Module 1.

Intellectual Property Code

KORBEL
FOUNDATION COLLEGE, INC.
Purok Spring, Brgy. Morales, Koronadal City
Telephone No.: 228 – 1996

Regulatory Framework
and
Legal Issues in Business
(MODULE 1)

Name: ______________________________________________________
Course and Year Level: ___________________________________________
Contact no.: __________________________________________________
E-mail Address: ________________________________________________
Instructor: ___________________________________________________
Date Received: __________________ Students Signature: _______________

To be filled out by the instructor:

Date Returned: __________________ Instructors Signature: ______________

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 Module 1. Intellectual Property Code

Study Schedule

In order for the students to maximize their time; the instructor suggest to follow the
table provided below when dealing with the module.

The Date. It corresponds to when you should do the course of action.

The Course of Action. It corresponds to what you should do to the module.
The Time to Spent. A suggested time frame for doing the course of action.
The Remarks. Corresponds to the student’s notes on the following course of
actions. Put “Done” on the space provided if the course of actions has been
achieved.

DATE COURSE OF ACTION TIME TO SPENT REMARKS

Read and understand 1 hour and 30
April 21, Intellectual property code minutes (7:30
2021 (Wed) (General Overview to Law on A.M. – 9:00 A.M)
Copyrights)
Skimming of the content of 30 minutes (7:30
April 22, module 1 A.M. – 8:00 A.M)
2021 (Thu) Answer the D-I-Y Quiz and 1 hour (8:00 A.M.
Case Study – 9:00 A.M)

OBJECTIVES:

At the end of the discussion, the student should be able to:

 Understand the intellectual property law; its concept, function and purpose.
 Understand the law on patents, trademarks, and copyrights; its concept, function
and purpose.
 Define the terminologies used in the context.

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 Module 1. Intellectual Property Code

I. DISCUSSIONS
REPUBLIC ACT NO. 8293
INTELLECTUAL PROPERTY CODE
OF THE PHILIPPINES

PART I. GENERAL OVERVIEW

Republic Act No. 8293 – An Act Prescribing the Intellectual Property Code and Establishing the
Intellectual Property Office, Providing for Its Powers and Functions, and for Other Purposes, also known as the
Intellectual Property Code of the Philippines.

Rationale

The State recognizes that an effective intellectual and industrial property system is vital to the
development of domestic and creative activity, facilitates transfer of technology, attracts foreign investments, and
ensures market access for our products. It 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 provided in this Act.

The use of intellectual property bears a social function. To this end, the State shall promote the diffusion
of knowledge and information for the promotion of national development and progress and the common good.

It is also the policy of the State to streamline administrative procedures of registering patents, trademarks
and copyright, to liberalize the registration on the transfer of technology, and to enhance the enforcement of
intellectual property rights in the Philippines.

Effect on International Conventions and on Principle of Reciprocity

Any person who is a national or who is domiciled or has a real and effective industrial establishment in a
country which is a party to any convention, treaty or agreement relating to intellectual property rights or the
repression of unfair competition, to which the Philippines is also a party, or extends reciprocal rights to nationals
of the Philippines by law, shall be entitled to benefits to the extent necessary to give effect to any provision of
such convention, treaty or reciprocal law, in addition to the rights to which any owner of an intellectual property
right is otherwise entitled by this Act.

Intellectual Property

Intellectual property (IP) refers to any creation or product of the human mind or intellect. It can be an
invention, an original design, a practical application of a good idea, a mark of ownership such as trademark,
literary and artistic works, among other things. The term intellectual property rights consists of
(1) copyrights and related rights; - our focus
(2) trademarks and service marks; - our focus
(3) geographic indications;
(4) industrial designs;
(5) patents; - our focus
(6) layout-designs (topographies) of integrated circuits; and
(7) protection of undisclosed information.

Intellectual creations are deemed necessary for a successful business since IPs allow the recognition
and control over the commercialization of a creation or invention. An effective IP system is vital to ensure the
development of domestic and creative activity, to facilitate the transfer of technology, to attract foreign investment
and to ensure market access for products.

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PART II. LAW ON PATENTS

What Is a Patent?

A patent is a right granted to an inventor by the government that permits the inventor to exclude others
from making, selling or using the invention for a period of time. The patent system is designed to encourage
inventions that are unique and useful to society.

