IPL Shared Notes (Supplemental To 606 Handout) Shared PDF

 

INTELLECTUAL PROPERTY LAW Republic Act. No. 8293 Non - Retroactivity  “The IP Code, repealing the Trademark Law, was was ap appr prov oved ed on Ju June ne 6, 1997. 1997. Sect Sectio ion n 21 214 4 th ther ereo eoff ex expr pres essl sly y decr decree eed d th that at it wa wass to ta take ke effe effect ct on only ly on Janua January ry 1, 19 1998, 98, wi with thou outt an any y provis pro vision ion for retroa retroacti ctive ve applic applicati ation. on. Thus, Thus, the Makati RTC and the CA should have limited the co cons nsid ider erat atio ion n of th the e pres presen entt ca case se wi with thin in th the e parameters of the Trademark Law and the Paris Convention, the laws in force at the time of the filing of the complaint.” (Mighty Corporation v. E & J Ga Gall llo o Wine Winery ry,, G.R. G.R. No. No. 1543 154342 42,, July July 14, 14, 2014) Unfair Competition punishable under Article 189 of the Revised Penal Code is a public crime. Inte Intelle llect ctual ual Pr Prop oper erty ty Righ Rights ts   – has a statutory definition as that consisting of: a. Copyright Copyright and Related Related Rights; Rights; b. Trademarks Trademarks and Service Service Marks; Marks; c. Geo Geogra graphi phicc IIndi ndicati cations ons;; d. Ind Indust ustria riall Design; Design; e. Pate Patent nts; s; f. Layout Layout Design Designss (Topo (Topogra graphie phies) s) of  of  Integrated Circuits; and g. Pro Protec tectio tion n of Undisc Undisclose losed d Inform Informati ation. on. (Sec. 4)

It is a licensing contract. (contract between an intellectual property right owner, as the licensor, and a second party, as the licensee) Requires and Prohibited Stipulations: 1. Mandatory Mandatory provisions provisions (Sec.88) (Sec.88) 2. Pro Prohib hibite ited d clause clausess (Sec. (Sec. 87) LAW ON PATENTS Patent  is a set of exclusive rights granted by a Patent is state to an inventor or his assignee for a fixed period of time in exchange for a disclosure of an invention. Three-fold Purpose and Ultimate Goal 1. Pate Patent nt law seeks seeks to fo fost ster er and reward reward invention; 2. It pro promot motes es disc disclosu losures res of inventi inventions ons to stimu timula late te fur urth ther er in inve vent ntio ion n an and d to permit the public to prac acttice the invention inven tion once the patent expir expires; es; 3. Th The e stri string ngen entt requ requir irem emen ents ts fo forr pa pate tent nt protec pro tectio tion n seek seek to ens ensure ure the ideas ideas in the public public domain domain remain remain there for the free use of the public. Patentable Inventions (Sec. Inventions  (Sec. 21) a. An Any y tech techni nica call so solu luti tion on of a prob proble lem m in any field of human activity which is new; b. Involv olves es an inve inventi ntive ve st step; ep; c. Inv Industriall Indus trially y applicable. appli cable.

TRADEM TRA DEMARK ARK

COPYRI COPYRIGHT GHT

 Any visible sign sign ca capa pabl ble e of  distinguishing the goods (trademark) or services (servicemark) of an enterprise enterp rise and shallll inc sha includ lude e a stamped or marked cont contai aine nerr of  goods.

It is confin confined ed to literary and art artist istic ic works works which ar e original intellectual cr crea eattions ions in the literary and and arti artist stic ic domain protected from the moment of   their creation.

  PATENTABLE INVENTION It refers to an any y te tech chni nical cal solu soluti tion on of a problem in any field of   human activity activity whic wh ich h is new, new, in invo volv lves es an and d invent inv entive ive step step and is industrially applicable.

Non-Patentable Inventions (Sec. Inventions  (Sec. 22) a. Di Disc scov over erie ies, s, sc scie ient ntif ific ic theo theori ries es an and d mathem mat hemati atical cal method methods, s, and in case case of  drugs and medicine, the mere discovery of a ne new w fo forrm or new prop proper ertty of a known substance which does not result in the enh enhance anceme ment nt of the the kno nown wn efficacy of that substance, or the mere dis discov covery ery of any new property property or new use for a known substance, or the mere use of a known process that employs at least on new reactant; b. Schemes, rules and methods of   performing perf orming mental acts, playing games of do doin ing g bu busi sines ness, s, an and d prog progra rams ms fo forr computers; c.

 “Tradename  “Tradename”  ”   – the name or designation designation id iden enti tify fyin ing g or distinguishing an enterprise. Technolog Techno logy y Transfe Transferr Arrang Arrangeme ement nt   – a contract or agreements involving the transfer of  systematic knowledge for the manufacture of a pr prod oduc uct, t, the the appl applic icat atio ion n of a pr proc oces ess, s, or render ren dering ing of a servic service e inc includi luding ng manage managemen mentt cont contra ract cts; s; and and th the e tran transf sfer er,, as assi sign gnme ment nt or li lice cens nsin ing g of al alll fo form rmss of in inte tell llec ectu tual al prop proper erty ty rights, right s, including including licensing licensing of compu computer ter soft software ware developed for the mass market. (Sec. 4.2)

Method Methodss for treat treatmen mentt of the human human or animal body by surgery or therapy and diag diagno nost stic ic meth method odss prac practi tice ced d on the the human or animal body; d. Pla lant nt var arie ieti ties es or an anim imal al br bree eeds ds or esse essent ntia iall lly y biol biolog ogic ical al proc proces esss fo forr the the production of plants or animals; e. Aesthe Aesthetic tic creati creations ons;; and f. An Anyt ythin hing g whic which h is contr contrar ary y to pu publ blic ic or morality. Elements of Patentabilit Elements Patentability y (INI) 1. NO NOVE VELT LTY Y – an in inve vent ntio ion n shal shalll not not be considered new if it forms part of a prior art. Two Classes of Prior Art: a. Th The first classification belongs everyt eve rythin hing g that that is alread already y availa available ble to the th e pu publ blic ic inno not t on only ly in the the co coun untr try y bu butt anywhere the world.

Intellectual Property Law Notes

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Filling Date (Sec. Date  (Sec. 41) Requirements: 1. An exp expres resss or implici implicitt indicati indication on that a Philippine patent is sought; 2. Information Information identifying identifying the applicant; applicant; and 3. De Desc scri ript ptio ion n of the inventi invention on and 1 or more claims in Filipino or English. b. The seco second nd classifi classificat cation ion includes includes those those thatt are actual tha actually ly subjec subjectt of applic applicati ation on for patent registration. Priority Date (Sec. Date  (Sec. 31) -   An appl applic icat atio ion n for for pate patent nt filed filed by an any y person per son who has previo previously usly applie applied d for the same same invent invention ion in anothe anotherr countr country y whic wh ich h by trea treaty ty,, conv conven enti tion on,, or law law afford affordss simila similarr pri privil vilege egess to the Filipi Filipino no citizens Requirements: 1. The local ocal appl applic icat atiion ex expr pres essl sly y claims priority; 2. It is ffile iled d within within the 12 month monthss from from the date the earliest foreign application was filed; and 3. A certified copy of the foreign application together with an English tra transl nslati ation on is filed filed within within 6 mon months ths form the date of filing in the Philippines.

Graham Factors   – obviousness should be determined by looking at: a. Th The e scope scope and conten contentt of the the prior prior art; b. The le level vel of ordi ordinar nary y skill skill in the art; art; c. The diffe differen rence ce betwee between n the claime claimed d invention and the prior art; and d. Objective evidence of   nonobviousness. 3. INDUSTIALL INDUSTIALLY Y APPLICABLE APPLICABLE Ownership of Patent (Sec. Patent  (Sec. 28) -   Belon Belongs gs to the invent inventor. or. -   It may be acqu acquire ired d through through successi succession on or assignment. -   It may also be subject of jointownership. First-to-file Rule -   Followed by our jurisdiction. If 2 or more persons have made the invention separately and independently of each other, the righ rightt to the the pate patent nt shal shalll belo belong ng to the the pers person on who fil filed ed an applic applicati ation on for such invent invention ion,, or wher wh ere e 2 or more more ap appl plic icat atio ion n ar are e fi file led d fo forr the the same same in inve vent ntio ion, n, to the the ap appl plic ican antt who who has has the the earlie ear liest st fil filing ing date date or, the earlie earliest st pri priori ority ty date. date. (Sec. 29)

Non-Prejudicial Disclosure (Sec. Disclosure  (Sec. 25) These are disclosures however that will not prejudice the application: 1. Made during the 12 months pr prec eced edin ing g th the e fili filing ng da date te or th the e priority of the application; and 2. Th The e disclo disclosur sure e was mad made e by any of  the following person: a. Th The e in inven vento tor; r; b. A patent office the information was contained i. I n another applic app licati ation on filed filed by th the e inv nven ento torr and and should not have been been di disc sclo lose sed d by the office; or ii ii.. In an appl appliicati cation on

Inv Inventi ention on pursuan pur suantt to the Com Commis mission sion  be – the the the person who commissions work shall owne ow nerr of the the pa pate ten nt un unle less ss ther there e wa wass an agreement. agreem ent. (Sec. 30)

file filed d with withou outt th the e knowledge or consent of the in inven vento torr by a th thir ird d par t y which obtained the information inform ation directly directly or in indi dire rect ctly ly from from the inventor; A party party whic which h obtain obtained ed the the informa mattion directly or indirectly from the inventor.

Filipino and English English -   In Filipino -   Shall contain the following: a. A req request fo forr the the grant of a patent; It shall contain: contain: i. Pe Peti titi tion on fo forr the the gr gran antt of  the patent; ii. The name and other data of the applicant; iii. The in inventor and the the agent; and iv. The title of the invention. b. A des descri cripti ption on of the the inventi invention; on; o   Di Disc sclo lose se the the in inve vent ntio ion n in a manner sufficient sufficiently ly cle clear ar and comple complete te for it to be carried out by a

c.

2. INV INVENT ENTIVE IVE STEP STEP (S (Sec. ec. 26) -   It is not obv obvio ious us to a person person skill skilled ed in the art at the time of the filling date or priority prior ity date of the application application claiming claiming the invention.

Invention pursuant to Employment a. The EMPLOY EMPLOYEE, EE, if the invent inventive ive act activi ivity ty is not a part of his regular duties even if  the the emp emplo loye yee e uses uses the the time time,, fa faci cili liti ties es and materials of the employer. b. Th The e EM EMPL PLOY OYER ER,, if the invent inventio ion n is the result of the performance of his regularlyregul arly-assign assigned ed duties, duties, unless there is an agreement, express or implied, to the contrary. Procedure for the Grant of Patent 1. FIL FILING ING OF THE APPLI APPLICATIO CATION N (Sec (Secs. s. 32; 34-37)

person skilled in the art.

Intellectual Property Law Notes

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  Wher Where e th the e ap appl plic icat atio ion n concerns a microbiologic microb iological al process process or th the e pr prod oduct uct th ther ereo eof  f  and involves the use of  a micro-organism which ca canno nnott be su suff ffici icien entl tly y disclosed in the appl applic icat atio ion n in such such a way wa y as to en enab ablle th the e invent inv ention ion to be car carrie ried d ou outt by a pers person on sk skil ille led d

a. A stat statem emen entt or othe otherr matt matter er co cont ntra rary ry to “pub “publi licc or orde der” r” or morality; b. Statement disparaging the pr prod oduct uctss or pr proc oces esses ses of an any y partic par ticula ularr person person or other other than than the applican applicant, t, or the merits merits or validity of applications or patents of any such person; c. Any Any stat statem emen entt or oth other er matter matter ob obv vio ious uslly ir irrrelev elevan antt or un un-necessary under the

in the art, and such material is not available to the public, the application shall be supplemented by a deposit of such material wi with th an in inte tern rnat atio iona nall depository institution. Draw Drawin ings gs neces ecessa sarry for th the e understanding of the invention;

circumstances. -   Unity of Invention Invention a. Th The e ap appl plic icat atio ion n shou should ld al alwa ways ys relate relate to one inventio invention n only only or to a group of inventions forming a single general inven ventive concept. b. If no not, t, the Direc Director tor may requ require ire the applic applicati ation on be restri restricte cted d to a singl single e invention. invention. c. A latter latter appli applica cati tion on filed filed for an invention divided out, cons consid ider ered ed as havi having ng fi file led d on the the sa same me day day of ap appl plic icat atio ion. n. Provided, that it is filed within 4 months after the requirement to divide div ide become becomess final, final, or within within such additional time not

o

c.

d. One or more more cla claims ims;; and and o   The The ap appl plic icat atio ion n sh shal alll contain 1 or more claims which shall de defi fine ne th the e matt matter er for for which protection is sought. Each claim shall

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be clshall earrll be an and dsuppor conc coported ncis ise, e, and clea sha sup ted by the description. description. e. An ab abst stra ract ct Consi sist st of a conc concis ise e o   Con summary of the disclosure of the invent inv ention ion as contai contained ned in the description, cla claims ims and drawin drawings gs in pr pref efer erab ablly not more more than 150 words. o   Drafted in a way which allows the clear un unde ders rsta tand ndin ing g of th the e techni tec hnical cal pro proble blem, m, the gi gist st of th the e so solu luti tion on of  th that at pr prob oble lem m th thro rough ugh th the e in inve vent ntio ion, n, an and d th the e principal use or uses of  the invention. serve for o   Merely technical information. The The ap appl plic icat atio ion n sh shou ould ld id iden enti tify fy th the e inventor. If the app applic licant ant is not the invento inventor, r, the of offi fice ce may may requ requir ire e to sub submit mit said said authority. The app applic licati ation on shall shall contain contain 1 or more more claims which shall define the matter for which whi ch protec protectio tion n is sought sought.. Each Each claim claim shall be clear and concise, and shall be supported by the description. Pr Proh ohib ibit ited ed Matt Matter er (if (if an ap appl plic icat atio ion n contai con tains ns prohib prohibite ited d matter matter,, the Bureau Bureau of Patents shall omit it when publishing the application, indicating the place and number of words or drawing omitted):

Intellectual Property Law Notes

exceeding granted. 4 months, as may be d. Eac Each h divisi divisional onal applica applicatio tion n shall shall not go beyond the disclosure in the initial application. e. Not a ground ground to to can cancel cel pate patent nt 2. ACCO ACCORD RDAN ANCE CE OF THE THE FI FILI LING NG DATE DATE (Sec. 41) 3. FORMALITY FORMALITY EXAMINATION EXAMINATION (Sec. 42) -   Afte Afterr the the pate patent nt ap appl plic icat atio ion n ha hass been been accorded a filing date and the required fees have been paid on time, the applic app licant ant shall shall comply comply with with the for formal mal requirements specified in Sec. 32 and in IRR. -   If the formality examination reveals: a. That That the the dr draw awin ings gs were were fi file led d after the filing date of the application, the Bureau of  Patent shall send a notice to the applicant that the drawings and the reference to the drawings in the application shall be deemed dele delete ted d un unle less ss the the appl applic ican antt requ reques ests ts wi with thin in 2 mo mont nths hs that that the the ap appl plic icat atio ion n be gr gran ante ted d a ne new w fil iliing da datte whic which h is the the date on which the drawings are filed. b. The The dr draw awin ings gs were were not not fi file led, d, the the Bu Bure reau au of Pa Pate tent ntss shal shalll requ requir ire e ap appl plic ican antt to fi file le them them within 2 months and inform the ap appl plic ican antt that that the the ap appl plic icat atio ion n will be given a new filling date on drawings areinfiled, or, which if theythe are not filed due

