, the article;
the first day of January of the year following the
2. Distributing the article for the purpose of trade, or
event which gave rise to them (i.e. death,
for any other purpose to an extent that will
publication, making).
prejudice the rights of the copyright owner in the
v. Two rights under Copyright
work; or
1. Economic rights which enable the creator to
3. Trade exhibit of the article in public.
obtain remuneration from the exploitation of his
viii. Works that can be protected by Copyrights
works by third parties.
(Copyrightable Works)
a. Reproduction
b. Transformation 1. Books, pamphlets, articles and other
c. First public distribution writings;
d. Rental 2. Periodicals and newspapers;
e. Public display 3. Lectures, sermons, addresses, dissertations
f. Public performance prepared for oral delivery, whether or not
g. Other communication to the public of the reduced in writing or other material form;
work 4. Letters;
2. Moral rights which make it possible for the 5. Dramatic or dramatico-musical compositions;
creator to undertake measures to maintain and choreographic works or entertainment in
protect the personal connection between himself dumb shows;
and the work. 6. Musical compositions, with or without
a. Right of attribution words;
b. Right of alteration 7. Works of drawing, painting, architecture,
sculpture, engraving, lithography or other
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 works of art; models or designs for works of
art;
8. Original ornamental designs or models for
articles of manufacture, whether or not
registrable as an industrial design, and other
works of applied art;
9. Illustrations, maps, plans, sketches, charts
and three-dimensional works relative to
geography, topography, architecture or
science;
10. Drawings or plastic works of a scientific or
technical character;
11. Photographic works including works
produced by a process analogous to
photography; lantern slides;
12. Audiovisual works and cinematographic
works and works produced by a process
analogous to cinematography or any process
for making audio-visual recordings;
13. Pictorial illustrations and advertisements;
14. Computer programs; and other literary,
scholarly, scientific and artistic works.
ix. Works that are not protected by Copyrights (Non-
copyrightable Works)
1. any idea, procedure, system, method or
operation, concept, principle, discovery or
mere data as such, even if they are expressed,
explained, illustrated or embodied in a work;
2. news of the day and other miscellaneous facts
having the character of mere items of press
information; or
3. any official text of a legislative, administrative
or legal nature, as well as any official
translation thereof

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