There are three different kinds of patents:

1. Utility Patents – The most common type of patent, these are granted to new machines,
chemicals, and processes.
2. Design Patents – Granted to protect the unique appearance or design of manufactured
objects, such as the surface ornamentation or overall design of the object.
3. Plant Patents – Granted for the invention and asexual reproduction of new and distinct plant
varieties, including hybrids (asexual reproduction means the plant is reproduced by means
other than from seeds, such as by grafting or rooting of cuttings).

Which inventions are patentable?

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.

Which items shall be excluded from patent protection?

The following shall be excluded from patent protection:

 Discoveries, scientific theories and mathematical methods
 Schemes, rules and methods of performing mental acts, playing games or doing
business, and programs for computers
 Methods for treatment of the human or animal body by surgery or therapy and
diagnostic methods practiced on the human or animal body (except products and
composition for use in any of these methods)
 Plant varieties or animal breeds or essentially biological process for the production of
plants or animals (except micro-organisms and non-biological and microbiological
processes)
 Aesthetic creations
 Anything which is contrary to public order or morality.

What is novelty?

Novelty is the quality of being new, or following from that, of being striking, original or unusual. Novelty
may be the shared experience of a new cultural phenomenon or the subjective perception of an individual.

An invention shall not be considered new if it forms part of a prior art.

What is prior art?

Prior art shall consist of 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.

What constitutes non-prejudicial disclosure?

The disclosure of information contained in the application during the twelve (12) months preceding the
filing date or the priority date of the application shall not prejudice the applicant on the ground of lack of novelty if
such disclosure was made by:

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(a) The inventor;

(b) A patent office and the information was contained (a) in another application filed by the inventor and
should not have 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; or
(c) A third party which obtained the information directly or indirectly from the inventor.

Inventor also means any person who, at the filing date of application, had the right to the patent.

To whom does the right to a patent belong?

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. If the patent is created pursuant to a
commission, the person who commissions the work shall own the patent, unless otherwise provided in the
contract.

Who owns the patent for an invention made by the employee in the course of his employment 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.

What is the “first to file rule”?

If 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.

When does a patent take effect?

A patent shall take effect on the date of the publication of the grant of the patent in the IPO (Intellectual
Property Office) Gazette.

What is the legal life of a patent?

The term of a patent shall be 20 years from the filing date of the application.

What remedies a person who has a right to patent?

1. If a person referred to in “first to file rule” other than the applicant, is declared by final court order or
decision as having the right to the patent, such person may, within three (3) months after the decision
has become final:

(a) Prosecute the application as his own application in place of the applicant;
(b) File a new patent application in respect of the same invention;
(c) Request that the application be refused; or
(d) Seek cancellation of the patent, if one has already been issued.

2. If a person, who was deprived of the patent without his consent or through fraud is declared by final court
order or decision to be the true and actual inventor, the court shall order for his substitution as patentee,
or at the option of the true inventor, cancel the patent, and award actual and other damages in his favor
if warranted by the circumstances.

What rights are given to a patent owner?

A patent shall confer on its owner the following exclusive rights:

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 Where the subject matter of a patent is a product, to restrain, prohibit and prevent any
unauthorized person or entity from making, using, offering for sale, selling or importing that
product
 Where the subject matter of a patent is a process, to restrain, prevent or prohibit any
unauthorized person or entity from using the process, and from manufacturing, dealing in, using,
selling or offering for sale, or importing any product obtained directly or indirectly from such
process
 The right to assign, or transfer by succession the patent, and to conclude licensing contracts for
the same

What are the limitations on the patent rights?

The owner of a patent has no right to prevent third parties from performing, without his authorization, the
acts hereof in the following circumstances:

1. Using a patented product which has been put on the market in the Philippines by the owner of the product,
or with his express consent, insofar as such use is performed after that product has been so put on the
said market: Provided, That, with regard to drugs and medicines, the limitation on patent rights shall apply
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: Provided, further, That the right to import
the drugs and medicines contemplated in this section shall be available to any government agency or
any private third party;

2. Where the act is done privately and on a non-commercial scale or for a non-commercial purpose:
Provided, That it does not significantly prejudice the economic interests of the owner of the patent;

3. Where the act consists of making or using exclusively for experimental use of the invention for scientific
purposes or educational purposes and such other activities directly related to such scientific or
educational experimental use;