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time, any refere time, reference nce to them them in the application shall be deemed deleted. 4. CLASSIFICA CLASSIFICATION TION AND SEARCH (Sec. 43) -   Th The e pa pate tent nt ex exam amin iner er sh shal alll de dete term rmin ine e the requirement requirement of Novelt Novelty. y. 5. PUBLICATI PUBLICATION ON OF OF THE THE APPLICATION APPLICATION -   The app applicati lication on shall shall be published published in in the IPO IPO Ga Gaze zett tte e to toge geth ther er wi with th a se sear arch ch document established by or on behalf of  the Off Office ice cit itin ing g an any y do docu cume ment nt or documen doc uments ts that that reflec reflectt pri prior or art art,, after after the the ex expi pira rati tion on of 18 mo mont nths hs from from th the e filing date or priority date. -   Ear arly ly Pu Publ blic icat atio ion n – app appli lica cant nt may may request provided that: a. Appl Applic ican antt su subm bmit itss a writ writte ten n wa waiv iver er of the: a) 18-mont 18-month h period period b) Es Esta tabl blis ishm hmen entt of a se sear arch ch report; b. Pub Publica licatio tion n shall not be earlie earlierr then 6 months from filing date; and c. Re Requ quir ires es fee for publi publicat catio ion n is paid in full. -   Co Cont ntai ain n th the e bi bibl blio iogr grap aphi hicc da data ta,, an any y drawing as filed and the abstract. -   Aft After er publica publicatio tion, n, any int intere ereste sted d party party

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may with inspect the application application documents documents filed the Office, The Dire Directo ctorr General, General, may prohib prohibit it or re rest stri rict ct the the publ public icat atio ion, n, if it woul would d be prejud pre judicia iciall to the nation national al sec securi urity ty and interests of the RP. Confi Confidenti dentiality ality before publication publication (Sec. 45) Right Rightss conferred conferred after publicati publication on (Sec. 46) a. All the rights of a patentee under Sec. 76; b. Exercised any of the rights conferred under Sec. 71 Obser Observatio vation n by third third parties parties (Sec. 47) 47) Following ing the publica publicatio tion, n, any o   Follow person may present observations in writing concer con cernin ning g the patent patentabi abilit lity y of  the invention. o   It shall shall be communicat communicated ed to the applicant who may comment on them. o   Th The e Of Offi fice ce sh shal alll ac ackn know owle ledg dge e and put such such observ observati ations ons and comment in the file of the application to which it relates.

6. SUBSTANTIVE SUBSTANTIVE EXAMINATION EXAMINATION -   It is the dut duty y of th the e ap appl plic ican antt to file file a written request for substantive examin exa minati ation on within within 6 months months from from the date of publication. -   Th The e Exam Examin iner er must be vigi vigila lant nt to se see e that no patent issues for subject matter which whi ch is not patentab patentable, le, and is alread already y disclos ose ed in prior inven enttions and

a. It will will no nott in incl clud ude e new new matt matter er outside the scope of the dis discl clos osur ure e co cont ntai ain ned in the the application as filed. 7. GRA GRANT NT OF THE PATENT PATENT -   If the application meets the requ requir ireme ement ntss of bo both th the the la law w an and d the the IRR,, inc IRR includ luding ing timely timely pay paymen mentt of fees. fees. (Sec. 50) -   Take effect on the date of the publication of the grant of the patent in the IPO Gazette. (Sec. 50.3) -   REFUSAL OF APPLICATION a. Remedy is to appeal the decision of the examiner to the Dir, of Bureau of Patents within 4 months from the mailing date of the notice of the decision. 8. PU PUBLI BLICAT CATION ION UPON UPON G GRANT RANT -   Pub Publis lished hed in the IPO Gazett Gazette e within within the time prescribed by the Regulations. -   Any Any part party y may may in insp spec ectt the the comp comple lete te descri des cripti ptions, ons, cla claims ims,, and drawin drawings gs on the file with the Office. (Sec. 52) 9. ISSUANCE ISSUANCE OF THE CERTIFICAT CERTIFICATE E -   Issue Issued d in the name of RP RP under under the seal seal of the Office and shall be signed by the Dir Direct or, and regist reg istere ered dand tog togeth ether er wit with h theector, description, claims, drawings, if  any, in books and records of the Office. (Sec. 53) Terms of Patent Terms Patent   – 20 year yearss fr from om the the fi fili ling ng date of the application.  After expiration, the monopoly ceases to exist and the subject matter of patent becomes part of public domain.  Annual Fee The first first an annu nual al fee fee on a pate patent nt shal shalll be due due and payable payable on the expirati expiration on of 4 years years from th the e date date the the ap appl plic icat atio ion n is publ publis ished hed an and d on each subsequent anniversary of such date. (Sec. 55) If no nott paid paid wi with thin in the the pr pres escr crib ibed ed time time,, the the applic app licati ation on shall shall be deemed deemed withdr withdrawn awn or the pate patent nt co cons nsid ider ered ed as la laps psed ed fr from om the the day day foll followi owing ng the the expi expira rati tion on of the the peri period od wi with thin in which the annual fees were due. (Sec. 55.2)  A grace period of 6 months from the due date shall be granted for the payment of the annual fee, upon payment payment of the prescribed prescribed surcharge surcharge for delayed payment. (Sec. 55.3) Surrender of Patent – Patent  – allowed Correction of Mistakes -   If in incu curr rred ed thro throug ugh h the the fa faul ultt of the the office – the Dir. of Patent has the power to corr correc ectt pr prov ovid ided ed ther there e is a wr writ itte ten n petition.

accessible to of public at large. -   Amendm Amendment ent othe f applicat app lication ion (Sec. (Sec. 49) 49)

Intellectual Property Law Notes

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-   If not inc incurr urred ed through through the fault fault of the office – request and payment of  prescribed fees. Changes in Patents Patents The owner owner of a pa pate tent nt shall shall have have th the e righ rightt to request the Bureau to make the changes in the patent in order to: a. Limit the extent of the protection conferred confe rred by it; b. The co corrre rect ct obvi obviou ouss mist mistak akes es or to correct clerical errors; and c. Cor Correc rectt mistake mistakess or errors errors ma made de in good good faith, faith, provid provided ed tha thatt where where the change change woul wo uld d re resu sult lt in a br broa oade deni ning ng of th the e ex exte tent nt of prot protec ecti tion on conf confer erre red d by th the e patent. No request may be made after the expiration of  2 years from the grant of the patent. The change change sh shal alll not not af affe fect ct th the e righ rights ts of an any y th thir ird d pa part rty y whic which h ha hass reli relied ed on th the e pate patent nt as published. No chan change ge in th the e pa pate tent nt sh shal alll be pe perm rmit itte ted d where the change would result in the disclosure cont contai aine ned d in th the e pate patent nt goin going g be beyo yond nd th the e disclosure contained in the application filed. Forms Publication -   and Acco Accomp mpli lish shed ed by ofaAmendment certi certifi fica cate te of such such amendment or correction; -   Authen Authenticate ticated d by the seal seal of the Office; Office; and -   Signe Signed d by the director. director. Certificate shall be attached to the patent. Notice of such amendment or correction shall be published in the IPO Gazette. Copi Copies es of the the pate patent nt ke kept pt or fu furni rnish shed ed by th the e office office shall inc include lude a copy copy of the certific certificate ate of  amendment or correction. Cancellation of Patent -   Upon paymen paymentt of the the required required fee; -   Petit Petition ion to to cancel cancel the the patent patent a. Made Made in writin writing; g; b. Ve Veri rifi fied ed by th the e petiti petition oner er or by an any y pe pers rson on in hi hiss beha behalf lf wh who o knows the facts, c. Spe Specif cify y the grou grounds nds u upon pon which which is based;   The invention is not new or patentable;   The The pa pate tent nt do does es no nott disclose the invention in a mann manner er su suff ffic icie ient ntly ly cle clear ar and comple complete te for it to be carr carrie ied d out out by any skilled in the art; or   The paten patentt is co cont ntra rary ry to public order or morality. d. Inc Includ lude e a statemen statementt of the the facts facts 

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be wit relied upon; and e. to Fil Filed ed with h tthe he office office

Intellectual Property Law Notes

f.

It shal shalll also also attach attached ed copi copies es of  printed publication or patents of  othe otherr cou ount ntrries, ies, and and othe otherr supporting documents, together with its translation. -   Juri Jurisd sdic icti tion on is wi with thin in the the Di Dire rect ctor or of  Legal Affairs a. Th The e Di Dire rect ctor or shal shalll se serv rve e no noti tice ce of the the fi fili ling ng an and d noti notice ce to the the date of hearing to all interested parties. Effect of Cancellation of Patent or Claim Terminate all the rights conferred by the patent or any specified claim or claims. Th The e deci decisi sion on of the the Di Dire rect ctor or is imme immedi diat atel ely y ex exec ecut utor or even even pe pend ndiing appe appeal al un unlless ess the decision is restrained by the Director General. Notice of Cancel Notice Cancellat lation ion shall shall be pub publis lished hed in the IPO Gazette. Remedies Remedi es of Person Persons s Depriv Deprived ed of Patent Patent Ownership Within 3 months after the decision has become final, final, perso person n ref referr erred ed to in Sec. Sec. 29 other other than than the applicant may: a. Pr Pros osec ecut ute e the the ap appl plic icat atio ion n as hi hiss own own application place ofplicat the applicant; b. File Fil e a new in patent pat ent appli ap cation ion in respect respect of the same invention; c. Reques Requestt that th the e applica applicatio tion n be refused refused;; or d. Seek Seek canc cancel ella lati tion on of the the pa pate tent nt,, if one has already been issued. (Sec. 67) If a pers person on,, who who was was depr depriv ived ed of the the pa pate tent nt without his consent or through fraud is declared by fi fina nall co court urt order order or deci decisi sion on to be the the true true an and d ac actu tual al in inve vent ntor or,, the the co cour urtt may may or orde derr hi hiss substitution as patentee, or at the option of the true true in inve vent ntor or,, ca canc ncel el the the pate patent nt,, an and d award award actual and other dama mag ges in his favor if  warranted by the circumstances. (Sec. 68) In both instances referred above, the court shall furnish the Office a copy of the order or decision, whic wh ich h sh shal alll be pu publ blis ished hed in the the IP IPO O Gaze Gazett tte e with wi thin in 3 mont months hs fr from om the the date date such such or orde derr or decision become final and executor, and shall be recorded in the register of the Office. (Sec. 69) The actions indicated in Sections 67 and 68 shall be fil iled ed wit withi hin n 1 ye year ar from the the date date of the the publication made in accordance with Sections 44 and 51, respectively. (Sec. 70) Rights conferred by Patent 1. If the the subjec subjectt matter matter is a pr prod oduct uct – the patent pat ent own owner er shall shall have have the exc exclus lusive ive right right to restra restrain, in, pro prohib hibit it and preven preventt any unauthorized person or entity from making, makin g, using, using, offering offering for sale, selling or importing that product. 2. If the the subject subject matt matter er is a proc proces esss – the the pat patent entto own owner er shall sha ll have haveorthe exc exclus lusive ive right restrain, prevent prohibit any

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unau unauth thor oriz ized ed pe pers rson on or en enti tity ty from from using the process, and from manufacturing, dealing in, using, selling or of offe feri ring ng for for sa sale le,, or im impo port rtin ing g an and d produc pro ductt obt obtain ained ed dir direct ectly ly or indire indirectl ctly y from such process. process.

P100,000 but not more than P300,000, at the the disc discre reti tion on of the the cou ourt rt.. The The cr crim imina inall ac acti tion on here herein in pr prov ovid ided ed shal shalll prescribe in 3 years from the date of the commission of the crime. (Sec. 84) Limitations on Patent Rights

The patent owner shall have the right to assign it, it, tr tran ansf sfer er it by suc succe cess ssio ion, n, or concl onclud ude e licensing contracts for the same. Remedies against Infringement CIVIL ACTION FOR INFRINGEMENT (Sec. 76) -   Br Brin ing g a ci civi vill ac acti tion on befo before re a cour courtt or compet com petent ent jurisdi jurisdicti ction on to recove recoverr from from the inf infrin ringer ger such such damage damagess sustai sustained ned thereb the reby, y, plus plus att attorn orney’ ey’ss fees fees and other other expenses of litigation, and to secure an injunction for the protection of his rights. -   Fo Fore reig ign n nati nation onal al or ju judi dici cial al en enti tity ty,, whet wh ethe herr or no nott it is li liccense ensed d to do busi busines nesss in th the e Ph Phil ilip ippi pine ness un unde derr th the e ex exis isti ting ng la law, w, may may br brin ing g in infr fring ingeme ement nt action. (Sec. 77) Pr Pres esum umpt ptio ions ns in Pate Patent nt In Infr frin inge geme ment nt  Actions Subj Subjec ectt mat matte terr of a pate patent nt is a pr proc oces esss form form obtaining a product – any identical product shall

 ACTS ALLOWED EVEN WITHOUT  AUTHORIZATION 1. Us Usin ing g a pate patent nted ed pr prod oduc uctt whic which h ha hass been put on the market in the Philippines by the owner of the product, or with with his expres expresss consent consent,, ins insofa ofarr as such use is performed after that product ha hass been been so put put on the the said said ma mark rket et:: Pr Prov ovid ided ed,, Th That at,, wi with th rega regard rd to drug drugss and medicines, medicines, the limitation on patent patent rights shall apply after a drug or medici med icines nes has been been int introd roduced uced in the Ph Phil ilip ippi pine ness or an anyw ywhe here re else else in the the worl wo rld d by the the pa pate tent nt ow owne ner, r, or by an any y party par ty author authorize ized d to use the invent invention ion:: Pr Prov ovid ided ed,, fu furt rthe her, r, Th That at the the ri righ ghtt to impo mport the drugs and medi edicines co conte ntemp mpla late ted d in this this se sect ctio ion n shal shalll be availa ava ilable ble to any govern governmen mentt agency agency or any private third party; 2. Wher Where e the act is done done privat privatel ely y and on a no nonn-com comme merc rcia iall sc scal ale e or fo forr a nonnon-

