BENGZON

NEGRE
UNTALAN
Intellectual Property Attorneys

INTELLECTUAL PROPERTY LAW

FERDINAND M. NEGRE 1 June 2019

Outline

 Introduction
 IP and the Constitution
 IP in the International Regime
 IP Rights under the IP Code
 Patents, Utility Models and Industrial Designs
Trademarks, Tradenames and Unfair Competition

 Copyrights and Moral Rights

 Special Rules and Jurisdiction on IPR Cases

 Relevant and Recent Jurisprudence

Yosha was able to put together a mechanical water pump
in his garage consisting of suction systems capable of
drawing water from the earth using less human effort
than what was then required by existing models. The
water pump system provides for a new system which has
the elements of novelty and inventive steps. Yosha, while
preparing to have his invention registered with the IPO,
had several models of his new system fabricated and sold
in his province.
(a) is Yosha's invention no longer patentable by virtue of
the fact that he had sold several models to the public
before the formal application for registration of patent
was filed with the IPO? (2.5%)
(b) if Yosha is able to properly register his patent with the
IPO, can he prevent anyone who has possession of the
earlier models from using them? (2.5%)
First, why IP?

➢ IP may make or unmake you as a bar passer, as a

lawyer
➢ IP may make or unmake you as a bar top-notcher
➢ You will know what to do when confronted with an
IP case
➢ IP practice is very international
➢ IP practice is closely related to business, art and
technology
➢ We are all consumers here -
➢ IP is closest to everyone’s [daily] life!
Why IP?

BAR QUESTIONS on IP (2007-2018)

 2007 5% or .75 pt. copyright
 2008 12% or 1.8 pts. 2 copyrights
 2009 9% or .1.35 pts. 2 copyrights, TM
 2010 15% or 2.25 pts licensing, TM, patent
 2011-12 MCQs only
 2013 8% or 1.2 pts copyright
 2014 13% or 1.95 pts 2 TMs, copyright
 2015 13% or 1.95 pts copyright, patent, 2 TMs
 2016 15% or 2.25 pts 3 trademarks
 2017 10% or 1.5 pts 2 copyrights, patent
 2018 12.5% or 1.875 pts trademark, patent
2014 BAR EXAMS

 Only 11.43% (684 out of 5,984) passed

 28.65% (1,709) passed in mercantile law
 13% or 3 questions on IP
 13% at 15% weight = 1.95 percentage points in total
grade
• 984 examinees garnered a grade between 71.05-74.99
◼ 429 garnered a grade between 73 - 74.99
◼ 555 garnered a grade between 71.05 - 72.99

 Difference between 10th and 11th place: 00.15

percentage points
Why IP?

The next 8 hours or so can make a big difference

in your life!
INTELLECTUAL PROPERTY LAW
Intellectual Property Defined

 the legal rights which result from intellectual

activities in the industrial, scientific, literary and
artistic fields
 creations of the mind, such as

 inventions;
 literary and artistic works;
 designs; and
 symbols, names and images used in commerce.
Intellectual Property and the Constitution

Article 14, Section 13, 1987 Constitution

“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 period as may be provided by law.”
Intellectual Property and the Constitution

Article 14, Section 13, 1987 Constitution

“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 period as may be
provided by law.”
 Exclusive Rights

 Limited in time, scope and space

 exceptions and limitations

 Territory
“Intellectual Property Rights”

 It is property
 Articles 520-522 (Trademarks) and 721-724
(Copyrights/Patents), Civil Code
 Creations of the human mind or intellect

 Intangible asset

 Vs. Object/Embodiment

 Intellectual property rights

 Exclusive rights to do or prohibit

 May be assigned or licensed to others
 May be infringed
Kinds of IP rights

Trademarks Patents
Trade name Utility Model
Industrial Design
Geographic Indications
Layout design
Copyright
Trade Secret
IP Rights Protected Under the IP Code

 Copyright – Programs: OS and Apps

 Patent – Camera; Facial recognition

 Trademark – word mark or logo

 Industrial Design – Design and

Shape of the phone

 Layout Design of Integrated Circuits

– The circuits or the map that

compose the microchip in the phone
 Geographic Indications

 Trade Secret – ?
IP Rights Under the IP Code

 Intellectual Property Code, R.A. 8293, January 1, 1998

 Amendments:

 R.A. 9502, ”Universally Accessible Cheaper and

Quality Medicines Act of 2008”

 R.A. 10372 on Copyrights (2013)

IP Rights Under the IP Code

 Intellectual Property Code, R.A. 8293, January 1, 1998

 Amendments:

 R.A. 9502, "Universally Accessible Cheaper and

Quality Medicines Act of 2008".
◼ Compulsory Licensing on the manufacture of
patented medicines
◼ Compulsory licensing on the importation of
medicines protected by patent or trademark
◼ Non-patentability of second use of known substance
unless there is enhanced efficacy
IP Rights Under the IP Code

 Intellectual Property Code, R.A. 8293, January 1, 1998

 Amendments:

 R.A. 10372 on Copyrights (2013)