4. 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: Provided, That, in order to protect the data submitted by the original patent holder from
unfair commercial use provided in Article 39.3 of the Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS Agreement), the Intellectual Property Office, in consultation with the appropriate
government agencies, shall issue the appropriate rules and regulations necessary therein not later than
one hundred twenty (120) days after the enactment of this law;

5. Where the act consists of the preparation for individual cases, in a pharmacy or by a medical professional,
of a medicine in accordance with a medical prescription or acts concerning the medicine so prepared;
and

6. Where the invention is used in any ship, vessel, aircraft, or land vehicle of any other country entering the
territory of the Philippines temporarily or accidentally: Provided, That such invention is used exclusively
for the needs of the ship, vessel, aircraft, or land vehicle and not used for the manufacturing of anything
to be sold within the Philippines.

7. Any prior user, who, in good faith was using the invention or has undertaken serious preparations to use
the invention in his enterprise or business, before the filing date or priority date of the application on which
a patent is granted, shall have the right to continue the use thereof as envisaged in such preparations
within the territory where the patent produces its effect. The right of the prior user may only be transferred
or assigned together with his enterprise or business, or with that part of his enterprise or business in
which the use or preparations for use have been made.

Can the government may exploit the patent?

A Government agency or third person authorized by the Government may exploit the invention even
without agreement of the patent owner where:

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(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 licensee is anti-competitive; or
(c) In the case of drugs and medicines, there is a national emergency or other circumstance 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 patent by 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.

PART III. LAW ON TRADEMARKS, SERVICE MARKS AND TRADE NAMES

What is a trademark or service mark?

A “mark” means any visible sign capable of distinguishing the goods or service of an enterprise and shall
include a stamped or marked container of goods.

What is the difference between a trademark and service mark?

Trademark refers to goods while service mark refers to service. Trademark example is logo of Head and
Shoulders while example of service mark is logo of Google.

What is a trade name?

“Trade name” means the name or designation identifying or distinguishing an enterprise. For example,
“McDonald's” may be the trade name, but the legal name is “McDonald's Corporation.”

How are rights to a trademark or service mark acquired?

The rights in a mark shall be acquired through registration made validly in accordance with the provisions
of this law.

In what cases is the registration of a trademark or service mark not allowed?

A mark cannot be registered if it:

 Consists of immoral, deceptive or scandalous matter, or matter which may disparage or falsely
suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or
bring them into contempt or disrepute
 Consists of the flag or coat of arms or other insignia of the Philippines or any of its political
subdivisions, or of any foreign nation, or any simulation thereof
 Consists of a name, portrait or signature identifying a particular living individual except by his
written consent, or the name, signature, or portrait of a deceased President of the Philippines,
during the life of his widow, if any, except by written consent of the widow
 Is identical with a registered mark belonging to a different proprietor or a mark with an earlier
filing or priority date, in respect of
o The same goods or services, or
o Closely related goods or services, or
o If it nearly resembles such a mark as to be likely to deceive or cause confusion
 Is identical with, or confusingly similar to, or constitutes a translation of a mark which is
considered by the competent authority of the Philippines to be well-known internationally and in
the Philippines, whether or not it is registered here, as being already the mark of a person other
than the applicant for registration, and used for identical or similar goods or services
 Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-
known in accordance with the preceding paragraph, which is registered in the Philippines with

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respect to goods or services which are not similar to those with respect to which registration is
applied for
 Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical
origin of the goods or services
 Consists exclusively of signs that are generic for the goods or services that they seek to identify
 Consists exclusively of signs or of indications that have become customary or usual to designate
the goods or services in everyday language or in bona fide and established trade practice
 Consists exclusively of signs or of indications that may serve in trade to designate the kind,
quality, quantity, intended purpose, value, geographical origin, time or production of the goods
or rendering of the services, or other characteristics of the goods or services
 Consists of shapes that may be necessitated by technical factors or by the nature of the goods
themselves or factors that affect their intrinsic value
 Consists of color alone, unless defined by a given form
 Is contrary to public order or morality

What is the legal life of a trademark or service mark?

A certificate of registration shall remain in force for 10 years.

What rights does the owner of a registered trademark or service mark have?

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.

What are the rules on assignment and transfer of application and registration of trademark and service
mark?

The following rules are observed:

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.
3. Assignments and transfers shall have no effect against third parties until they are recorded at the
Office.