CRIMINAL CRIMIN AL ACTION ACTION FOR INFRIN INFRINGEM GEMENT ENT (only (only when it is repeated) -   If in infr frin inge geme men nt is repe repeat ated ed by th the e infr infrin inge gerr of by an anyo yone ne in co conni nnivan vance ce with wit h him after after finali finality ty of the judgmen judgmentt of th the e co court urt ag agai ains nstt th the e in infr frin inge ger, r, the the offenders shall, without prejudice to the ins instit tituti ution on of a civil civil action action,, shall shall suffer suffer imprisonment for the period of not less

com commer cial purpose pur pose: :tly Provided, ed, Tha That does doesmercial no not t sign si gnif ific ican antl yProvid pr prej ejud udic ice e tthe thit e economi eco nomicc int intere erests sts of the owner owner of the patent; 3. Wh Wher ere e the the ac actt co cons nsis ists ts of maki making ng or usi using ng exclusi exclusivel vely y for experi experimen mental tal use of the inventi invention on for scient scientifi ificc purpos purposes es or educational purposes and such other acti activ vitie itiess dir direc ectl tly y relat elated ed to such such sci scienti entifi ficc or educat educationa ionall experi experiment mental al use; 4. In case case of dru drugs gs and medici medicine nes, s, where where the act inc includ ludes es testin testing, g, usi using, ng, making making or sell sellin ing g the the in inve vent ntio ion n in incl clud uding ing an any y date related thereto, solely for purposes reason rea sonabl ably y relate related d to the develo developme pment nt an and d su subm bmis issi sion on of in info form rmat atio ion n an and d issuanc issuance e of approv approvals als by governm government ent regulatory regul atory agencies required under any la law w of the the Ph Phil ilip ippi pine ness or of an anot othe herr country that regulates the manufacture, construction, use or sale of any product: Provid Pro vided, ed, That, That, in order order to pro protec tectt the data dat a submit submitted ted by the ori origin ginal al patent patent ho hold lder er fr from om un unfa fair ir comm commer erci cial al us use e pr prov ovid ided ed in Ar Arti ticl cle e 39 39.3 .3 of the the TR TRIP IPS S  Agreement, the IPO, in consultation with the appropriate rules and regula reg ulatio tions ns necess necessary ary therei therein n not later later than than 120 120 da days ys af afte terr the the enac enactm tmen entt of  this law; 5. Wher Where e the the ac actt co cons nsis ists ts of prep prepar arat atio ion n for individual cases, in a pharmacy or by a medical professional, of a medicine in accordance accor dance with a medical medical prescription prescription or ac acts ts conc concer erni ning ng the the me medi dici cine ne so prepared; and

tyha han mo but not molre than an 3 eanrs 6 amont ndnths /ohs r fbu inet no ntotmore essth than

6. ves Whe Where re, the inve inventi is duse used d in any sh ip, vessel sel, air aircra craft, ft,ntion oronland lan vehicle veh icle of ship, any

be totent have obtained us use epresumed of the the pa pate nted ed been proc proces ess s if th the ethrough prod produc ucttthe is new or there is a substantial likelihood that the identical product was made by the process and th the e owne ownerr of the pa pattent ent has be been en un unab able le de desp spit ite e re reas ason onab able le ef effo fort rts, s, to dete determ rmin ine e th the e process actually used. It is presumed that the infringer had known of  the patent if on the patented product, or in the cont contai aine nerr or pa pack ckag age e in whic which h th the e arti articl cle e is su supp ppli lied ed to th the e publ public ic,, or on th the e ad adve vert rtis isin ing g mate ma teri rial al re rela lati ting ng to th the e pa pate tent nted ed prod produc uctt or pr proc oces ess, s, ar are e pl plac aced ed th the e word wordss “Phi “Phili lipp ppin ine e Patent” with the number of the patent. Prescription Prescr iption in Action Action for Infringement Infringement   – No dama damage gess can can be reco recove vere red d more more th than an 4 ye year arss be befo fore re the the inst instit itut utio ion n of th the e ac acti tion on for for infringement. (Sec. 79) Defenses in Action Defenses Action for Infringement Infringement The de defe fend ndan ant, t, in ad addi diti tion on to othe otherr de defe fenc nces es available to him, may show the invalidity of the pate patent nt,, or any any cl clai aim m th ther ereo eof, f, on an any y of th the e grounds in which a petition for cancellation can be brought under Section 61. (Sec. 81)

Intellectual Property Law Notes

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other countr other country y ent enteri ering ng the ter territ ritory ory of  the Philippines temporarily or acci accide dent ntal ally ly:: Pr Prov oviide ded, d, Tha hatt such such inven inventi tion on is us used ed ex excl clus usiv ivel ely y for for th the e need needss of the the sh ship ip,, ve vess ssel el,, ai airc rcra raft ft,, or lan and d vehicle cle and not used for the manu ma nufac factu turi ring ng of an anyt ythi hing ng to be so sold ld within the Philippines. Prior User -   Any us user, er, who, who, in good good faith faith was using using the invention or has undertaken serious preparations to use the invention in his enterprise enter prise or business, business, before before the filing date dat e or pri priori ority ty date date of the applic applicati ation on on which a patent is granted, shall have the right to continue the use thereof as envisag env isaged ed in such such prepar preparati ations ons within within the territory where the patent produces its effect. (Sec. 73.1) -   The Pri Prior or User User cannot cannot assign assign the right right to use the patented product or process without witho ut giving giving up entirely entirely his enterprise. enterprise. USE OF INVENTION BY THE GOVERNMENT Ge Gene nera rall Ru Rule le:: The The Go Gove vern rnme ment nt is boun bound d to respect the patent. Exception: 1. The pu publi blicc interes interestt so require requires; s; or 2. d Aetju judi admi ve bo has erdici mcial inal ed or tad hamini t nist tstra hrati e tive mabody nndy er ha osf   exploitation, by the owner of the patent or his license, is anti-competitive anti-competitive.. (Sec. 74) 3. In th the e case case of dr drug ugss an and d medi medici cine nes, s, there the re is a nation national al emerge emergency ncy or other other ci circ rcum umst stan ance cess of ex extr trem eme e ur urge genc ncy y requiring the use of the invention; 4. In th the e case case of drugs drugs and medi medicin cines, es, the the demand dem and for the patented patented art articl icle e in the Phili hilipp ppiine ness is no nott be bein ing g met met to an ad adeq equa uate te ex exte tent nt an and d on reas reason onab able le ter terms, ms, as determ determine ined d by the Secret Secretary ary of DOH. (RA 9502) Extent of Protection and Interpretation of  Claims; Test in Patent Infringement Infringement -   For For th the e purp purpos oses es of dete determ rmin inin ing g th the e ex exte tent nt of prot protec ecti tion on conf confer erre red d by th the e pate patent nt,, due due ac acco coun untt sh shal alll be ta take ken n of  el elem emen ents ts whic which h are are eq equi uiva vale lent nt to th the e el elem emen ents ts ex expr pres esse sed d in th the e clai claims ms,, so that a claim shall be considered to cover not only all the elemen elements ts as expres expressed sed therein, but also equivalents. Doctrine of Equiva Doctrine Equivalents lents   – prov provid ides es th that at an in infr frin inge geme ment nt al also so ta take kess pl plac ace e when when a de devi vice ce appropriates approp riates a prior invention by incorporati incorporating ng its innovative concept and, although with some modification and change, performs substantially the same function in substantially the same way to achiev achieve e substantial substantially ly the same result. result.

LAW ON TRADEMARK  Trademarks    a dist distin inct ctiv ive e ma mark rk of au auth then enti tici city ty thro throug ugh h whic which h the the merc mercha hand ndise ise of a part partic icul ular ar prod produce ucerr or manu manufa fact ctur urer er may ma y be dis disting tingui uish shed ed fro rom m that that of  others, and and its sole func ncttion is to designate desig nate distincti distinctively vely the origi origin n of the products to which it is attached.    An Any y word word,, na name me,, symb symbol ol or devic evice e adopted and used by a manufacturer or merc me rcha hant nt to iden identi tify fy hi hiss good goodss an and d distinguish them from those manufacture manuf actured d and sold by others. others. Mark  -   Any visible sign capable of   distinguishi disti nguishing ng one’s goods from another. Collective Mark  -   Any vi visib sible le sign de desig signed ned as suc such h in the application appli cation for registration registration and capable capable of distinguishing the origin or any other common com mon charac character terist istic, ic, inc includi luding ng the quality of goods or services of different ente enterp rpri rise sess wh whic ich h use use the the sign sign unde underr the collective control ofmark. control the registere regist d owner owner of  the (Sec. ered 121.2) Significance of Acqui Significance Acquiring ring right to Mark   “Let it be remembered that duly registered trademarks are protected by law as intellectual properties and cannot be appropriated by others with wi thou outt viol violat atin ing g the the due due pr proc oces esss cl clau ause. se. An in infr frin inge geme ment nt of in inte tell llec ectu tual al ri righ ghts ts is no less less vicious vicious and condem condemnabl nable e as the theft ft or materia materiall property, whether personal or real.”  Functions Classical View: 1. to po poin intt ou outt dist distin inct ctly ly the the or orig igiin or owne ow ners rshi hip p of the the good goodss to whic which h is affixes; 2. to secure to him, who has been instrumental in bringing into the market a superi superior or articl article e of mer mercha chandi ndise, se, the fruit of his industry and skill; 3. to assure the public that they are procuring the genuine article; 4. to pr preve event nt fra fraud ud and impo imposit sition ion;; and 5. to pr prot otec ectt the the ma manu nufa fact ctur urer er ag agai ains nstt substi sub stitut tution ion and sale sale of an inf inferi erior or and different article as his product. Modern View: 1. the they y indi indicate cate origi origin n or ownershi ownership p of the articles to which they are attached; 2. the they y guara guarante ntee e that tho those se article articless come up to a cert certai ain n stan standa dard rd an and d qu qual alit ity; y; and 3. they advertise the articles they symbolize. Non-Registrable Marks

Intellectual Property Law Notes

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1. Consists sts of immoral, deceptive or scandalous matter, or matter which may disparage or falsely suggested a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute. (Sec.123.1.a) 2. Co Cons nsis ists ts of the flag flag or coat or arms arms or ot othe herr insi insign gnia ia of th the e PH PHII or an any y of it itss politi pol itical cal subdiv subdivisio isions, ns, or of any for foreig eign n nation, natio n, or any simulation thereof; 3. Con Consis sists ts of name, portrai portraitt or signat signature ure indentifyi inden tifying ng a particular particular living living individual individual ex exce cept pt by his his wr writ itte ten n co conse nsent nt,, or th the e name, me, signature, or portrait of a deceas dec eased ed Presid President ent of the PHI, PHI, during during the life of his widow, if any, except by written consent of the widow; 4. Is ide dent ntic ical al wi with th a reg egis iste tere red d mark  mark  belong bel onging ing to a dif differ ferent ent propri proprieto etorr of a mark ma rk wi with th an ea earl rlie ierr fili filing ng or pr prio iori rity ty date, in respect of: a. the same same good goodss or serv services ices;; or b. closely closely rela related ted goods goods or serv services ices;; or c. if it ne near arly ly rese resemb mble less such such a mark s to be likely to deceive or cause confusion; 5. Is ident identica icall with, with, or confusi confusingl ngly y simila similarr to, or constitutes a translation of a mark  which whi ch ity is consid con sidere ered dlippine by the compet com ent aut author hority of the Philip Phi pines s to bepetent wellwel lknown own internationally and in the Philippines, whether or not it is re regi gist ster ered ed he here re,, as be bein ing g al alre read ady y the the mark of a person other than the applic app licant ant for regist registrat ration ion,, and used used for identi ide ntical cal or simila similarr goo goods ds or servic services: es: Provided, That in determining whether a mark ma rk is well well-k -kno nown, wn, ac acco count unt sh shal alll be taken of the knowledge of the relevant sector of the public, rather than of the public pub lic at lar large, ge, inc includ luding ing knowle knowledge dge in the Philippines which has been obtained as a result of the promotion of the mark; 6. Is ident identica icall with, with, or confusi confusingl ngly y simila similarr to, or constitutes a translation of a mark  consid con sidere ered d well-k well-known nown in accord accordanc ance e with wit h the preced preceding ing paragr paragraph aph,, which which is regis egiste terred in th the e Ph Phil ilip ippi pin nes wi with th respec res pectt to goods goods or servic services es which which are not not simi simila larr to th thos ose e wi with th resp respec ectt to whic wh ich h re regi gist stra rati tion on is ap appl plie ied d for: or: Prov rovid ided ed,, That That us use e of the mar mark in re rela lati tion on to th thos ose e good goodss or se serv rvic ices es woul wo uld d indi indica cate te a co conn nnec ecti tion on be betw tween een those goods or services, and the owner of the registered mark: Provided further, Th That at th the e inte intere rest stss of th the e owne ownerr of th the e registered mark are likely to be damaged by such use; 7. Is likely to mislead the public, part partic icul ular arly ly as to th the e natu nature re,, qual qualit ity, y, characteri chara cteristics stics or geographic geographical al origin origin of  the goods or services; 8. Co Cons nsis ists ts ex excl clus usiv ivel ely y of si sign gnss th that at are are gene generi ricc fo forr th the e good goodss or serv servic ices es th that at they seek to identify;

Intellectual Property Law Notes

9. Consi onsist stss excl exclus usiively vely of sig signs or of  indications that have become customary or us usua uall to de desi sign gnat ate e the the go good odss or serv servic ices es in ev ever eryd yday ay la lang ngua uage ge or in bona fide and established trade practice; 10. 10. Consi onsist stss excl exclus usiively vely of sig signs or of  in indi dicat catio ions ns that that may may se serv rve e in trad trade e to desi design gnat ate e the the kind, kind, qu qual alit ity, y, qu quan anti tity ty,, int intend ended ed pur purpos pose, e, value, value, geogra geographi phical cal origin, time or production of the goods or rend render erin ing g of the the se serv rvic ices es,, or othe otherr characteri chara cteristics stics of the goods or services; services; 11. Consists of shapes that may be necessi nec essitat tated ed by tec techni hnical cal factor factorss or by the nature nature of the goods themselve themselvess or factors that affect their intrinsic value; 12. Consis Consists ts of col color or alo alone, ne, unless unless define defined d by a given form; or 13. Is contrary to public order or morality. The law disallows false suggestion of connection to a person, an institution, or a belief. The law disallows use of marks that resembles a regi regist ster ered ed mark mark if such such is li like kely ly to dece deceiv ive e or cause confusion. Colorable Imita Colorable Imitation tion   – that that whic which h deno denote tess su such ch a cl clos ose e or in inge geni niou ouss imit imitat atio ion n as to be calcul calculate ated d to dec deceiv eive e an ordina ordinary ry person persons, s, or such a resemblance to giving the original as to deceive an ordinary purchaser such attention as a purc purcha hase serr us usua uall lly y give gives, s, as to ca caus use e hi him m to purchase the one supposing it to be the other. Two type Two ypes of co conf nfus usio ion n in tra rade dema mark  rk  infringement: 1.   C Con onfu fusi sion on of Good Goods s   – there is confus con fusion ion of goods goods when when an otherw otherwise ise prudent purchaser is induced to purchase one product in the belief that he is purchasing another, in which case defend def endant’ ant’ss goo goods ds are then bought bought as the plai plaint ntif iff’ f’ss an and d its its poo poor qua uali lity ty reflects badly on the plaintiff’s reputation. 2.   Conf Confus usion ion of Busin Busines ess s   – there is confus con fusion ion of busines businesss when the goods goods of the the part partie iess ar are e diff differ eren entt but but the the defend def endant’ ant’ss pro product duct can reason reasonabl ably y be assumed assum ed to originate originate from the plaintiff plaintiff,, thuss dec thu deceiv eiving ing the public public int into o believ believing ing thatt there tha there is som some e connec connectio tion n betwee between n the the plai plaint ntif ifff an and d defe defend ndant ant whic which, h, in fact, does not exist. Test Test to De Dete term rmin ine e Confu Confusi sing ng Simil Similari arity ty Between Marks: 1.   Dominancy Test    the the cou ourt rt lo look ok to do domi mina nant nt featur fea tures es to determ determine ine whethe whetherr or not not ther there e is in infr frin inge geme ment nt,, sett settiing asid aside e al alte tera rattio ion ns or changess deliberatel change deliberately y introduced introduced to mislead mislead the the courts. courts.    Whet Whethe herr the the use use of the mar marks ks involved is likely to cause co conf nfus usio ion n or mist mistak ake e in the the

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mind mind of th the e publ public ic or de dece ceiv ive e purchasers. 2.   Holistic Test    Enta Entail ilss a co cons nsid ider erat atio ion n of th the e entirety of the marks as applied to th the e pr prod oduct ucts, s, in inclu cludi ding ng th the e l a b el s and packaging, in determining confusing similarity.    Focus not only on the predom pre domina inant nt words words but als also o on the other features appearing on both both la labe bels ls in orde orderr th that at th the e observer may dr aw his conclus usiion whether one is confusingly confus ingly similar to the other. There is no need to prove actual confusion, Sec. 22 re requ quir ires es th the e le less ss st stri ring ngen entt st stan anda dard rd of   “likelihood of confussion” only. Generic Terms – Terms  – those which constitute: a. The The comm common on de desc scri ript ptiv ive e na name me of an article or substance; b. Comprise the genus of which the particular parti cular product is a species; species; c. Commonly used as the name or description of a kind of goods; d. Impl Imply y re refe fere renc nce e to every every membe memberr of a genus and the exclusion of individuating characters; e. Re Refe ferr to the the basic basic nature nature of the wares wares

G.