◼ Retransmission of broadcast made a right
(reversing ABS-CBN vs. Phil. Media [2009])
◼ Vicarious liability including landlord liability
◼ Providing as aggravating circumstances the ff.:
◼ circumvention of effective technological measure
and
◼ electronic rights management information
RA 8293, IP Code

Section 2. Declaration of State Policy. - 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.
Article XII, Constitution

SECTION 6. The use of property bears a social

function, and all economic agents shall contribute to
the common good. Individuals and private groups,
including corporations, cooperatives, and similar
collective organizations, shall have the right to own,
establish, and operate economic enterprises, subject to
the duty of the State to promote distributive justice
and to intervene when the common good so demands.
Nature of IP Protection

SC:

“…intellectual property protection is merely a means

towards the end of making society benefit from the
creation of its men and women of talent and genius .
This is the essence of intellectual property laws, and it
explains why certain products of ingenuity that are
concealed from the public are outside the pale of
protection afforded by the law. It also explains why
the author or the creator enjoys no more rights than
are consistent with public welfare.” [ABS-CBN v. Phil.
Multi-Media, G.R. Nos. 175769-70, Jan 19, 2009]
 Important Distinctions

“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. CA, G.R. No. 115758, [2002])
 Distinctions
PATENT COPYRIGHT TRADEMARK

Subject Invention: Literary or artistic Any visible sign

matter of Technical Solution work which is an capable of
of a problem which original distinguishing the
Protection is new, involves an intellectual goods or services of
inventive step and creation; an enterprise;
is industrially Expression Brand
applicable

Office where Bureau of Patents, Not required; Bureau of

right is Intellectual Optional at The Trademarks,
Property Office National Library Intellectual
registered or IPO Property Office

Duration of 20 years from Generally, 50 10 years, renewable

Right filing or priority years after the indefinitely
date death of author
International Regime of IP Rights

 Berne Convention (WIPO)

 Paris Convention (WIPO)

 Internet Treaties (WIPO)

 WIPO Copyright Treaty

 WIPO Performance and Phonograms Treaty

 Patent Cooperation Treaty (WIPO)

 Madrid Protocol (WIPO)

 TRIPs Agreement (WTO)

 The Marrakesh Treaty to Facilitate Access to

Published Works for Persons who are Blind, Visually

Impaired
International Regime of IP Rights

 Berne Convention for the Protection of Literary and

Artistic Works (1886)
 3 Basic Principles
◼ National Treatment
◼ Automatic Protection
◼ Independence of Protection
 Minimum Standards of Protection
International Regime of IP Rights

 Paris Convention on the Protection of Industrial

Property (1883)
 including patents, trademarks, industrial designs,
utility models, service marks, trade names,
geographical indications and the repression of
unfair competition.
 Basic principles
◼ National Treatment
◼ Right of Priority (date of filing)
◼ Common Rules
International Regime of IP Rights

 WIPO Copyright Treaty (WCT)

 deals with the protection of works and the rights of
their authors in the digital environment.
 Two subject matters to be protected by
copyright: (i) computer programs, whatever the mode
or form of their expression; and (ii) compilations of
data or other materials ("databases"), in any form,
which, by reason of the selection or arrangement of
their contents, constitute intellectual creations
 grants: (i) the right of distribution; (ii) the right of
rental; and (iii) a broader right of communication to
the public.
International Regime of IP Rights

 The WIPO Performances and Phonograms Treaty

(WPPT)
 Rights of two beneficiaries in the digital
environment: (i) performers (actors, singers,
musicians, etc.); and (ii) producers of phonograms.
 The Treaty grants performers economic rights in
their performances fixed in phonograms (not in
audiovisual fixations, such as motion
pictures): (i) the right of reproduction; (ii) the right of
distribution; (iii) the right of rental; and (iv) the
right of making available.
International Regime of IP Rights

Trade-Related aspects of Intellectual Property

Agreement or TRIPs (WTO)
 Annex C to the General Agreement on Tariffs and
Trade or GATT
 Basic principles

 National Treatment
 Most-Favoured-Nation Treatment

 3 Main Sets of Provisions

 Minimum Standards: Berne-Plus and Paris-Plus

 Enforcement: Inaudita Altera Parte; border
enforcement
 Dispute Settlement: WTO Procedures
International Regime of IP Rights

Patent Cooperation Treaty or PCT (WIPO)

 A filing system. A PCT application has the effect of

automatically designating all Contracting States bound

by the PCT on the international filing date, as if a
national patent application had been filed with the
national patent office of that member State.
 Advantages:

 brings the world within reach;

 provides a strong basis – through ISR - for patenting
decisions
 Postpones [by 18 months] the major costs associated
with international patent protection.
International Regime of IP Rights

Madrid Protocol (WIPO)

 The Madrid System for the International
Registration of Marks:
◼ filing one application with the International
Bureau (through the office of the home country),
◼ in one language (either English, French or
Spanish)
◼ and paying one set of fees.
 Includes maintenance, renewals, amendments and
assignments.
 IPAP v. ES, et.al.
G .R. No. 204605 July 19, 2016

Background:

 In 2012, the Philippines acceded to the Madrid

Protocol through mere ratification by the
President.