What is the prohibition on the use of trade names?

A name or designation may not be used as a trade name if by its nature or the use to which such name
or designation may be put:
o it is contrary to public order or morals
o if, in particular, it is liable to deceive trade circles or the public as to the nature of the enterprise
identified by that name

PART III. LAW ON COPYRIGHTS

Terminologies used in the context

1. “Author” is the natural person who has created the work;

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2. A “collective work” is a work which has been created by two (2) or more natural persons at the initiative
and under the direction of another with the understanding that it will be disclosed by the latter under his
own name and that contributing natural persons will not be identified;

3. “Communication to the public” or “communicate to the public” means the making of a work available to
the public by wire or wireless means in such a way that members of the public may access these works
from a place and time individually chosen by them;

4. A “computer” is an electronic or similar device having information-processing capabilities, and a

“computer program” is a set of instructions expressed in words, codes, schemes or in any other form,
which is capable when incorporated in a medium that the computer can read, of causing the computer to
perform or achieve a particular task or result;

5. “Public lending” is the transfer of possession of the original or a copy of a work or sound recording for a
limited period, for non-profit purposes, by an institution the services of which are available to the public,
such as public library or archive;

6. “Public performance”, in the case of a work other than an audiovisual work, is the recitation, playing,
dancing, acting or otherwise performing the work, either directly or by means of any device or process;
in the case of an audiovisual work, the showing of its images in sequence and the making of the sounds
accompanying it audible; and, in the case of a sound recording, making the recorded sounds audible at
a place or at places where persons outside the normal circle of a family and that family’s closest social
acquaintances are or can be present, irrespective of whether they are or can be present at the same
place and at the same time, or at different places and/or at different times, and where the performance
can be perceived without the need for communication within the meaning of Subsection 171.3;

7. “Published works” means works, which, with the consent of the authors, are made available to the public
by wire or wireless means in such a way that members of the public may access these works from a
place and time individually chosen by them: Provided, That availability of such copies has been such, as
to satisfy the reasonable requirements of the public, having regard to the nature of the work;

8. “Rental” is the transfer of the possession of the original or a copy of a work or a sound recording for a
limited period of time, for profit-making purposes;

9. “Reproduction” is the making of one (1) or more copies of a work or a sound recording in any manner or
form.

10. A “work of applied art” is an artistic creation with utilitarian functions or incorporated in a useful article,
whether made by hand or produced on an industrial scale;

11. A “work of the Government of the Philippines” is a work created by an officer or employee of the
Philippine Government or any of its subdivisions and instrumentalities, including government-owned or
controlled corporations as a part of his regularly prescribed official duties.

What is literary and artistic works?

Literary and artistic works, hereinafter referred to as “works”, are original intellectual creations in the
literary and artistic domain protected from the moment of their creation and shall include in particular:

(a) Books, pamphlets, articles and other writings;

(b) Periodicals and newspapers;
(c) Lectures, sermons, addresses, dissertations prepared for oral delivery, whether or not reduced in writing
or other material form;
(d) Letters;
(e) Dramatic or dramatico-musical compositions; choreographic works or entertainment in dumb shows;
(f) Musical compositions, with or without words;
(g) Works of drawing, painting, architecture, sculpture, engraving, lithography or other works of art; models
or designs for works of art;
(h) Original ornamental designs or models for articles of manufacture, whether or not registrable as an
industrial design, and other works of applied art;

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(i) Illustrations, maps, plans, sketches, charts and three-dimensional works relative to geography,
topography, architecture or science;
(j) Drawings or plastic works of a scientific or technical character;
(k) Photographic works including works produced by a process analogous to photography; lantern slides;
(l) Audiovisual works and cinematographic works and works produced by a process analogous to
cinematography or any process for making audio-visual recordings;
(m) Pictorial illustrations and advertisements;
(n) Computer programs; and
(o) Other literary, scholarly, scientific and artistic works.

Works are protected by the sole fact of their creation, irrespective of their mode or form of expression, as well
as of their content, quality and purpose.

Other works protected by law

(p) Dramatizations, translations, adaptations, abridgments, arrangements, and other alterations of literary or
artistic works; and
(q) Collections of literary, scholarly or artistic works, and compilations of data and other materials which are
original by reason of the selection or coordination or arrangement of their contents.