H.

I.

J.

K.

or servic ser es provid pro vided rat rather herterist than more mor e vices idi idiosy osyncr ncrati aticcedcharac cha racter istics icstoofthe a particular product. L. Descriptive Term   – und Descriptive unders erstood tood in its normal normal and natural natural sense sense or if it clearl clearly y denote denotess what what go good odss or se serv rvice icess are are prov provid ided ed in su such ch a wa way y th that at the the co consu nsume merr does does not not have have to ex exer erci cise se powers of perception or imagination. Test: whether the registered mark has become the generic name of goods or services on or in connection with which it has been used. Procedure in Trademark Registration Fi Fili ling ng of th the e Appl Applic icat atio ion, n, whic which h sh shal alll be in Fi Fili lipi pino no or in En Engl glis ish h an and d sh shal alll cont contai ain n th the e following:  A. A request for registration; B. The name and address of the applicant; C. The na name of of a State of of wh which th the applicant is a national or where he has has do domi mici cile le;; an and d th the e na name me of a St Stat ate e in whic which h th the e ap appl plic ican antt has has a rea eall and and effe effect ctiv ive e in indu dust stri rial al or commercial establishment, if any; D. Where the the ap applican antt is a jurid idiical en enti tity ty,, th the e la law w un unde derr whic which h it is organized and existing; E. The ap appointment of of an an ag agent or or re repr pres esen enta tati tive ve,, if th the e ap appl plic ican antt is not domiciled in the Philippines; F. Where the applicant claims the priority of an earlier application, an indication of: a. The name of the State with whose national earlier applic app licati ation on wasoffice filed filed the or if filed filed

Intellectual Property Law Notes

with an office other than a national office, the name of that office, b. The The date date on whic which h the the ea earl rlie ierr application appli cation was filed, filed, and c. Where Where availa available ble,, the applica applicatio tion n number of the earlier application; Wh Wher ere e the the ap appl plic ican antt cl clai aims ms colo colorr as a distinctive feature of the mark, a statem sta tement ent to tha thatt effect effect as well well as the name or names of the color or colors claimed and an indication, in respect of each color, of the prin princi cipa pall pa part rtss of the the mark mark whic which h are in that color; Where the mark is a threedimens dim ensiona ionall mark, mark, a statem statement ent to that effect; One or more reproductions of the mark, as prescribed in the Regulations; A tran transl slit iter erat atio ion n or tran transl slat atio ion n of the the mark or of some parts of the mark, as prescribed prescribed in the Regulations; Regulations; The names ames of the the go good odss or serv servic ices es for which the registration is sought, grouped according to the classes of  the the Nice Nice Cl Clas assi sifi ficat catio ion, n, to toge geth ther er with the number of the class of the sa said id Cl Clas sifi fica cati tion on services to whic which h each each group ofassi goods or belongs; and A signature by, or other selfidentification of, the applicant or his representative.

 Applicant:    natural or juridical person    if there there is more more the one, one, al alll of them them should be named, but anyone can sign the application for and in behalf of the applicants    ap appl plic ican antt thro throug ugh h atto attorn rney ey or othe otherr person authorized to practice to practice in such matter by the Office    If the applica applicant nt is not domiciled domiciled or has no real and effecti ctive commerci cia al establishment in the Philippines, he shall designate by a written document (submi (su bmitte tted d to the off office ice wit within hin 60 days days from filing date) filed in the Office, the name ame an and d addr addres esss of a Ph Phiili lipp ppin ine e resident who may be served notices or pr proc oces esss in proc procee eedi ding ngss af affe fect ctin ing g the the mark. Such notices or services may be served ser ved upo upon n the person person so design designate ated d by leaving a copy thereof at the address specified in the last designation filed. If  the the pers person on so desi design gnat ated ed ca cann nnot ot be fo foun und d at the the ad addr dres esss give given n in the the la last st designation, such notice or process may be served upon the Director.    Ap Appl plic ican antt dies dies,, bec becomes omes in insa sane ne or in inca capa paci cita tate ted, d, the the lega legall lly y ap appo poin inte ted d ex exec ecut utor or,, admi admini nist stra rato tor, r, guar guardi dian an,, cons conser erva vato torr or repr repres esen enta tati tive ve ma may y prosecute.

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NICE Classification The applican applicantt must must indica indicate te the names of the goods goo ds or servic services es for which the regist registrat ration ion is sought, grouped according to the classes of the NICE NIC E Classi Classific ficati ation, on, together together with the number number of the class of the NICE Classification to which each group of goods or services belongs. One One ap appl plic icat atio ion n may rela relate te to se seve vera rall good goodss and/ and/or or se serv rvic ices es,, whet whethe herr th they ey be belo long ng to on one e class or to several classes of the NICE Classification. Disclaimers The Office may allow or require the applicant to di disc scla laim im an unre unregi gist stra rabl ble e comp compon onen entt of an otherw oth erwise ise reg regist istrab rable le mark mark but such such dis discla claime imerr shallll not prejud sha prejudice ice or affect affect the applic applicant ant's 's or owner's rights then existing or thereafter arising in the disclaimed matter, nor such shal alll disclaimer discl aimer prejudice or affe affect ct the applicant's applicant's or owne ow ner' r'ss ri righ ghtt on an anot othe herr ap appl plic icat atio ion n of late laterr date if the disclaimed matter became distinctive of the applicant's or owner's goods, business or services. Declaration of Actual Use Declaration The Office may allow or require the applicant to di disc scla laim im an unre unregi gist stra rabl ble e comp compon onen entt of an otherw oth erwise ise reg regist istrab rable le mark mark but such such dis discla claime imerr shallll notrights sha prejud prejudice ice existing or affect affect applic applicant ant's 's or owner's then or the thereafter arising in the disclaimed matter, nor such shal alll disclaimer discl aimer prejudice or affe affect ct the applicant's applicant's or owne ow ner' r'ss ri righ ghtt on an anot othe herr ap appl plic icat atio ion n of late laterr date if the disclaimed matter became distinctive of the applicant's or owner's goods, business or services. Filing Date The fi fili ling ng da date te of an ap appl plic icat atio ion n sh shal alll be th the e date on which the Office received the following indications and elements in English or Filipino: a. An expres expresss or implici implicitt indicati indication on that the registration of a mark is sought; b. The iiden dentit tity y of the the applic applicant ant;; c. Ind Indicat ication ionss sufficien sufficientt to contact contact the ap appl plic ican antt or hi hiss repr repres esen enta tati tive ve,, if  any; d. A re repr prod oduc ucti tion on of th the e mark mark who whose se registrati regis tration on is sought; sought; and e. Th The e list of the the goods goods or se serv rvic ices es for for which the registrati registration on is sought. sought. No fi fili ling ng da date te shal shalll be acco accord rded ed un unttil th the e required fee is paid. The Office shall examine whether the applic app licati ation on satisf satisfies ies the requir requireme ements nts for the grant of a filing date as provided in Section 127 and and Regu Regula lati tion onss rel relat atin ing g ther theret eto. o. If th the e application does not satisfy the filing requ requiire reme ment nts, s, the the Off Office ice shal shalll no noti tify fy th the e applicant who shall within a period fixed by the Regulations Regula tions complete or corre correct ct the application application as requir required, ed, otherw otherwise ise,, the applic applicati ation on shall shall be considered withdrawn.

numb number ered ed in the the sequ sequen enti tial al or orde der, r, an and d the the applic app licant ant shall shall be inf informe ormed d of the app applic licati ation on number and the filing date of the application will be deemed to have been abandoned. Priority Right  An application for registration of a mark filed in th the e Ph Phil ilip ippi pine ness by a pe perrson son ref referr erred to in Sect Sectio ion n 3, an and d who who pr prev evio ious usly ly duly duly fi file led d an application for registration of the same mark in one of those those cou countr ntries ies,, shall shall be consid considere ered d as filed as of the day the application was first filed in the foreign country. No registration of a mark in the Philippines by a person described in this section shall be granted unti untill such such mark mark ha hass been been regi regist ster ered ed in the the country of origin of the applicant. Nothing in this section shall entitle the owner of  a registration granted under this section to sue for acts committe committed d pri prior or to the date date on which which hi hiss mar mark was was regis egiste tere red d in thi hiss cou ount ntrry: Provided, Provi ded, That, notwithstan notwithstanding ding the foregoing, foregoing, the owner of a well-k well-known nown mark as define defined d in Section 123.1( 3.1(e e) of this Act, that is not regist reg istere ered d in the Phi Philip lippine pines, s, may, may, agains againstt an identical or confusingly similar mark, oppose its regist reg istrat ration ion,, or petiti petition on the can cancel cellat lation ion of its regi regist stra rati tion on or su sue e fo forr un unfa fair ir co comp mpet etit itio ion, n, withou wit houtt prejud pre judice ice for to under availi availing ng him selff of other other remedies provided thehimsel law. Examination Procedure Once the application meets the filing requ requir irem emen ents ts of Sect Sectio ion n 12 127, 7, the the Of Offi fice ce shal shalll ex exam amin ine e whet whethe herr the the ap appl plic icat atio ion n me meet etss the the requ requir irem emen ents ts of Sect Sectio ion n 124 124 an and d th the e ma mark rk as defi define ned d in Se Sect ctio ion n 121 121 is regi regist stra rabl ble e un unde derr Section Sectio n 123. Where Wher e the the Of Offi fice ce fi find ndss that that the the cond condit itio ions ns ref referr erred ed to in Subsect Subsection ion 133.1 133.1 are ful fulfil filled led,, it sh shal alll up upon on paym paymen entt of the the pr pres escr crib ibed ed fee, fee, forthwi forthwith th cau cause se the applic applicati ation, on, as fil filed, ed, to be published publi shed in the prescribe prescribed d manner. manner. If af afte terr the the exami examina nati tion on,, the the ap appl plic ican antt is not not entitled to registration for any reason, the Office sh shal alll ad advi vise se the the appl applic ican antt ther thereo eoff an and d the the reas reason onss ther theref efor or.. Th The e ap appl plic ican antt shal shalll have have a period of four (4) months in which to reply or amend ame nd his app applic licati ation, on, which which shall shall then then be reexamined. examin ed. The Regulations Regulations shall determine determine the proced pro cedure ure for the re-exa re-examin minati ation on or reviva revivall of  an ap appl plic icat atio ion n as well well as the the ap appe peal al to the the Director of Trademarks from any final action by the Examiner. Reviving Abandoned Application  An abandoned application may be revived as a pend pendin ing g ap appl plic icat atio ion n wi with thin in thre three e (3) mont months hs from from the the date date of ab aban ando donm nmen ent, t, upon upon good good cause cau se shown shown and the paymen paymentt of the requir required ed fee. Opposing an Application

O ts it the renqcueiremaennts ap op f licSaeticotnion m1e2e7, shallfilin bg e

Intellectual Property Law Notes

 Any person believes that would be, da dama mage ged d by who the the regi re gist stra rati tion on of he a mark ma rk may, may

Page  10

 

up upon on paym paymen entt of th the e requ requir ired ed fee fee an and d wi with thin in thirty (30) days after the publication referred to in Subs Subsec ecti tion on 13 133. 3.2, 2, file file wi with th th the e Of Offi fice ce an opposi opp ositio tion n to the applic applicati ation. on. Such Such opposi oppositio tion n shall be in writing and verified by the oppositor or by any person on his behalf who knows the facts, and shall specify the grounds on which it is base based d an and d inclu include de a st stat atem emen entt of th the e fact factss relied upon. Copies of certificates of registration of marks marks regist registere ered d in other other countr countries ies or other other supp suppor orti ting ng do docu cume ment ntss ment mentio ione ned d in the opposition shall be filed therewith, together with the translat translation ion in Englis English, h, if not in the English English lang langua uage ge.. Fo Forr go good od caus cause e sh show own n an and d up upon on payment of the required surcharge, the time for fili filing ng an op oppo posi siti tion on may be ex exte tend nded ed by th the e Di Dire rect ctor or of Le Lega gall Affa Affair irs, s, who who sh shal alll noti notify fy th the e applic app licant ant of such extens extension ion.. The Regula Regulatio tions ns sh shal alll fi fix x the the maxi maximu mum m pe peri riod od of ti time me wi with thin in which to file the opposition. Upon the filing of an opposition, the Office shall serve notice of the filing on the applicant, and of  th the e da date te of the the he hear arin ing g th ther ereo eoff up upon on the ap appl plic ican antt and and the oppo opposi sito torr an and d all all ot oth her persons having any right, title or interest in the mark mar k covere covered d by the applicat application ion,, as appear appear of  record in the Office. Certificate of Registration  A certificate registration ofe avali be pr prim ima a fa faci cie e of ev evid iden ence ce of th the vamark lidi dity ty shall of th the e regist reg istrat ration ion,, the regist registran rant's t's owners ownership hip of the mark, mar k, and of the regist registran rant's t's exclus exclusive ive right right to us use e th the e sa same me in co conn nnec ecti tion on wi with th th the e good goodss or se serv rvic ices es an and d th thos ose e th that at are are rela relate ted d th ther eret eto o specified in the certificate. Issuance and Publication of Certificate When Wh en the the pe peri riod od for for fili filing ng th the e op oppo posi siti tion on ha hass expire exp ired, d, or when when the Director Director of Leg Legal al Aff Affair airss sh shal alll ha have ve de deni nied ed th the e op oppo posi siti tion, on, th the e Of Offi fice ce upon upo n paymen paymentt of the required required fee, shall shall issue issue the certificate certificate of registrati registration. on. Upon issuance of  a cert certif ific icat ate e of re regi gist stra rati tion on,, no noti tice ce th ther ereo eof  f  maki ma king ng re refe fere renc nce e to th the e pu publ blic icat atio ion n of th the e application shall be published in the IPO Gazette. The regist registere ered d mark mark shall shall be publis published, hed, in the form and within the period fixed by the regula reg ulatio tions. ns. Marks Marks regist registere ered d at the office office may be inspected free of charge and any person may obtain copies thereof at his own expense. This provision shall also be applicable to transactions recorded in respect of any registered mark.

regi regist stra rati tion on or or,, if sa said id cert certif ific icat ate e is lo lost st or destroyed, upon a certified destroyed, certified copy thereof. thereof.