 The IPAP petitioned the SC to declare the

accession as unconstitutional on the ground that
it was in the nature of the treaty and the
accession had not been approved by Congress.
 IPAP v. ES, et.al.
G .R. No. 204605 July 19, 2016

 Whether or not the IPAP has locus standi to challenge

the President's ratification of the Madrid Protocol

 Whether or not the President's ratification of the

Madrid Protocol is valid and constitutional; and

 Whether or not the Madrid Protocol is in conflict with

the IP Code.
 IPAP v. ES, et.al.
G .R. No. 204605 July 19, 2016

 On 19 July 2016, the Supreme Court voted 13-0 in

denying the petition as executive agreements do not
require the consent of Congress

 “The ruling upheld the ‘exercise of discretion’ of the

Secretary of Foreign Affairs to determine whether an
agreement should be considered an executive
agreement or a treaty”

 Moreover, the SC categorically stated that the

accession was not in conflict with the IP Code.
 IPAP v. ES, et.al.
G .R. No. 204605 July 19, 2016

“I have no doubt that many of the lawyers who

practice in the field of trademark protection in
Intellectual Property Law do not have the myopic
goal of simply being administrative agents or local
post offices for owners of foreign marks. I have full
confidence that they can meet the skill and
accreditation requirements to work under the
Madrid Protocol as well as any foreign lawyer…”
 IPAP v. ES, et.al.
G .R. No. 204605 July 19, 2016

“…In an era of more transnational transactions and

markets evolving from national boundaries, we
should adapt as a profession, as surely as our
products become more competitive. The sooner our
profession adapts, the better it can assist our
entrepreneurs and our own industries to weather
the difficult political economies of the world
market.”
The Marrakesh Treaty
The MARRAKESH VIP TREATY:

The Marrakesh Treaty to Facilitate Access to

Published Works by Visually Impaired Persons
and Persons with Print Disabilities
 The Treaty was signed in Marrakesh on June

27, 2013, and came into force on September

30, 2016
 Total Contracting Parties : 80+ (Bolivia)
A “Book Famine” Crisis

Each year, of the millions of books published

worldwide, only 1–7% are made available to the
285 million persons in the world who are blind
and visually impaired, 90 percent of whom live
in low-income settings in developing countries.
In the Philippines…

According to the DOH, over two million

people nationwide are blind or suffering from
poor vision.
The Problem…

Copyright infringement:
There is a lack of legal fair use provisions for:
• Local production and distribution of books in accessible
formats;
• Cross-border distribution of books in accessible formats
to institutions and individuals.
The Treaty’s Objectives

 It has a clear humanitarian and social

development dimension.

 Main goal is to create a set of mandatory

limitations and exceptions for the benefit of
VIPs.
The Treaty’s Objectives

In line with the human rights principles

outlined in the UDHR and the UN Convention
on the Rights of Persons with Disabilities
(UNCRPD), the Marrakesh Treaty is the first
copyright treaty with a clear HR perspective.
The Treaty’s Objectives

 The treaty allows for copyright exceptions to

facilitate the creation of accessible versions of
books and other copyrighted works for visually
impaired persons.
The Treaty’s Objectives

 It sets a norm for countries ratifying the treaty

to have a domestic copyright exception
covering these activities, and allowing for the
import and export of such materials.
“Beneficiary”

 A beneficiary
person is a person
who:
(a) is blind;
“Beneficiary”

(b) has a visual

impairment or a
perceptual or
reading disability;
“Beneficiary”

(c) is otherwise unable,

through physical
disability,

...regardless of any other

disabilities.
“WORKS”

 Literary and artistic

works…, in the form of text,
notation and/or related
illustrations, whether
published or otherwise
made publicly available in
any media.
 “Accessible Format Copy”

 A copy of a work in an
alternative manner or
form which gives a
beneficiary person
access to the work, as
feasibly and comfortably
as a person without
visual impairment or
other print disability.
 A “Book Famine” Crisis

Accessible formats:
 large print for people with low vision,

 Braille for those with total loss of sight

(blind), and
 audio information (for both).

 Currently only 1.7% of the world’s published

books ever make it into accessible formats.
THE MARRAKESH TREATY

vis-à-vis

THE INTELLECTUAL
PROPERTY CODE
 IP Code of the PHILIPPINES

SEC. 184. Limitations on Copyright. –

The following acts shall not constitute infringement of
copyright:

…
“184.1 (l) the reproduction or distribution of published
articles or materials in a specialized format exclusively
for the use of the blind, visually- and reading-impaired
persons: Provided, That such copies and distribution
shall be made on a nonprofit basis and shall indicate
the copyright owner and the date of the original
publication (RA 10372 amending RA 8292 [2013])
 PH accedes to the Marrakesh Treaty

PHL Amb. Evan Garcia hands over the Instrument of Accession of the Philippines to the Marrakesh Treaty to WIPO Director Francis Gurry in Geneva on
18 December 2018
BENGZON

END OF SESSION 1
NEGRE
UNTALAN
Intellectual Property Attorneys

THANK YOU !☺

FERDINAND M. NEGRE