The works referred to in paragraphs (p) and (q) shall be protected as new works; provided, however, that
such 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 works, or to secure or extend copyright in
such original works.

What is a copyright or economic right?

Copyright or economic rights shall consist of the exclusive right to carry out, authorize or prevent the
following acts:
 Reproduction of the work or substantial portion of the work
 Dramatization, translation, adaptation, abridgment, arrangement or other transformation of the
work
 The 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 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
 Public display of the original or a copy of the work
 Public performance of the work
 Other communication to the public of the work

Which works are not protected by copyright?

No protection shall extend, under this law, to:

o 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
o news of the day and other miscellaneous facts having the character of mere items of press
information
o any official text of a legislative, administrative or legal nature, as well as any official translation
thereof

Who owns the rights to a copyright if the work is literary and artistic?

In the case of original literary and artistic works, copyright shall belong to the author of the work.

Who owns the rights to a copyright if there is joint authorship?

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In the case of 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. If, a 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 the original owner of the copyright in the part that he has created.

Who owns the rights to a copyright if pursuant to a commission?

In the case of a work commissioned by a person other than an employer of the author and who pays for
it and the work is made in pursuance of the commission, the person who so commissioned the work shall have
ownership of the work, but the copyright thereto shall remain with the creator, unless there is a written stipulation
to the contrary.

Who owns the rights to a copyright if the work is an audiovisual like movies?

In the case of 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.

Who owns the rights to a copyright if the author is an employee?

In the case of work created by an author during and in the course of his employment, the rules stated on
patent above apply.

Who owns the rights to a letter sent to someone?

In respect of letters, the copyright shall belong to the writer subject to the provisions of Article 723 of the
Civil Code.

What does Article 723 of the Civil Code say on letters?

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.
However, the court may authorize their publication or dissemination if the public good or the interest of justice so
requires.

What acts does not constitute infringement of copyright?

The provisions below shall be interpreted in such a way as to allow the work to be used in a manner which
does not conflict with the normal exploitation of the work and does not unreasonably prejudice the right holder’s
legitimate interests.

(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 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

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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; (n)
(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.

Is reproduction of published work constituting infringement of copyright?

The private reproduction of a published work in a single copy, where the reproduction is made by a
natural person exclusively for research and private study, shall be permitted, without the authorization of the owner
of copyright in the work.

The permission granted above shall not extend to the reproduction of:
(a) A work of architecture in the form of building or other construction;
(b) An entire book, or a substantial part thereof, or of a musical work in graphic form by reprographic
means;
(c) A compilation of data and other materials;
(d) A computer program except as provided in Section 189; and
(e) Any work in cases where reproduction would unreasonably conflict with a normal exploitation of
the work or would otherwise unreasonably prejudice the legitimate interests of the author.

Reprographic Reproduction by Libraries

Any library or archive whose activities are not for profit may, without the authorization of the author of
copyright owner, make a single copy of the work by reprographic reproduction:

(a) Where the work by reason of its fragile character or rarity cannot be lent to user in its original form;
(b) Where the works are isolated articles contained in composite works or brief portions of other
published works and the reproduction is necessary to supply them, when this is considered
expedient, to persons requesting their loan for purposes of research or study instead of lending the
volumes or booklets which contain them; and
(c) Where the making of such a copy is in order to preserve and, if necessary in the event that it is lost,
destroyed or rendered unusable, replace a copy, or to replace, in the permanent collection of another
similar library or archive, a copy which has been lost, destroyed or rendered unusable and copies
are not available with the publisher.

Notwithstanding the above provisions, it shall not be permissible to produce a volume of a work published
in several volumes or to produce missing tomes or pages of magazines or similar works, unless the volume, tome
or part is out of stock: Provided, That every library which, by law, is entitled to receive copies of a printed work,
shall be entitled, when special reasons so require, to reproduce a copy of a published work which is considered
necessary for the collection of the library but which is out of stock.

Reproduction of Computer Program

The reproduction in one (1) back-up copy or adaptation of a computer program shall be permitted, without
the authorization of the author of, or other owner of copyright in, a computer program, by the lawful owner of that
computer program; provided, that the copy or adaptation is necessary for:

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(a) The use of the computer program in conjunction with a computer for the purpose, and to the extent,
for which the computer program has been obtained; and
(b) Archival purposes, and, for the replacement of the lawfully owned copy of the computer program in
the event that the lawfully obtained copy of the computer program is lost, destroyed or rendered
unusable.

