INTELLECTUAL PROPERTY LAWIntellectual property defined * Intangible assets resulting from the creative work of an individual or organization * Creations of the mind, such as: > Inventions; Literary and artistic works; Symbols, names, images and designs used in commerce. * The legal rights which result from intellectual activities in the ind scientific, literary and artistic fieldsConstitutional basis * 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.”Coverage of intellectual property rights 1. Copyright and Related Rights; 2. Trademarks and Service Marks; 3. Geographic indications; 4. Industrial designs; 5. Patents; 6. Layout designs (Topographies) of Integrated Circuits; 7. Protection of Undisclosed Information (TRIPS).PATENTS Michael Jackson U.S. Patent 5,255,452 Method and means for creating anti- ~ Ss ‘gravity illusion ‘oTABOR BROWDER AUTOMATIC BED MAKER Fig 4 Patente ly 27, 1999 ~ 23s Nos 5,926,874* Patent No. 6,637,447: Beerbrella Figure 2v Aw > 3G 3 2 < £ Ss = a 3 € S z iE s 2 s <BASIC PATENT PRINCIPLES 1. TERRITORIALITY - patents are only valid in the country or region in which they have been granted 2. FIRST-TO-FILE —applicant who files first will get the patent 3. DISCLOSURE —applicant shall disclose the invention in a manner sufficiently clear and complete - Quid pro quo principle — protection in exchange for disclosure 4. CONDITIONAL — patents are granted only upon compliance with the criteria of patentability 5. LIMITED RIGHTSPatentable inventions * any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable. It may be, or may relate to, a product, or process, or an improvement of any of the foregoing.(Sec. 21, IPC)Criteria for patentability 1. Novelty- An invention shall not be considered new if it forms part of a prior art . Inventive Step- if, having regard to prior art, it is not obvious to a person skilled in the art at the time of the filing date or priority date of the application claiming the invention. . Industrially applicable- An invention that can be produced and used in any industry. This means an invention is not merely theoretical, but also has a practical purpose.PRIOR ART * Everything which has been made available to the public anywhere in the world, before the filing date or the priority date of the application claiming the invention; and * The whole contents of an earlier published Philippine gonlication or application with earlier priority date of aCriteria for patentability he 2 Novelty- An invention shall not be considered new if it forms part of a prior art Inventive Step- if, having regard to prior art, it is not obvious to a person skilled in the art at the time of the filing date or priority date of the application claiming the invention. . Industrially applicable- An invention that can be produced and used in any industry. This means an invention is not merely theoretical, but also has a practical purpose.Rule: When a work has already been made available to the public, it shall be non-patentable for absence of novelty. Exception: Doctrine of Non-Prejudicial Disclosure the disclosure of information contained in the application during the 12-month period before the filing date or the priority date of the application if such disclosure was made by: 1, The inventor; 2. A patent office and the information was contained: a, In another application filed by the inventor and should have not have been disclosed by the office, ation filed without the knowledge or consent of the inventor by a third party which ation directly or indirectly from the inventor; the information directly or indirectly from the inventoTest of Non-Obviousness * If any person possessing ordinary skill in the art was able to draw the inferences and he constructs that the supposed inventor drew from prior art, then the latter did not really invent it * Person skilled in the art-Ordinary practitioner (fictional person) a. Has access and understanding of all the prior art b. Aware of common general knowledge in the specific art c. Observes developments in the related technical field -could be a team; need not have inventive abiliNon-patentable inventions 1, Plant varieties or animal breeds or essentially biological process for the production of plants or animals, This provision shall not apply to micro-organisms and non-biological and microbiological processes; 2, Aesthetic creations; 3, Discoveries, scientific theories and mathematical methods; 4. Schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers; 5. Anything which is contrary to public order or morality (IPC as amended by R.A. 9502, Sec. 22) 6. Methods for treatment of the human or animal body; and 7. Inthe case of drugs and medicines, mere discovery of a new form or new property 0 known substance which does not result in the enhancement of the efficacy of thaOWNERSHIP OF PATENTS SECTION 28. Right to a Patent. - The right to a patent belongs to the inventor, his heirs, or assigns. When two (2) or more persons have jointly made an invention, the right to a patent shall belong to them jointly.May patent rights be assigned or transferred? YES. For a valid assignment of patent rights, the assignment must be in writing and must be duly notarized. (IPC, Sec. 105)TRADEMARK Mark means