Correction in Case of a Mistake in IPO Whenev Whe never er a mat materi erial al mis mistak take e in a regist registrat ration ion incurred through the fault of the Office is clearly di disc sclo lose sed d by the rec recor ords ds of the the Off Offic ice, e, a certif cer tificat icate e sta statin ting g the fact fact and nature nature of such such mi mist stak ake e sha hall ll be issu issued ed wi wittho hout ut ch char arge ge,, reco record rded ed an and d a prin printe ted d copy copy ther thereo eoff shal shalll be attached to each printed copy of the registration. Such corrected registration shall thereafter have the same effect as the original certificate; or in the discretion of the Director of the  Administrative, Financial and Human Resource Development Service Bureau a new certificate of  registratio regis tration n may be issued without charge. Whenever Whenev er a mistak mistake e is mad made e in a regist registrat ration ion and such mistake occurred in good faith through the fault of the applicant, the Office may issue a certif cer tificat icate e upon upon the paymen paymentt of the prescr prescribe ibed d fee: fee: Pr Prov ovid ided ed,, Th That at the the co corr rrec ecti tion on do does es no nott in invo volv lve e an any y ch chan ange ge in the the regi regist stra rati tion on that that requires republication of the mark. Use of a Mark in a Different Form The use of the mark in a form different from the form foter rmr in whdist hinct itctiv ise regi rechar gist ster ered ed, ,r,wh whic ich h l do does est not no al alte its its whic diich stin ive ch arac acte ter, sh shal all no not bet ground for cancellation or removal of the mark  and shall not diminish the protection granted to the mark. Use of a Mark for Goods Belonging to the Class Registered The use of a mark mark in conn connec ecti tion on with one or more of the goods or services belonging to the class in respect of which the mark is registered sh shal alll pr prev even entt its its ca canc ncel ella lati tion on or remo remova vall in resp respec ectt of al alll othe otherr good goodss or se serv rvic ices es of the the same class. Use of a Mark by Related Company The use of a mark by a company related with th the e regi regist stra rant nt or ap appl plic ican antt shal shalll in inur ure e to the the latter’s benefit, and such use shall not affect the va vali lidi dity ty of su such ch mark mark or of its its regi regist stra rati tion on:: Prov Provid ided ed,, Th That at su such ch ma mark rk is not not used used in such such mann ma nner er as to dece deceiv ive e the the publ public ic.. If us use e of a mark by a person is controlled by the registrant or appl applic ican antt wi with th resp respec ectt to the the na natu ture re an and d quality of the goods or services, such use shall inure to the benefit of the registrant or applicant.

Cancellation or Amendment of Certificate Upon Upo n applic applicati ation on of the regist registran rant, t, the Office Office may permit permit any regist registrat ration ion to be surrend surrendere ered d for for canc cancel ella lati tion on,, an and d up upon on canc cancel ella lati tion on th the e approp app ropria riate te entry entry shall shall be made made in the record recordss of the Office. Upon application of the registrant and paymen paymentt of the prescr prescribe ibed d fee, fee, the Office Office for good cause cause may permit any regist registrat ration ion to be amended or to be disclaimed in part: Prov Pr ovid ided ed,, Th That at the the amen amendm dmen entt or di disc scla laim imer er do does es no nott al alte terr mate materi rial ally ly th the e ch char arac acte terr of th the e

Duration of Certificate of Registration  A certificate of registration shall remain in force for ten (10) years: Provided, That the registrant shal shalll fil ile e a de decl clar arat atio ion n of ac actu tual al us use e and and ev evid iden ence ce to that that effe effect ct,, or sh shal alll sh show ow va vali lid d reasons based on the existence of obstacles to such such use, use, as pr pres escr crib ibed ed by the the Re Regu gula lati tion ons, s, within one (1) year from the fifth anniversary of  th the e dat date of the the regis egistr trat atio ion n of the the mark mark.. Otherwise, the mark shall be removed from the

mark ma rk. . sAppro App pria te en entr yupon shal be made martif de ine th the e reco re cord rds ofropr th the eiate Offi Office cetry upsh onalll th the e ce cert ific icat ate of 

Register by the Office.

Intellectual Property Law Notes

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Non-Use of Mark  Non-use of a mark may be excused if caused by circumstance circum stancess arising arising independentl independently y of the will of the trademark owner. Lack of funds shall not excuse non-use of a mark. The special circumstances to excuse non-use in affi affida davi vits ts of nonnon-us use e sh shal alll not not be ac acce cept pted ed unless they are clearly beyond the control of the regi regisstr tran antt such such as th the e pr proh ohib ibit itio ion n of sale sale imposed by government regulation. Renewal  A certificate of registration may be renewed for periods of ten (10) years at its expiration upon payment of the prescribed fee and upon filing of  a re requ ques est. t. The The re requ ques estt shal shalll conta ontain in the following indications: a. An indicati indication on that that renewal renewal is sought; sought; b. The nam name e and addres addresss of the regist registran rantt or his suc success cessoror-inin-int intere erest, st, hereaf hereafter ter referred to as the "right holder"; c. The registration number of the registration concerned; d. The fi filin ling g date of the applic applicati ation on which which result res ulted ed in the regist registrat ration ion concer concerned ned to be renewed; e. Where the right holder has a repres rep resent entati ative, ve, the name name and addres addresss of that representative; f.

The Thrvic e ices name na the thich e hreco record rded goods goo dsl or serv se esmes fsorof whic wh th the e edrene renewa wal is requested or the names of the recorded goods or services for which the renewal is not requested, grouped according to the classes of the Nice Classification to which whi ch that that group group of goods goods or servic services es belong bel ongss and presente presented d in the order of  the classe classess of the said said Classi Classific ficati ation; on; and g. A signa signatu ture re by the the right right hold holder er or his his representative. Such request shall be in Filipino or English and may be made at any time within six (6) months before the expiration of the period for which the registration was issued or renewed, or it may be made within six (6) months after such expiration on payme ayment nt of th the e ad addi diti tion onal al fee he herrei ein n prescribed. If the Office refuses to renew the registration, it shall notify the registrant of his refusal and the reasons therefor.  An applicant for renewal not domiciled in the Philippines shall be subject to and comply with the requirements of this Act.

and evidence evidence of actual actual use prescr prescribe ibed d in these these Regulations within one year following the tenth and fifteenth anniversaries of the registration or renewal registration under Republic Act No. 166; provided, further, that marks whose regist reg istrat ration ionss have have a remain remaining ing durati duration on of six an and d on onee-ha half lf year yearss or less less ma may y no lo long nger er be subjec sub jectt to the req requir uireme ement nt of declar declarati ation on and evidence of use but shall be renewed within the time and in the manner provided for renewal of  regi regist stra rati tion on by thes these e Reg Regul ulat atio ions ns an and, d, upon upon renewal, shall be reclassified in accordance with the Nice Classification. The renewal shall be for a duration of ten years. Trade names and marks regist reg istere ered d in the Supplem Supplement ental al Reg Regist ister er und under er Repu Republ blic ic Act Act No. No. 166 166 whos whose e reg registr istrat atiion on,, including any renewal thereof, was subsisting as of Ja Janu nuar ary y 1, 19 1998 98 shal shalll rema remain in in fo forc rce e bu butt shall no longer be subject to renewal. Wi With th the the appl applic icat atio ion n for the rene renewa wall of a regist reg istrat ration ion made made und under er Republ Republic ic Act No. 166 th the e cert certif ific icat ate e of regi regist stra rati tion on to be rene renewe wed d must be surrendered to the Office, if the official copy of such certificate of registration is not in the files of the Office. After he has surrendered th the e cert certif ific icat ate e of regi regist stra rati tion on gran grante ted d unde underr Republic Act No. 166, the applicant for renewal may, ma y, if he so desi desire res, s, obta obtain in a cert certif ifie ied d co copy py thereof, upon payment of the usual fees. Rights Conferred The owner of a registered mark shall have the exclusi exc lusive ve rig right ht to preven preventt all third third partie partiess not ha havi ving ng the the ow owne ner' r'ss co conse nsent nt fr from om usin using g in the the cour course se of trad trade e iden identi tica call or simi simila larr sign signss or cont contai aine ners rs fo forr good goodss or serv servic ices es wh whic ich h ar are e identical or similar to those in respect of which th the e trad tradem emar ark k is regi regist ster ered ed wh wher ere e such such use use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or se serv rvice ices, s, a like likeli liho hood od of co conf nfus usio ion n shal shalll be presumed. Th The e ex excl clus usiv ive e ri righ ghtt of the the ow owne nerr of a well well-kn known own mark mark defi define ned d in Su Subse bsect ctio ion n 123.1 123.1(e) (e) whic wh ich h is regi regist ster ered ed in the the Phil Philip ippi pine nes, s, sh shal alll ex exte tend nd to go good odss an and d se serv rvic ices es whic which h ar are e no nott similar to those in respect of which the mark is regist reg istere ered: d: Provid Provided, ed, That That use of that that mar mark k in rela relati tion on to thos those e good goodss or serv servic ices es wo woul uld d indica ind icate te a connec connectio tion n betwee between n those those goo goods ds or services and the owner of the registered mark: Pr Prov ovid ided ed fu furt rthe her, r, That That the the in inte tere rest stss of the the owne ow nerr of the the regi regist ster ered ed mark mark ar are e li like kely ly to be damaged by such use.

Renewal of Marks Registered Prior the RA 8293 Mark Ma rkss re regi gist ster ered ed un unde derr Re Repu publ blic ic Act Act No No.. 166 166 sh shal alll re rema main in in fo forc rce e an and d ef effe fect ct but but sh shal alll be deem deemed ed to have have be been en gr gran ante ted d un unde derr th the e IP Code and shall be renewed within the time and manner provided provided for renewal renewal of registration registration by these Regulations; Regulations; provided, provided, that marks whose regi regist stra rati tion on have have a remai remaini ning ng du dura rati tion on as of 

Limitations Registration of the mark shall not confer on the regi regist ster ered ed ow owne nerr the the ri righ ghtt to pr prec eclu lude de thir third d part partie iess fr from om us usin ing g bona bona fi fide de thei theirr name names, s, addresses, addres ses, pseudo pseudonyms, nyms, a geographica geographicall name, or exact indications concerning the kind, quality, quanti qua ntity, ty, destin destinati ation, on, value, value, place place of ori origin gin,, or time of production or of supply, of their goods or services: Provided, That such use is confined to the the pu purrpo pose sess of me mere re iden identi tifi fica cati tion on or

January 1, be 1998 of more than sixthe and one-half  years shall required to submit declaration

information mislead the public as to the source ofand thecannot goods or services.

Intellectual Property Law Notes

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c.  Assignment of Registered Mark   An application for registration of a mark, or its regi regist stra rati tion on,, may may be as assi sign gned ed or tran transf sfer erre red d with with or with withou outt th the e tran transf sfer er of th the e bu busi sines nesss using the mark. Such assignment assignment or transfer shall, however, however, be null and void if it is liable to mislead the public, part partic icul ular arly ly as re rega gard rdss th the e na natu ture re,, so sour urce ce,, manu ma nufa fact ctur uring ing proc proces ess, s, ch char arac acte teri rist stics ics,, or su suit itab abil ilit ity y fo forr thei theirr purp purpose ose,, of th the e good goodss or services to which the mark is applied. Form of Assignment The assignment of the application for registration of a mark, or of its registration, shall be in writing and require the signatures of the co cont ntra ract ctin ing g pa part rtie ies. s. Tr Tran ansf sfer erss by merge mergers rs or other forms of succession may be made by any document supporting such transfer. Recording of Assignment and Transfer  Assignments and transfers of registrations of  mark ma rkss shal shalll be re reco corrde ded d at th the e Offi Office ce on payment of the prescribed fee; assignment and transfers of applications for registration shall, on paym paymen entt of th the e sa same me fee, fee, be pr prov ovis isio iona nall lly y recorded, and the mark, when registered, shall be in the name of the assignee or transferee.  Assignments and transfers shall have no effect agains aga instt third third partie partiess until until they they are record recorded ed at the Office. The date date of record recording ing of an assign assignmen ment, t, other other document or license is the date of its receipt at the Office Office in proper proper form and accomp accompanie anied d by the full recording fee. License Contracts  Any license contract concerning the registration of a mark mark,, or an ap appl plic icat atio ion n th ther eref efor or,, shal shalll provid pro vide e for effect effective ive contro controll by the licensor licensor of  th the e qu qual alit ity y of th the e go good odss or se serv rvic ices es of th the e licens licensee ee in connec connection tion with which which the mark is used. use d. If the license license contra contract ct does does not provid provide e for such quality control, or if such quality control is not effectively carried out, the license contract shall not be valid. Cancellation of Registration  A petition to cancel a registration of a mark  under this Act may be filed with the Bureau of  Legal Affairs by any person who believes that he is or will will be dama damage ged d by th the e regi regist stra rati tion on of a mark. The petition petition may be filed filed Within Within five (5) years years from the date of the registration of the mark. The petition may be filed however at any time if  it based on the following: a. if th the e re regi gist ster ered ed mark mark be beco come mess th the e generic name for the goods or services, or a po port rtio ion n th ther ereo eof, f, for for whic which h it is registered; b. has been been aban abandon doned; ed;

Intellectual Property Law Notes

it its registration was obtained fraudulently or contrary to the provisions of this Act; d. if the re regis gister tered ed mar mark k is bein being g used by, by, or with the permission of, the registrant so as to misrepresent the source of the good goodss or se serv rvic ices es on or in co conn nnec ecti tion on with which the mark is used. e. the registered owner of the mar ark  k  withou wit houtt leg legiti itimat mate e reason reason fails fails to use the the mark mark with within in the the Phil Philip ippi pine nes, s, or to cause it to be used in the Philippines by virtue of a license during an uninterrupted period of three (3) years or longer.