No copy or adaptation mentioned above shall be used for any purpose other than the ones determined
in the above text, and any such copy or adaptation shall be destroyed in the event that continued possession of
the copy of the computer program ceases to be lawful.

What is the legal duration of copyright?

Copyright protection for artistic, literary and derivative works lasts for the life of the author plus 50 years
after the author’s death.

II. DO-IT-YOURSELF DRILLS

The following cases of intellectual property law are provided to test the extent of learnings a student have
gained. Encircle the letter of your best choice. Avoid multiple erasures on every number.

1. The Viajera Hotel chain reproduces DVD’s, distributes the copies thereof to its hotels and makes them
available to hotel guests for viewing in the hotel guest rooms and charges a separate fee for the use of
the DVD players. Is Viajera Hotel liable for infringement?
a. Yes, because the reproduction of the DVD violates the copyright or economic rights of the owner of
the film. The hotel charge fees for the use of DVD player as well as there are room charges, they
earn gain from the use of the DVD because it entices the guests to check-in in their hotel.
b. No, the DVD viewing is done privately in the hotel guest rooms.
c. No, the DVD viewing is part of the hotel services and it is the use of the DVD players that is charged
and not the cost of the DVD.
d. None of the choices

2. Paula, doing a cosmetics business, owns a copyright to the name of its facial cream “Chin Chin Suk” and
patent rights for its heart shape case. Joana, who owns a merchandising company advertised and sold
the same product to the public. Paula filed a petition for preliminary injunction against Joana for violation
of his patent and copyright.
a. A preliminary injunction under the rules of court is not the proper remedy in this case
b. The copyright and patent of the name effectively protects Paula from unauthorized use of the same
to the exclusion of others
c. The copyright and patent registration of a trade name would not guarantee the registrant the right to
the exclusive use of the product, not being the proper subjects thereof.
d. All choices

3. Alberto found that the theory of relativity of Einstein is wrong and the correct formula is E=MC/2. He filed
a patent for the same. A relative of Einstein learned of the application and went here to pray for the denial
of the application.
a. The relative of Einstein has no personality to file the petition
b. The application should be denied since the new formula needs to be validated by the science
community
c. The application should be denied since the formula has no relevance to any human activity or
solves any problem
d. None of the choices

4. Narciso Planas invented a gas-saving device, manufactured and sold it to the market without securing a
patent. San Miguel Co., a rich and well-known company, bought one gadget, dismantled the device and
studied it. In due time, the company is manufacturing a gas-saving device similar to the invention of
Narciso Planas. Before offering it for sale, the company secured a patent. Below are the actions and
defenses available for Narciso Planas. Which of the following statements are correct?

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Statement 1: Narciso Planas should first bring an action for the cancellation of the patent illegally secured
by San Miguel Company and on the said proceedings, he must prove that he invented the
device.
Statement 2: Narciso Planas, being the inventor of the gadget, is the owner of an intellectual creation
and is entitled to legal protection of said property right from the unauthorized use of the
same by another person or entity.
Statement 3: While the cancellation proceedings are pending, Narciso Planas may ask the court for
preliminary injunction to prevent San Miguel from manufacturing more gadgets.
Statement 4: San Miguel Co. has a better right over the invention because they secured a patent before
selling the device.

a. Statement 4 is correct
b. Statements 1, 2 and 3 are correct
c. Statements 1 and 2 are correct.
d. Statements 1 and 3 are correct

5. Read the following statements and determine which of the choices are correct:

Statement 1: Infringement is the use by others without the registrant’s consent of a reproduction or
colorable imitation of his trademark, tradename or service mark with the purpose of causing
to mislead or misleading the public that those goods or services are those of the registrant.
Statement 2: The definition of infringement implies that only registered trademarks, trade names and
service marks are protected against infringement or unauthorized use by another or others

a. Statement 1 is true
b. Both statements are true
c. Neither statements are true
d. Only Statement 2 is true

6. Which of the following works are protected and can be copyrighted?

a. A biography containing your life, love and success.

b. None of the choices
c. News of the day and other facts having the character of mere press information.
d. Any work of the Government of the Philippines.