any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods.Requirements for a mark to be registered ¢ Avisible sign and “Capable of distinguishing one’s goods and services from another.Visible sign * Words * Letters Fed Ei fi ) * Numerals ; * Figures/Pictures pepsi » Shapes ° G gl * Colors wo x a “© adidasNot visible * Scents * Soundsistinctiveness of a mark Kodak EXON Polaroid é Dove ® jacuve — BEMcosot NETFLIX SHARP aamsinnars > ay 3 feat soryanstepeasasanee ~~ BANDAID = ASPIRIN = THERMOSSpectrum of Distiactiveness ARBITRARY A common word | A word or that hints at a product attribute Apple Co Grey services, suggesti Shell Oil oe speed) Almost always protectable Generally protectable protectable ound (for bus | GENERIC A common term that fails to quality, or nts of a Bran-Nut (for bread c ining bran and nuts) levator, aspirin yo-yo, Protectable only | Not protectable with secondary meaningMarks which may be registered Any word, name, symbol, emblem, device, figure, sign, phrase, or any combination thereof except those enumerated under Section 123, PC,Trademark vs. Trade name Identifies or distinguishes the goods Identifies or distinguishes the or services business or enterprise Registration is required Registration is not required.Collective mark * mark or trade-name used by the members of a cooperative, an association or other collective group or organizationRIGHTS OVER A TRADEMARK CONFERRED * The rights in a mark shall be acquired through registration with the IPO. (IPC, Sec. 122) The filing date of application is the operative act to acquire trademark rights. * Prior use is no longer a condition precedent for registration of trademark, service mark or trade name.ACQUISITION OF OWNERSHIP OF MARK * The rights in a mark shall be acquired through registration but the right to register a trademark should be based on Ownership, * An exclusive distributor does not acquire any proprietary interest in the principal's trademark and cannot register iti his own name unless it is has been validly assigned to hiREGISTRATION *- Prior use is not a requirement but there must be actual use after application * - Declaration of Actual Use — within three (3) years from filing of the applicationa DURATION OR EFFECTIVITY OF TRADEMARK REGISTRATION * 10 years, subject to indefinite renewals of 10 years each. *The-registrant.is. required to file a declaration of actual use and evidence to that effect, or show valid reasons based on the existence of obstacles to such use, within one (1) year from the fifth anniversary of the date of the registration of the mark. Otherwise, th mark shall be removed from the Register by the IPO. (IPC, Secs. and 146)NON-REGISTRABLE MARKS * Immoral, deceptive, or scandalous matters * Matter which may disparage or falsely suggest a connection with persons, etc. * Contrary to public order or moralityNON-REGISTRABLE MARKS * Flags/coat of arms of nations *- Names, portraits or signature of living “persons - Exception: with consent *- Names, portraits or signature of a deceased President of the Philippines Exception: with written consent of his/her living wi asiNON-REGISTRABLE MARKS * Identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of: a. The same goods or services, or b. Closely related goods or services, or c. If it nearly resembles such a mark as to be likely to deceive or cause confusion; *FIRST-TO-FILE RULEa NON-REGISTRABLE MARKS + -Misleading marks Sec, 123.1 (g) * - Generic terms [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] Sec. 123.1(h) and (i) * - Descriptive terms [signs or of indications that may serve in trade to designate the kind, quality, quantity, intended * purpose, value, geographical origin, time or production ofbthe goods or renderi the services, or other characteristics of the goods or services] Sec. 123.1(j) * - Color alone; * - Shapes dictated by technical factorsee NON-REGISTRABLE MARKS: WELL- KNOWN MARKS * Identical with an internationally well-known mark, whether or not it is registered here, used for identical or similar goods or services; ° i i internationally well-known mark which is registered in the Philippines with respect to non-similar goods or services. Provided, that the interests of the owner of the registered mark are likely to be damaged by such use;RIGHTS OF A TRADEMARK OWNER * Right to exclusive use of the mark in connection with one’s own goods or services resulting in likelihood of confusion *"Right'to/preventothers from use of an identical mark for the same, similar or related goods or services. (Sec.147) 'ITORIALITY PRINCIPLE: Trademark registration abroad shall not be valid and here in the Philippines nown marks, bad faithTRADEMARK INFRINGEMENT *Use without consent of the trademark owner of any reproduction, counterfeit, copy or colorable limitation of any fegistered mark or trade name. Such use is likely to cause confusion or mistake or to deceive purchasers or others as to the source or origin of such goods or services, or Identity of such business.TRADEMARK INFRINGEMENT Elements: 1. Ownership of a trademark through registration 2eThatthetrademark is reproduced, counterfeited, copied, or colourably imitated by another 3. No consent by the trademark owner or assignee 4, Use in connection with the