If the the regi regist ster ered ed ma mark rk beco become mess the the gene generi ricc name for less than all of the goods or services for which it is registered, a petition to cancel the regi regist stra rati tion on fo forr on only ly thos those e good goodss or se serv rvic ices es may ma y be fi file led. d. A regi regist ster ered ed ma mark rk shal shalll not not be deem deemed ed to be the the gene generi ricc name name of good goodss or servic ser vices es solely solely because because such such mark mark is also also used used as a name of or to identify a unique product or serv servic ice. e. The The prim primar ary y sign signif ific ican ance ce of the regi regist ster ered ed ma mark rk to the the rele releva vant nt publ public ic ra rath ther er than tha n purcha purchaser ser motiva motivatio tion n shall shall be the test test for determ det ermini ining ng whethe whetherr the reg regist istere ered d mark mark has become the generic name of goods or services on or in connection with which it has been used. Notwithst Notwit hstand anding ing the for forego egoing ing provis provisions ions,, the courtt or the adminis cour administra trativ tive e agency agency vested vested with with  jurisdiction to hear and adjudicate any action to en enfo forc rce e the the ri righ ghts ts to a regi regist ster ered ed mar mark k shal shalll like likewi wise se ex exer erci cise se ju juri risd sdic icti tion on to dete determ rmin ine e whethe whe therr the regist registrat ration ion of said said mark mark may be cancelled in accordance with this Act. The filing of a suit to enforce the registered mark with the proper court or agency shall exclude any other court or agency from assuming jurisdiction over a subsequently filed petition to cancel the same mark ma rk.. On the the othe otherr ha hand nd,, the the earl earlie ierr fi fili ling ng of  petition to cancel the mark with the Bureau of  Legal Leg al Aff Affair airss shall shall not consti constitut tute e a pre prejud judici icial al question that must be resolved before an action to enforc enforce e the rights rights to sam same e regist registere ered d mark  mark  may be decided. Effect of Cancellation If the Bureau of Legal Affairs finds that a case for for ca canc ncel ella lati tion on ha hass been been made made ou out, t, it shal shalll order the cancellation of the registration. When the order or judgment becomes final, any right conf confer erre red d by such such regi regist stra rati tion on up upon on the regi regist stra rant nt or an any y pers person on in in inte tere rest st of reco record rd shallll termin sha terminate ate.. Notice Notice of cancel cancellat lation ion shall shall be published in the IPO Gazette. Remedies Against Trademark  Infringement Civil Remedies  Any person who shall, without the consent of  the owner of the registered mark: 1. Us Use e in co comm mmer erce ce an any y repr reprod oduc ucti tion on,, counterfeit, copy, or colorable imitation of a registered mar mark or the same container or a dominant feature thereof 

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in connection with the sale, offering for sa sale le,, dist distri ribu buti tion, on, ad adve vert rtis isin ing g of an any y go good odss or serv ervices ices in incl clud udin ing g othe otherr prepar pre parato atory ry steps steps necessa necessary ry to carry carry out the sale of any goods or services on or in connection with which such use is li like kely ly to caus cause e co conf nfusi usion, on, or to caus cause e mistake, or to deceive; or 2. Rep Reproduce, counterfeit, copy or colorably imitate a registered mark or a domi domina nant nt fe feat atur ure e th ther ereo eoff an and d ap appl ply y such reproduction, reproduction, counterfeit counterfeit,, copy or colo colora rabl ble e im imit itat atio ion n to la labe bels ls,, si sign gns, s, prints, packages, wrappers, receptacles or advertisements intended to be used in comm commer erce ce up upon on or in conn connec ecti tion on with the sale, offering for sale, dis distri tribut bution ion,, or adv advert ertisi ising ng of goods goods or services on or in connection with which such use is likely to cause confusion, or to cau cause se mistak mistake, e, or to deceiv deceive, e, shall shall be liable in a civil action for inf infrin ringeme gement nt by the regist registran rantt for the remedies remedi es hereinafter hereinafter set forth: Provided, Th That at the the in infr frin inge geme ment nt ta take kess pl plac ace e at the the momen momentt an any y of th the e ac acts ts st stat ated ed in Subsection 155.1 or this subsection are committed regardless of whether there is actual sale of goods or services using the infringing material. Trademark Dilution Trademark Dilution   – th the e le less ssen enin ing g of th the e capa capaci citty of a famou amouss mar mark to id iden enttify ify an and d distinguish disti nguish goods or services, services, regardless regardless of the presence or absence of: 1. Co Comp mpet etit itio ion n be betw twee een n th the e owne ownerr of th the e famous mark and other parties; or 2. Likel ikelih ihoo ood d of co conf nfus usio ion, n, mist mistak ake e or deception. The owner owner of a fa famo mous us mark mark in en enti titl tled ed to an injunction “against another person’s commercial us use e in co comm mmer erce ce of a mark mark or trad trade e name name,, if  su such ch use use be begi gins ns af afte terr th the e mark mark has has beco become me famo famous us an and d ca caus uses es di dilu luti tion on of th the e di dist stin incti ctive ve quality of the mark.  Action for False of Fraudulent Declaration  Any person who shall procure registration in the Off Office of a mark by a false or fraudul ulen entt declaration or representation, whether oral or in writing, or by any false means, shall be liable in a civil action by any person injured thereby for any damages sustained in consequence thereof .

services servic es in connect connection ion with with which which the mark or trade name was used in the infringement of the rights of the complaining party. On ap appl plic icat atio ion n of the the co comp mpla lain inant ant,, the the cour courtt may impound during the pendency of the action, sales invoices and other documents evidencing evidencing sales. In case casess wh wher ere e ac actu tual al in inte tent nt to mi misl slea ead d the the public pub lic or to defrau defraud d the compla complaina inant nt is sho shown, wn, in the discretion of the court, the damages may be doubled. The co comp mpla laina inant nt,, upon upon prop proper er show showing ing,, ma may y also be granted granted injunction. injunction. Destruction of Infringing Material In any action arising under this Act, in which a viol violat atio ion n of an any y ri righ ghtt of the the owne ownerr of the the regist reg istere ered d mark mark is establ establish ished, ed, the cour courtt may orde orderr that that good goodss fo foun und d to be in infr frin ingi ging ng be, be, withou wit houtt compen compensat sation ion of any sort, sort, dis dispos posed ed of  ou outs tsid ide e the the ch chann annel elss of co comme mmerc rce e in such such a mann ma nner er as to av avoi oid d an any y ha harm rm caus caused ed to the the right holder, or destroyed; and all labels, signs, prin prints ts,, pa pack ckag ages es,, wrap wrappe pers rs,, rece recept ptac acle less an and d adve adverrtise tiseme ment ntss in the the po poss sses esssio ion n of the defendant, bearing the registered mark or trade name or any reproduction, counterfeit, copy or col colora orable ble imi imitat tation ion thereo thereof, f, all plates plates,, mol molds, ds, matrices and other means of making the same, shall be delivered up and destroyed. In rega regard rd to co coun unte terf rfei eitt go good ods, s, the the simp simple le remova rem ovall of the trademar trademark k affixed affixed shall not be sufficient other than in exceptional cases which sh shal alll be dete determ rmin ined ed by the the Regu Regula lati tion ons, s, to permit the release of the goods into the channels channe ls of commerce. commerce. Infringement Action by a Foreign National  Any person who is a national or who is domici dom iciled led or has a real real and effecti effective ve ind industr ustrial ial establ est ablish ishmen mentt in a countr country y which which is a party party to any convention, treaty or agreement relating to int intell ellect ectual ual proper property ty rights rights or the repres repressio sion n of  unfair unf air compet competiti ition, on, to which which the Phi Philip lippine piness is al also so a pa part rty, y, or exte extend ndss re reci cipr proc ocal al ri righ ghts ts to na nati tion onal alss of the the Phil Philip ippi pine ness by la law, w, shal shalll be entitl ent itled ed to ben benefi efits ts to the extent extent necessa necessary ry to give effect to any provision of such convention, treaty or reciprocal law, in addition to the rights to which which any owner owner of an int intell ellect ectual ual proper property ty right is otherwise entitled by this Act.

Damages and Injunction The owne ownerr of a re regi gist ster ered ed mark mark may may reco recover ver da dama mage gess from from an any y pers person on who who in infr frin inge gess hi hiss righ rights ts,, and and the the meas measur ure e of the da dama mag ges suffer suf fered ed sha shallll be eit either her the reason reasonabl able e profit profit which the complaining party would have made, had the defend defendant ant not infringe infringed d his rights rights,, or the profit profit which which the defend defendant ant actual actually ly made made ou outt of the the infr infrin inge geme ment nt,, or in th the e ev even entt su such ch measure of damage ages cannot be readily ascertained ascert ained with reasonable reasonable certainty, certainty, then the cour courtt may may awar award d as da dama mage gess a reas reason onab able le

Presumptio Presump tion n in Tra Tradem demark ark Infring Infringeme ement nt Cases In any suit for infring infringeme ement, nt, the owner owner of the registered mark shall not be entitled to recover profit pro fitss or damage damagess unl unless ess the act actss hav have e been been committed with knowledge that such imitation is likely likely to cause cause con confus fusion ion,, or to cause cause mistak mistake, e, or to dec deceiv eive. e. Suc Such h knowle knowledge dge is presum presumed ed if  th the e regi regist stra rant nt give givess no noti tice ce that that hi hiss mark mark is regi regist ster ered ed by disp displa layi ying ng wi with th the the mark mark the the words '"Registered Mark" or the letter R within a

pe perc rcen enta tage ge base based d up upon on th the e amou amount nt of gros grosss sale saless of th the e de deffenda endant nt or th the e value alue of th the e

circle circle or if the defend defendant ant had otherw otherwise ise act actual ual notice of the registration. registration.

Intellectual Property Law Notes

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particular, it is liable to deceive trade circles or th the e publ public ic as to the the natu nature re of the the ente enterp rpri rise se identified by that name. Limitations Prior Use  A registered mark shall have no effect against any person who, in good faith, before the filing date or the priority date, was using the mark for the purposes of his business or enterprise. The right right may only only be tra transf nsferr erred ed or ass assign igned ed together with his enterprise or business or with that part of his enterprise or business in which the mark is used. Printer of Infringing Mark  Printer Where an infringer who is engaged solely in the business of printing the mark or other infringing materials for others is an innocent infringer, the owner of the right infringed shall be entitled as agai agains nstt su such ch infr infrin inge gerr on only ly to an in inju junct nctio ion n against future printing.  Advertisment Wher Wh ere e th the e infr infrin inge geme ment nt co comp mpllai aine ned d of is contained in or is part of paid advertisement in a ne news wspa pape perr, maga magazi zine ne,, or oth other si simi mila larr periodical or in an electronic communication, the remedies of the owner of the right infringed as agai agains nstt the the publ publis ishe herr or dist distri ribu buto torr of su such ch newspaper, magazine, or other similar periodical or ele electr ctroni onicc communi communicat cation ion shall shall be limite limited d to an inj injunct unction ion agains againstt the presen presentat tation ion of suc such h ad adve vert rtis isin ing g matt matter er in futu future re is issu sues es of su such ch ne news wspa pape perrs, maga magazi zin nes, es, or othe otherr si simi mila larr period per iodica icals ls or in fut future ure tra transm nsmiss ission ionss of such such electronic communications. The limitations of this subparagraph shall apply only to innocent infringers: Provided, That such in inju junct nctiv ive e re reli lief ef sh shal alll not not be av avai aila labl ble e to th the e owner of the right infringed with respect to an issue of a newspaper, magazine, or other similar peri period odic ical al or an el elec ectr tron onic ic comm commun unic icat atio ion n contain cont aining ing inf infrin ringin ging g matter matter where where restra restraini ining ng the dis dissem semina inatio tion n of such such inf infrin ringing ging matter matter in any particul particular ar issue issue of such peri periodi odical cal or in an el elec ectr tron onic ic comm commun unic icat atio ion n woul would d de dela lay y th the e delive del ivery ry of such such issue issue or tra transm nsmiss ission ion of such elec electr tron onic ic comm commun unic icat atio ion n is cust custom omar aril ily y cond conduc ucte ted d in acco accorrda danc nce e with with th the e soun sound d business practice, and not due to any method or devi device ce ad adop opte ted d to ev evad ade e th this is sect sectio ion n or to prevent or delay the issuance of an injunction or restraining order with respect to such infringing matter.

Protected Even Without Registration No Notw twit ith hstan standi din ng any any la laws ws or regul egulat atio ion ns prov provid idin ing g fo forr an any y ob obli liga gati tion on to regi regist ster er trad trade e na name mes, s, su such ch names names shal shalll be pr prot otec ecte ted, d, even even prio priorr to or wi with thou outt regi regist stra rati tion on,, ag agai ains nstt an any y unlawful unlawf ul act committed by third parties. parties. In par partic ticula ular, r, any subseque subsequent nt use of the trade name by a third party, whether as a trade name or a mark or collective mark, or any such use of  a similar trade name or mark, likely to mislead the public, shall be deemed unlawful. The reme remedi dies es prov provid ided ed fo forr in Sect Sectio ions ns 153 153 to 156 156 and and Se Sect ctiion onss 166 166 and and 167 167 shal shalll appl apply y mutatis mutandis.  Any change in the ownership of a trade name shall be made with the transfer of the enterprise or pa part rt ther thereo eoff iden identi tifi fied ed by that that name. name. Th The e provis pro vision ionss of Subsect Subsection ionss 149.2 149.2 to 149. 149.4 4 shall shall apply mutatis mutandis. Unfair Competition  A person who has identified in the mind of the public pub lic the goods goods he manufa manufactu ctures res or deals deals in, his busines businesss or servic services es fro from m those those of others others,, whetherr or not a regist whethe registere ered d mar mark k is emp employ loyed, ed, has a property right in the goodwill of the said goods, business or services so identified, which will be protected in the same manner as other property rights.  Any person who shall employ deception or any other means contrary to good faith by which he shall pass off the goods manufactured by him or in which which he deals, deals, or his business business,, or servic services es for for thos those e of the the on one e havi having ng esta establ blis ishe hed d such such goodwill, or who shall commi mitt any acts calculated to produce said result, shall be guilty of unfair competition, and shall be subject to an action therefor.

Names Name s Th That at Ca Cann nnot ot be Us Used ed as a Tr Trad ade e Name  A name or designation may not be used as a trade name if by its nature or the use to which

In partic particula ular, r, and withou withoutt in any way limiting limiting the scope of protection against unfair co comp mpet etit itio ion, n, the the fo foll llowi owing ng shal shalll be deem deemed ed guilty of unfair competition: a. Any Any pers person on,, who who is sell sellin ing g hi hiss good goodss and gives them the general appearance of go good odss of an anot othe herr manu manufa fact ctur urer er or dealer, either as to the goods them themse selv lves es or in the the wr wrap appi ping ng of the the packag pac kages es in which which they they are contain contained, ed, or the device devicess or words thereon thereon,, or in any other other featur feature e of their their appear appearanc ance, e, whic wh ich h woul would d be li lik kely ely to in infl flue uenc nce e purc purcha hase sers rs to beli believ eve e that that the the good goodss offered are those of a manufacturer or dealer, other than the actual manufacturer or dealer, or who otherw oth erwise ise clo clothes thes the goods goods with with such appear app earanc ance e as shall shall deceiv deceive e the public public an and d defr defrau aud d an anot othe herr of hi hiss legi legiti tima mate te

su such ch name name or desi design gnat atio ion n may may be pu put, t, it is cont contra rary ry to pu publ blic ic orde orderr or mora morals ls an and d if, if, in

trad trade, e, or an any y su subs bseq eque uent nt vend vendor or of  such goods or any agent of any vendor

Imported Drugs Trad ade e Name -   the the name name or de desi sign gnat atio ion n identifying or distinguishing an enterprise.