7. The following application has been submitted to the patent office:

Application 1: Patent for the treatment of the human body by therapy.

Application 2: Trademark for the signature of President Marcos with the consent of Senator Bong Bong
Marcos.
Application 3: Copyright for a computer program invented by a professor.

Which should be approved?

a. Application 3
b. Application 2
c. Applications 2 & 3
d. Application 1

8. Ely commissioned Marcus, a renowned artist, to paint a mural in the lobby of his newly renovated building
located at Binondo, for the sum of P2.0 million. Later on, an infringement case was filed by Marcus against
Raimund. Raimund contended that Marcus has no right to file the case. Rule.
a. Marcus has no right because he has no interest to the painting
b. Marcus has no right since Ely owns the painting
c. Marcus has a right provided he obtains the consent of Ely being as the owner of the painting.
d. Marcus has a right since he owns the copyright to the painting, being its creator.

9. Rico is a laptop repair technician. A defective laptop was sold to him. He was able to fix. In its hardrive,
he found a program which he used to develop FACELOOK. Later, Bob filed an action for damages on

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account of an infringement of copyright on the program which he owns. Rico raised as a defense that he
was unaware that what he used was a copyright material.
a. The defense is not valid since there was bad faith when he copied the program considering that
the laptop was only sold to him
b. The defense is valid. Good faith can be used in this case since the laptop is already beyond
repair when it was sold to him.
c. The defense is not valid. It is immaterial whether the infringer was aware or not that the material
he copied has a copyright.
d. The defense is valid since the computer program is an invention hence, not covered by a
copyright.

10. Piolo and Sam are famous personalities who kept a secret love affair. They used a special instant
messaging service which allows them to see one another’s typing on their screen as each letter is
pressed. When KC, the controller of the service facility, found out their identities, she kept a copy of all
the messages, including the song composed by Sam for Piolo, and later published them. Is KC liable for
copyright infringement?
a. No, the letters are not in the form required by law to be protected by copyright
b. Yes, the law does not distinguish if the letters are handwritten or in electronic form
c. Yes, provided the electronic data is authenticated
d. No, there is no artistic or literary work in the letters published

11. Mark manufactured rubber shoes under the brand name of Koby. He did not register it but it became
popular. Years later, Nelson manufactured rubber shoes using the same design and color as Koby but
named it as Shak. Mark filed a case against Nelson. Nelson contended that the name Koby is not
protected. Rule.
a. Nelson is liable since the name is already popular
b. Nelson is not liable since the name is not registered
c. Nelson is liable but not for infringement
d. Nelson is not liable because he gave it a different name

12. Che Che invented a device that can transform rain into fuel. He asked Guevarra to help him register it.
Guevarra suggested that they form a company and register the same. While the application is pending,
Che Che died. Castro, the estranged husband of Che Che now comes contesting the application of the
corporation and filed his own patent application as the sole surviving heir. Rule.
a. Castro has no right since the right to the invention retroacts from its filing hence, favors the
corporation
b. Castro has a right being the heir of Che Che. It also appears that the corporation is not authorized
to file the application
c. Castro has no right since property rights to the invention already passed to the corporation
d. Castro has a right provided it is proven in the estate proceedings of Che Che

13. Unilevel Corporation asked your legal advice regarding their plan to use a trademark with the words
“SWEET CANDY” However, there is an existing and registered trademark using the words “TWEET
CANDY” Which of the following advices are correct.
a. Unilevel is a well-known company and their products are patronized country-wide, they can use
the trademark SWEET CANDY because TWEET CANDY is owned by a small-time company
whose market is within Luzon only.
b. The firm must abandon the plan because another company uses the trademark Tweet Candy
and there is a danger of a suit for infringement. The words Sweet and Tweet is almost similar in
sound and they can confuse or mislead the public.
c. They can use the SWEET CANDY as long as there will be a very different packaging and flavors
so as not to mislead the public.
d. None of the choices

14. Kris Aquino commissioned Mr. Magaling to write a biography of her late father, Ninoy Aquino, for a fee.
Upon completion of the work, Kris paid Mr. Magaling the agreed price. The biography was copyrighted.
Kris, however, changed her mind again upon reading the book and decided not to have it published. Can
Kris Aquino sell the property without the consent of Mr. Magaling?
a. Yes, Kris Aquino can sell the copyrighted biography of her father without need of securing the
consent of Mr. Magaling, the writer of said biography.