sale, offering for sale, or advertisi any such goods, business or services or those related ther 5. Likelihood of ConfusionOCC COPYRIGHT * Aright over literary and artistic works which are original intellectual creations in the literary and artistic domain protected from the moment of creationCopyrightable works 1. Literary and Artistic Works a. Books, pamphlets, articles and other writings iddresses, dissertations hether or not reduced in writing or other material form ¢. Letters (shall belong to the writer) b, Lectures, sermons, d. Dramatic, choreographic works e. Musical compositions f. Works of Art odicals and Newspapers ative to Geography, topography, architecture or science i. Works of Applied art j. Works of a Scientific or technical character k. Photographic works |. Audiovisual works and cinematographic works m. Pictorial illustrations and advertisements n. Computer programs; and 0. Other literary, scholarly, scientific and artisti works (IPC, Sec. 172.1).Copyrightable works Derivative Works a, Dramiatizations translations, adaptations, abridgements, arrangements, and other alterations of literary or artistic works; b. Collections of literary, scholarly, or artistic works and compilations data and other materials which are original by reason of the selecti coordination or arrangement of their contents (IPC, Sec. 173).NON-COPYRIGHTABLE WORKS 1, Idea, procedure, system, method or operation, concept, principle, discovery or mere data as such 2. News of the day and other items of press information 3. Any official text of a legislative, administrative or legal nature, as well as any official translation thereof SoPleadings 5. Decisions of courts and tribunals — this refers to original decisions and not to annotated decisions such as the SCRA or SCAD as these already fall under the classification of derivative works, hence copyrightable 6. Any work of the government of the Philippines 7. TV programs, format of TV programs (Joaquin v. Drilon, G.R. No. 108946, Jan. 28, 1999) 8. Systems of bookkeeping; and 9. Statutes.Rights of copyright owners 1, Economic rights — The right to carry out, authorize or prevent the following acts: a. Reproduction of the work or substantial portion thereof b. Carry-out derivative work (dramatization, translation, adaptation, abridgement, arrangement or other ¢, First distribution of the original and each copy of the work by sale or other forms of transfer of ‘ownership ions to the public.Rights of copyright owners 2. Moral rights — For reasons of professionalism and propriety, the author has the right: a i ithorship of the works be attributed to him (attribution right/paternity right) b. To make any alterations of his work prior to, or to withhold it from publication c. To preserve integrity of work, object to any distortion, mutilation or other ‘modification which would be prejudicial to his honor or reputation; and d. To restrain the use of his name with respect to any work not of his own ai a distorted version of his work(right against false attribution) (IPC, SeCopyright infringement Elements: » Ownership of a valid copyright s==BPioot of Ovnesin: Sex. 218- Afi fxdence > Exercise of any of the exclusive economic rights in Section 177 without the consent of the copyright owner MUNLESS: FAIR USEFair use exception *fair use for criticism, comment, news reporting, teaching (C- C-N-T] including limited [multiple] number of copies for .Classfoom use, scholarship, research and similar purposes [CSR] . (Sec. 185)Factors to be considered in determining fair use (Sec. 185) 1. Purpose & character of the use -2.Nature.of the copyrighted work 3. Amount & substantiality of the portion used in relation to the copyrighted work as a whole; & 4. Effect of the use upon the potential market for or value of the copyrighted work.a Who are liable for infringement? a. Directly commits an infringement; b. Benefits from the infringing activity of another person who commits an infringement if the person benefiting has been given notice of the infringing activity and has the right and ability to control the activities of the other person; ¢. With knowledge of infringing activity, induces, causes or materially contributes to the infringing conduct of another (/PC, Sec. 216, as amended by R.A. No. 10372).ee Copyright infringement vs. plagiarism The unauthorized use of The use of another’s information, copyrighted.material in a manner language, or writing, when done that violates one of the copyright without proper acknowledgment owner’s exclusive rights, such as of the original source. the right to reproduce or perform the copyrighted work, or to make derivative works that build upon it.free Any visible sign capable Literary and ar problem in any of distinguishing the works human activity which is goods (trademark) or w (novel invention) s@AViC8S (S8FVIee mark) and industrially of an enterprise must be applicable. registered) Term of protection 20 years from filingdate 10 years and renewable _It depends on the type of of application upon expiration. work.( generally 50 years) Office where registered Bureau of Patents, Bureau of Not required; Intellectual Trademarks, Optional at The Property Office Intellectual National Library Property Office or PO