Intellectual Property Law Notes

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en enga gage ged d in se sell llin ing g su such ch good goodss wi with th a like purpose; b. An Any y pe pers rson on who who by an any y arti artiffic ice, e, or devic evice, e, or who who empl employ oyss any any othe otherr mean me anss calc calcula ulate ted d to in induc duce e th the e fals false e belief bel ief that such such person person is offeri offering ng the servic ser vices es of anothe anotherr who has identi identifie fied d such services in the mind of the public; or c. An Any y pe pers rson on who sh shal alll make make any fal false se statement in the course of trade or who shallll commit sha commit any other other act contrary contrary to go good od fa fait ith h of a natu nature re calc calcul ulat ated ed to discredit the goods, business or services of another. Elements: 1. Confu onfussing ing si simi mila larrit ity y in th the e ge gene nerral appearance of the goods; and 2. Intent Intent to de decei ceive ve the publi publicc and defrau defraud d a competitor. False Designation of Origin; False Description or Representation  Any person who, on or in connection with any goods goo ds or servic services, es, or any contai container ner for goods, goods, us uses es in comme ommerrce an any y word word,, te term rm,, na name me,, symbol sym bol,, or device device,, or any combina combinatio tion n thereo thereof, f, or an any y fa fals lse e de desi sign gnat atio ion n of orig origin in,, fals false e or mi misl slea eadi ding ng de desc scri ript ptio ion n of fact fact,, or fals false e or misleading representation of fact, which: a. Is likely likely to cause cause confus confusion ion,, or to cause mistake, or to deceive as to the affiliati affi liation, on, connection, connection, or association association of  such person with another person, or as to the origin origin,, sponso sponsorsh rship, ip, or approv approval al of his or her goods, services, or commercial activities by another person; or b. In comm commerc ercial ial advert advertisi ising ng or promotion promotion,, misrepresents the nature, characteri chara cteristics, stics, qualities, qualities, or geographic geographic origin of his or her or another person's goods, services, or commercial activities, sha hall ll be lia iabl ble e to a civ civil acti action on for damag damages es an and d in inju junc ncti tion on pr prov ovid ided ed in Sections 156 and 157 of this Act by any person who believes that he or she is or is likely to be damaged by such act.  Any goods marked or labelled in contravention of th the e prov provis isio ions ns of th this is Se Sect ctio ion n sh shal alll not not be import imp orted ed int into o the Philip Philippine piness or admitt admitted ed entry entry at an any y cu custo stomh mhou ouse se of th the e Phil Philip ippi pines nes.. Th The e owner, importer, or consignee of goods refused entr entry y at an any y cu cust stom omho house use unde underr th this is se sect ctio ion n may ma y have have an any y re reco cour urse se unde underr th the e cust custom omss revenue laws or may have the remedy given by this this Act in cases cases involv involving ing goods goods refuse refused d entry entry or seized. Criminal Penalty Inde Indepe pend ndent ent of th the e civi civill an and d ad admi mini nist stra rati tive ve sanctions imposed by law, a criminal penalty of  im impr pris isonm onmen entt fr from om tw two o (2) (2) ye year arss to five five (5) ye year arss an and d a fi fine ne ra rang ngin ing g from from Fi Fift fty y th thou ousa sand nd peso pesoss (P50 (P50,0 ,000 00)) to Tw Two o hund hundre red d th thou ousa sand nd peso pesos( s(P2 P200 00,0 ,000 00), ), sh shal alll be impo impose sed d on an any y person who is found guilty of committing any of 

Intellectual Property Law Notes

the acts mentioned in Section 155, Section 168 and Subsection 169.1.

LAW ON COPYRIGHT Copyright   – lega legall conce oncept pt that that give givess the the creator of an original work exclusive rights to it, usually for a limited period of time. opyright or economic rights shall consist of the exclusive right to carry out, authorize or prevent the following acts: a. Reprod Reproduct uction ion of the work or subst substant antial ial portion of the work; b. Dra Dramat matiza izatio tion, n, tra transl nslati ation, on, adapta adaptatio tion, n, ab abri ridg dgme ment nt,, ar arra rang ngem emen entt or othe otherr transformation of the work; c. The fir irst st pu publ blic ic dis distrib tribu ution tion of the or orig igin inal al an and d each each co copy py of the the work work by sale or other forms of transfer of  ownership; d. Rent Rental al of the ori origi gina nall or a copy copy of an audiovisual audio visual or cinematogra cinematographic phic work, a work embodied in a sound recording, a co comp mpute uterr prog progra ram, m, a co comp mpil ilat atio ion n of  data data an and d othe otherr ma mate teri rial alss or a musi musica call work in graphic form, irrespective of the owne ow ners rship hip of the the or orig igin inal al or the the co copy py which is the subject of the rental; e. Publ Public ic dis displ play ay of the the or orig igin inal al or a co copy py of the work; f. Public Public perf perform ormanc ance e of the the work; work; and and g. Ot Othe herr co commu mmunic nicat atio ion n to the the publ public ic of  the work. Scope of Copyright Original Work  Literary Liter ary and artistic artistic works, works, hereinafter hereinafter referred to as "works", are original intellectual creations in the the li lite tera rary ry an and d ar arti tist stic ic do doma main in prot protec ecte ted d from from the the mome moment nt of thei theirr cr crea eati tion on an and d shal shalll include in particular: a. Bo Book oks, s, pamp pamphl hlet ets, s, ar arti ticl cles es an and d othe otherr writings; b. Periodical Periodicalss and newspapers; newspapers; c. Lectures, sermons, addresses, dissertati disse rtations ons prepared prepared for oral delivery, delivery, whet wh ethe herr or no nott redu reduce ced d in wr writ itin ing g or other material form; d. Lett Letter ers; s; e. Dramatic or dramatico-musical composi com positio tions; ns; choreo choreogra graphi phicc works works or entertainme enter tainment nt in dumb shows; f. Musi Musical cal composi compositi tion ons, s, wi with th or wi with thou outt words; g. Work Workss of drawing, drawing, painting painting,, archit architectu ecture, re, sc sculp ulptu ture re,, engr engrav aving ing,, li lith thog ogra raph phy y or othe otherr work workss of ar art; t; model modelss or desi design gnss for works of art; h. Origin Original al ornament ornamental al desig designs ns or models models for articl articles es of manufa manufactur cture, e, whethe whetherr or not regist registrab rable le as an indust industria riall design design,, and other works of applied art; i. Il Illu lust stra rati tion ons, s, ma maps ps,, plan plans, s, sk sket etch ches es,, ch char arts ts an and d thre threee-di dime mens nsion ional al work workss rela relati tive ve to geog geogra raph phy, y, to topo pogr grap aphy hy,, architecture or science;

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 j. k.

l.

m. n. o.

Drawings or plastic works of a scientific or technical character; Ph Phot otog ogra raph phic ic wo work rkss in incl clud udin ing g work workss pr prod oduc uced ed by a pr proc oces esss an anal alog ogous ous to photography; lantern slides; Audiov Audiovisu isual al works works and cinem cinemato atogra graphic phic works and works produced by a process an anal alog ogous ous to cine cinema mato togr grap aphy hy or an any y process for making audio-visua uall recordings; Pictorial illustrations and advertisements; Com Comput puter er pro progra grams; ms; and Oth Other er lit litera erary, ry, schol scholarl arly, y, sci scienti entific fic and artistic works.

Workss ar Work are e pr prot otec ecte ted d by th the e so sole le fact fact of th thei eirr creati cre ation, on, irresp irrespect ective ive of their their mode mode or for form m of  expres exp ressio sion, n, as wel welll as of their their conten content, t, qualit quality y and purpose. Copyright and E-Commerce Act Derivative Work  The fo foll llowi owing ng de deri riva vati tive ve work workss sh shal alll al also so be protected by copyright: a. Dramatizations, translations, adaptations, abridgments, arrangement arran gements, s, and other alterations alterations of  literary liter ary or artistic artistic works; and b. Col olle leccti tion onss of li lite tera rarry, scho schola larl rly y or artistic works, and compilations of data and other other materi materials als which which are origin original al by reason of the selection or co coor ordi dina nati tion on or arra arrang ngem emen entt of th thei eirr contents. The works referred to in paragraphs (a) and (b) of Subsect Subsection ion 173.1 shall shall be protec protected ted as new works: wor ks: Provid Provided ed howeve however, r, That such new work  work  sh shal alll not not af affe fect ct th the e forc force e of an any y su subs bsis isti ting ng copyri cop yright ght upon upon the origin original al works works employ employed ed or any part thereof, or be construed to imply any ri righ ghtt to su such ch use use of th the e or orig igin inal al work works, s, or to se secu cure re or ex exte tend nd copy copyri righ ghtt in su such ch orig origin inal al works. Publisher’s Right In addition to the right to publish granted by the author, his heirs, or assigns, the publisher shall have a copyright consisting merely of the right of reproduction of the typographical arra arrang ngeme ement nt of th the e publ publis ished hed ed edit itio ion n of th the e work. Non-Copyrightable Works Unprotected Subject Matter Notwithstand Notwit hstanding ing the provisions provisions of Sections Sections 172 and 173, no protection shall extend, under this law, (1) to any idea, procedure, system, method or operat operation ion,, concep concept, t, pri princi nciple ple,, dis discov covery ery or mere data as such, even if they are expressed, explained, illustrated or embodied in a work; (2) newss of the day and other miscel new miscellan laneou eouss facts facts ha havi ving ng th the e ch char arac acte terr of mere mere it item emss of pr pres esss informat mation; (3) (3) or any official text of a legisl leg islati ative, ve, admini administr strati ative ve or legal legal nature nature,, as well as any official translation thereof.

Intellectual Property Law Notes

Works Work s of the the Go Gove vern rnme ment nt -   is is a work   crea create ted d by an off ffiice cerr or emp emplo loye yee e of the Philippine Government or any of its subdivisions and ins instru trumen mental taliti ities, es, inc includ luding ing gov governm ernment ent-owned or controlled corporations as a part of his regularly prescribed official duties. Elements: 1. The creator must be an officer or employee of the government. 2. The work was done as part of his regularly prescribed official duties. General Rule: Prior approval of the governm gov ernment ent agency agency or off office ice whe wherei rein n the work  work  is created shall be necessary for exploitation of  such work for profit. Such agency or office may, among amo ng other other things things,, impose impose asa condit condition ion the payment of royalties. Ex Exce cept ptio ion: n: No pr prio iorr app appro rova vall or or con condi diti tion onss shall be required for the use of any purpose of  statut sta tutes, es, rul rules es and regula regulatio tions, ns, and speech speeches, es, lectures, sermons, addresses, and dissertations, pr pron onou ounc nced ed,, read read or rend render ered ed in cour courts ts of   justice, before administrative agencies, in deli delibe bera rati tive ve as asse semb mbli lies es an and d in meet meetin ings gs of  publ public ic char charac acte ter. r. Howe Howeve ver, r, Th The e au auth thor or of  speech spe eches, es, lectur lectures, es, ser sermon mons, s, addres addresses ses,, and di diss sser erta tati tion onss ment mentio ione ned d in the the pr prec eced edin ing g pa para ragr grap aphs hs sh shal alll have have the the excl exclus usiv ive e ri righ ghtt of  making a collection of his works. Government and Copyright Notwit Not withst hstand anding ing the for forego egoing ing provis provisions ions,, the Government is not precluded from receiving and holding copyrights transferred to it by as assi sign gnme ment nt,, bequ beques estt or othe otherw rwis ise; e; nor nor shal shalll publication publi cation or republicatio republication n by the Government Government in a publ public ic docu docume ment nt of an any y work work in whic which h co copy pyri righ ghtt is su subs bsis isti ting ng be take taken n to ca caus use e an any y abridgment or annulment of the copyright or to authorize any use or appropriation of such work  without the consent of the copyright owner. Copyright Ownership Rules: 1.   In the the ca case se of or orig igin inal al li lite terrar ary y an and d artistic works, copyright shall belong to the author of the work; 2.   In the case of works works of joint aut authorshi horship, p, the the co co-a -aut utho hors rs sh shal alll be the the or orig igin inal al own ow ners ers of the co copy pyrright ight and and in the the absence of agreement, their rights shall be governed by the rules on coownership. If, however, a work of joint authorship consists of parts that can be used separately and the author of each part part ca can n be iden identi tifi fied ed,, the the au auth thor or of  each part shall be the original owner of  the the co copy pyri right ght in the the part part that that he has has created; 3.   In the case of work created by an au auth thor or duri during ng an and d in the the co cour urse se of hi hiss employment, emplo yment, the copyright copyright shall belong to: a. The empl employe oyee, e, if the the creat creation ion o of  f  the object of copyright is not a part of his regular duties even if 

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th the e empl employ oyee ee uses uses th the e ti time me,, fa faci cili liti ties es an and d mate materi rial alss of th the e employer. b. The e empl mploye oyer, r, if the the work work is the result of the performance of his re reg gular ularly ly-a -ass ssig igne ned d du duti ties es,, unle unless ss th ther ere e is an ag agre reeme ement nt,, express or implied, to the contrary. 4.   In the case of a work commis commissio sioned ned 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 the pers person on who who so co commi mmiss ssion ioned ed th the e work shall have ownership of the work, but the copyri copyright ght theret thereto o shall shall remain remain with with the the crea creato torr, unl nles esss ther there e is a written stipulation to the contrary; 5.   In th the e case case of au audi diov ovis isua uall wo work rk,, th the e copyri cop yright ght shall shall belong belong to the produc producer, er, the author of the scenario, the composer of the music, the film director, and the author of the work so adapted. Howeve How ever, r, subjec subjectt to contra contrary ry or other other st stip ipul ulat atio ions ns among among th the e crea creato tors rs,, th the e producer shall exercise the copyright to an extent required for the exhibition of  the work in any manner, except for the rig right ht to col collec lectt perfor performin ming g licens license e fees fees for the performance of musical co comp mposi ositi tion ons, s, wi with th or wi with thou outt word words, s, which are inc which incorp orpora orated ted int into o the work; work; and 6.   In respect respect of letters, letters, the copyrig copyright ht shall belon elong g to th the e writ writer er subj subjec ectt to th the e pr prov ovis isio ions ns of Arti Articl cle e 723 723 of th the e Ci Civi vill Code.  Anonymous and Pseudonymous Works The publishers shall be deemed to represent the authors of articles and other writings published wi with thou outt th the e name namess of th the e au auth thor orss or un unde derr pseudo pse udonym nyms, s, unless unless the contrar contrary y appear appears, s, or th the e pseu pseudo dony nyms ms or ad adop opte ted d na name me le leav aves es no doubt as to the author's identity, or if the author of the anonymous works discloses his identity. Transfer and Assignment Transferability of Copyright The copyri copyrigh ghtt may may be as assi sign gned ed in whol whole e or in part. par t. Within Within the scope scope of the assignmen assignment, t, the as assi sign gnee ee is enti entitl tled ed to all all th the e righ rights ts and and remedies which the assignor had with respect to the copyright. The sub submis mission sion of a lit litera erary, ry, pho photog tograp raphic hic or ar arti tist stic ic work work to a ne news wspa pape per, r, maga magazi zine ne or periodical for publication shall constitute only a li lice cens nse e to make make a si sing ngle le publ publica icati tion on unle unless ss a greater right is expressly granted. If two (2) or more mo re pe pers rson onss jo join intl tly y own own a co copy pyri righ ghtt or an any y pa part rt th ther ereo eof, f, neit neithe herr of the the owne owners rs sh shal alll be en enti titl tled ed to gr gran antt lice licens nses es wi with thou outt th the e pr prio iorr written consent of the other owner or owners.