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b. Mr. Magaling entered into a contract with Kris Aquino and having compensated, he had parted
with all his rights to the said book, in effect making Kris his assignee.
c. The assignee’s rights include the right to sell the work without the consent of the writer, Mr.
Magaling.
d. All choices
15. X sold its energy drink under the brand name of Cobra. He registered a trademark for the drink.
Subsequently, Y manufactured boots and sold it under the name of Cobra. X knows that there is no
infringement since they have different products. But he wants to file a case on the ground of the theory
of dilution so that the case will prosper. He asks you now what are the conditions so he can use this
theory.
a. Actual damage is suffered by the X
b. If there is a connection between the energy drink and the boots
c. There is confusion in the market as a result of the same brand name with different products
d. None of the choices

III. CASE STUDIES

Problem 1
A famous French culinary school tried to register its 1895 trade mark LE CORDON BLEU in the
Philippines but it was opposed by a local entity which was owned by one of the graduates of the same school.
The graduate started using the same mark in the Philippines long before the French school tried to register but
never applied for trade mark registration. The local entity argued that it was the first to use the mark in the
Philippines, thus it should be entitled to register the mark ahead of the French school. Subsequent to filing the
opposition, the local entity filed its own trade mark application covering the same mark.
Requirement 1: Is the French Culinary School may contest the patent in the Bureau of Legal Affairs of the
Intellectual Property Office of the Philippines? Explain your answer. __________________________________
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Requirement 2: Should the Intellectual Property Office of the Philippines issue a patent to the local entity? Explain
your answer. ___________________________________________________________________________
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Requirement 3: What should you do if the French culinary school seek your advice? Reason out based on the
law provided in the module. ________________________________________________________________
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Problem 2

ABS-CBN filed a copyright infringement case versus its former talent, Willie Revillame, his production
outfit (WilProductions, Inc.), and ABC5, now known as TV5, before the Makati Regional Trial Court (RTC). ABS-
CBN claimed that Revillame and his co-defendants unlawfully infringed on ABS-CBN’s copyright over its show,
Wowowee, citing the violations on the Intellectual Property Code. ABS-CBN stated that as the producer of
Wowowee, it is the legal owner of a valid and subsisting copyright over each and every one of the Wowowee
episodes, and is thus entitled to protection against those who steal its work. ABS-CBN alleged that Revillame's

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new show Willing Willie on TV5 is so closely similar to Wowowee, leaving no doubt that Revillame and the other
defendants "deliberately and intentionally imitated Wowowee to steal the goodwill that Wowowee has built over
the past 5 years of airing in ABS-CBN."

ABS-CBN claimed that despite the new show and segment titles, Willing Willie is "undeniably a copycat
of Wowowee." Among the acts of plagiarism listed in the complaint are:

(1) Willing Willie’s opening song and/or dance number led by its host;
(2) Wowowee’s “BIGA-TEN” versus Willing Willie’s “Big Time Ka”;
(3) Wowowee’s “Willie of Fortune” versus Willing Willie’s “Willtime Bigtime,” which contain portions where
the contestants tell their personal stories and showcase their talents before they play a singing and/or
trivia game;

(4) the dancers/characters of Wowowee are also appearing in Willing Willie, most notable of whom is April
“Congratulations” Gustilo; and,
(5) the set design, stage, studio viewers’ seats lay-out, lighting and camera angles of Willing Willie are
also strikingly similar to Wowowee.

ABS-CBN alleged that TV5's act of broadcasting of the "infringing work Willing Willie has caused and
continues to cause irreparable damage to ABS-CBN." WilProductions, Inc., which produces the show, is also
liable, ABS-CBN said. Also included as defendant is ABC5 President Ray Espinosa. Aside from seeking an award
of damages in the amount of more than P127 Million, ABS-CBN also sought the issuance of a Temporary
Restraining Order (TRO) and/or a Writ of Injunction to restrain Revillame, TV5 and their other co-defendants from
further producing and airing the show Willing-Willie.

Requirement: Research on the internet about the case, then discuss the dismissal of the case by the Court of
Appeals and affirmation of the dismissal of the Supreme Court.
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IV. SOURCES/REFERENCES
Republic Act. No. 2893. https://www.officialgazette.gov.ph/1997/06/06/republic-act-no-8293/

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