itself constitute a transfer of the material object. No Norr sh shal alll a tran transf sfer er or as assi sign gnme ment nt of the the so sole le co copy py or of on one e or severa severall co copi pies es of the the wo work  rk  imply transfer or assignment of the copyright. Form and Recording of Assignment The co copy pyri righ ghtt is no nott deeme deemed d as assi sign gned ed in inte terr vivo vivoss in whol whole e or in par artt un unle less ss ther there e is a written writt en indication indication of such intention.  An assignment or exclusive license may be filed in dupl duplic icat ate e wi with th the the Na Nati tion onal al Li Libr brar ary y up upon on payment of the prescribed fee for registration in books boo ks and record recordss kept kept for the purpos purpose. e. Upon Upon reco record rding ing,, a co copy py of the the in inst stru rume ment nt shal shalll be retu return rned ed to the the se send nder er wi with th a no nota tati tion on of the the fact fact of reco record rd.. No Noti tice ce of the the reco record rd sh shal alll be published in the IPO Gazette. Designation of Society The The copyr opyrig ight ht owne owners rs or thei theirr heirs eirs may may de desi sign gnat ate e a soc society iety of ar arti tist stss, writ writer erss or composers to enforce their economic rights and moral rights on their behalf. Limitations on Copyright Limitations on Copyright 1. The rrecita ecitation tion or or performa performance nce of a work, work, once it has been lawfully made accessible to the public, if done privately and free of charge or if made stri strict ctly ly fo forr a char charit itab able le or reli religi giou ouss institution or society; 2. The making of quotations from a publis pub lished hed work work if they they are com compat patibl ible e wi with th fa fair ir us use e an and d only only to the the ex exte tent nt  justified for the purpose, including quotations quota tions from newspaper newspaper articles articles and periodicals in the form of press summar sum maries ies:: Pro Provid vided, ed, Tha Thatt the sou source rce and the name of the author, if   appearing on the work, are mentioned. "Published works" means works, which, with wi th the the co conse nsent nt of the the au auth thor ors, s, ar are e made available to the public by wire or wire wirele less ss me mean anss in such such a way way that that memb me mber erss of the the pu pub bli licc ma may y ac acce cess ss the hese se work workss fro rom m a plac place e and and time time indivi ind ividua dually lly chosen chosen by them: them: Provid Provided, ed, That availability of such copies has been suc uch, h, as to satis atisffy the the reas reason onab ablle requ requir irem emen ents ts of the the publ public ic,, ha havi ving ng regard to the nature of the work. 3. Th The e repr reprod oduc ucti tion on or co comm mmuni unica cati tion on to the public by mass media of articles on curr curren entt poli politi tica cal, l, so soci cial al,, ec econ onom omic ic,, sc scie ienti ntifi ficc or reli religi giou ouss to topi pic, c, lect lectur ures es,, addresses and other works of the same nature nat ure,, which which are delivere delivered d in public public if  su such ch use use is fo forr in info form rmat atio ion n purp purpose osess and has not been been expres expressly sly res reserv erved: ed: Pr Prov ovid ided ed,, Th That at the the sour source ce is cl clea earl rly y indicated.

Copyright is Distinct Copyright Distinct from Material Object The copyright is distinct from the property in the

"Reproduction" is the making of one (1)

material materi al object subject subject to it. Consequentl Consequently, y, the transfer or assignment of the copyright shall not

or more more co copi pies es of a work work or a so soun und d recording in any manner or form.

Intellectual Property Law Notes

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4. The rep reprod roduct uction ion and commun communicat ication ion to the public of literary, scientific or artistic work wo rkss as pa part rt of repo report rtss of curr curren entt even events ts by mean meanss of ph phot otog ogrraphy aphy,, cinematogra cinem atography phy or broadcasting broadcasting to the extentt necessary exten necessary for the purpose. 5. The in inclus clusion ion of a work work in a publicat publication ion,, broadc bro adcast ast,, or other other communi communicat cation ion to the the publ public, ic, so sound und reco record rding ing or film film,, if  such inclusion is made by way of  illustration for teaching purposes and is compatible with fair use: Provided, That the sou ourc rce e and and of th the e na name me of th the e au auth thor or,, if ap appe pear arin ing g in th the e work work,, are are mentioned. 6. The recording made in schools, universitie unive rsities, s, or educational educational institution institutionss of a work work in incl clude uded d in a br broa oadc dcas astt for for the use of such such school schools, s, univer universit sities ies or educational educa tional institutions institutions:: Provided, Provided, That such recording must be deleted within a reason rea sonabl able e period period after after the they y were were first first broadcast: broad cast: Provided, Provided, further, further, That such recording may not be made from audiovisual works which are part of the gene genera rall cine cinema ma repe repert rtoi oire re of feat featur ure e film filmss ex exce cept pt for for brie brieff ex exce cerp rpts ts of th the e work. 7. The mak making ing of epheme ephemeral ral recor recordin dings gs by a broadc broadcast asting ing organi organizat zation ion by means means of it itss own own fa faci cili liti ties es an and d for for us use e in it itss own broadcast. 8. The use use made made of a wor work by or unde underr the direction or control of the Government, by the National Library or by educational, scientific or professional inst instit itut utio ions ns wher where e su such ch us use e is in th the e public pub lic int intere erest st and is compat compatibl ible e with with fair use. 9. T he he public performance or the communication to the public of a work, in a pl plac ace e wher where e no ad admi miss ssio ion n fee fee is cha harg rged ed in respe espect ct of suc such pu publ blic ic perf perfor orma manc nce e or co comm mmuni unica cati tion on,, by a cl club ub or inst instit itut utio ion n for for char charit itab able le or educational purpose only, whose aim is not profit making, subject to such other li limi mita tati tion onss as may be prov provid ided ed in th the e Regulations. "Commu ommuni nica cati tion on to th the e pu publ blic ic"" 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 the hese se work workss from rom a pl plac ace e an and d ti time me individually chosen by them. 10. Public display of the original or a copy of the work work not made made by mean meanss of a film, slide, television image or otherwise on scre screen en or by me mean anss of an any y ot othe herr device or process: Provided, That either the the work work ha hass been been publ publis ished hed,, or, or, th that at the the or orig igin inal al or th the e co copy py di disp spla laye yed d ha hass be been en so sold ld,, gi give ven n away away or othe otherw rwis ise e tr tran ansf sfer erre red d to an anot othe herr pe pers rson on by th the e author or his successor in title.

Intellectual Property Law Notes

11. Any use made of a work for the purpose of an any y ju judi dicia ciall proc procee eedi dings ngs or fo forr the the giving giv ing of profes professio sional nal advice advice by a legal legal practitioner. Fair Use The fair use of a copyrighted work for criticism, comment com ment,, news news report reporting ing,, teachi teaching ng inc includi luding ng multiple multip le copies copies for classroom use, schola scholarship rship,, rese resear arcch, an and d simi simila larr pu purp rpos oses es is no nott an infringement of copyright. Decompilation, which is understood here to be the reproduction of the code code and and tran transl slat atio ion n of the the for forms of the the comp comput uter er pro rogr gram am to achi achiev eve e the the in inte terroper operab abiili lity ty of an in inde dep pende endent ntly ly cr crea eate ted d co comp mput uter er pr prog ogra ram m wi with th othe otherr prog progra rams ms may may also constitute fair use. In determining whether the use made of a work in any particular case is fair fair us use, e, the the fa fact ctor orss to be co cons nsid ider ered ed sh shal alll include: a. Th The e pu purp rpos ose e an and d ch char arac acte terr of the use, use, inc nclu lud din ing g whet whethe herr such such use is of a commer com mercial cial nature nature or is for non-pro non-profit fit educational purposes; b. The na natur ture e of the copyr copyrigh ighted ted work; work; c. Th The e amou amount nt an and d su subs bsta tant ntia iali lity ty of the the portion used in relation to the copyrighted work as a whole; and d. The ef effec fectt of the use use upon the the potenti potential al market mar ket for or value value of the copyright copyrighted ed work. PLAGIARISM conc concer erne ned d wi with th the the un unea earn rned ed in incr crem emen entt to the the plag plagia iarrizin izing g au auth thor or’s ’s repu reputa tati tion on that is achieved th thro rough ugh fa fals lse e cl clai aims ms of authorship.

 

COPYRIGHT INFRINGEMENT  Violation of the rights of the copyright holder, when wh en the the ma mate teri rial al is used without the copyright holder’s consent.

Copyright Copyr ight in Work of Architecture Architecture Copyright in a work of architecture shall include the right to control the erection of any building whic wh ich h repr reprod oduc uces es the the wh whol ole e or a subs substa tant ntia iall part of the work either in its original form or in any form recognizably derived from the original: Provid Pro vided, ed, That the copyrigh copyrightt in any such work  work  shal shalll no nott in incl clu ude the the ri righ ghtt to co cont ntro roll the the reconstruction or rehabilitation in the same style as the the or orig igin inal al of a bu buil ildi ding ng to whic which h that that copyright relates. Reproduction of Published Work  The private reproduction of a published work in a single single copy, where where the repro reproduc ductio tion n is made made by a natural person exclusively for research and pri privat vate e study, study, shall shall be per permit mitted ted,, wit withou houtt the author aut horiza izatio tion n of the owner of copyri copyright ght in the work. The permission granted under Subsection 187.1 shall not extend to the reproduction of: a. A wo work rk of ar arch chit itec ectu ture re in the the fo form rm of  building or other construction; b. An en enti tire re book book,, or a su subs bsta tant ntia iall part part thereof, or of a musical work in graphic form by reprographic means;

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c.

A compilation of data and other materials; d. A comp computer uter progr program am except except as provid provided ed in Section 189; and e. Any Any work work in ca case sess wher where e repr reprod oduc ucti tion on woul wo uld d unre unreas ason onab ably ly conf confli lict ct wi with th a nor orma mall ex expl ploi oittat atio ion n of th the e wo work rk or would otherwise unreasonably prejudice the legitimate interests 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 reprographic reproduction: reproduction: a. Wher Where e the work work by reaso reason n of it itss frag fragil ile e ch char arac acte terr or rari rarity ty ca cann nnot ot be le lent nt to user in its original form; b. Wh Wher ere e the the work workss are are is isol olat ated ed arti articl cles es contai con tained ned in compos composite ite works works or bri brief  ef  portio por tions ns of other other publis published hed works works and the reproduction is necessary to supply them, when this is considered expedient, to pe pers rson onss requ reques esti ting ng th thei eirr loan loan for for purposes of research or study instead of  lendin len ding g the vol volumes umes or bookle booklets ts which which contain them; and c. Wher Where e the maki making ng of such such a copy copy is in order ord er to preser preserve ve and and,, if necess necessary ary in the the ev even entt th that at it is lost lost,, dest destro roye yed d or rendered render ed unusabl unusable, e, replac replace e a copy, copy, or to replac replace, e, in the perman permanent ent col collect lection ion of anothe anotherr simila similarr librar library y or archiv archive, e, a copy which has been lost, destroyed or render ren dered ed unusabl unusable e and copies copies are not available with the publisher. It shall not be permissible to produce a volume of a work work publ publis ished hed in se seve vera rall volu volume mess or to produc pro duce e missin missing g tom tomes es or pages pages of magazi magazines nes or simi simila larr work works, s, unle unless ss th the e vo volu lume, me, tome tome or part is out of stock: Provided, That every library which, by law, is entitled to receive copies of a prin printe ted d work work,, sh shal alll be en enti titl tled ed,, when when sp spec ecia iall reas reason onss so re requ quir ire, e, to repr reprod oduc uce e a co copy py of a publis pub lished hed work work which which is consid considere ered d necess necessary ary for the collection of the library but which is out of stock. Reproduction of Computer Program The re repr prod oduct uctio ion n in on one e (1) (1) back back-u -up p copy copy or ad adap apta tati tion on of a comp comput uter er pr prog ogra ram m sh shal alll be pe perm rmit itte ted, d, wi with thou outt th the e au auth thor oriz izat atio ion n of th the e au auth thor or of of,, or ot othe herr owne ownerr of copy copyri righ ghtt in in,, a computer program, by the lawful owner of that comput com puter er progra program: m: Pro Provid vided, ed, That That the copy copy or adaptation is necessary for: a. The The use use of the comp comput uter er pr prog ogra ram m in co conj njunc uncti tion on wi with th a co comp mput uter er for for th the e purp purpos ose, e, an and d to th the e ex exte tent nt,, for for wh whic ich h the comput mpute er program has been obtained; and b. Archival purposes, and, for the replacement of the lawfully owned copy of the compute computerr progra program m in the event event thatt the lawfu tha lawfully lly obtain obtained ed copy copy of the computer comput er program is lost, destroyed destroyed or rendered unusable.

Intellectual Property Law Notes

No copy or adaptation mentioned in this Section shal shalll be used used fo forr an any y purp purpose ose othe otherr than than the the ones determined in this Section, and any such co copy py or ad adap apta tati tion on shal shalll be dest destro roye yed d in the the event that continued possession of the copy of  the computer program ceases to be lawful.  A "computer" is an electronic or similar device having information information-proce -processing ssing capabilitie capabilities, s, and a "c "comp omput uter er prog progra ram" m" is a se sett of in inst stru ruct ctio ions ns expres exp ressed sed in words, words, codes, codes, scheme schemess or in any other form, which is capable when incorporated in a medi medium um that that the the comp comput uter er can can read read,, of  causin cau sing g the comput computer er to perfor perform m or achiev achieve e a particular task or result. Importation of Copyrighted Work  The The impor mporta tati tion on of a co copy py of a work work by an in indi divi vidu dual al fo forr hi hiss pers person onal al pu purp rpos oses es shal shalll be perm permit itte ted d wi with thou outt the the au auth thor oriz izat atio ion n of the the au auth thor or of of,, or othe otherr owne ownerr of copy copyri righ ghtt in in,, the the work under the following circumstances: a. When copies of the work are not available avail able in the Philippines Philippines and: i. Not Not mor more e th than on one e (1) (1) co copy py at one time is imported for strictly individual use only; or ii. ii. Th The e impo import rtat atio ion n iiss by by au auth thor orit ity y of and for the use of the Philippine Government; or iii. iii.

The The impo import rtat atio ion, n, consi consist stin ing g of  no nott mo more re than than thre three e (3 (3)) su such ch copies or likenesses in any one in invo voic ice, e, is no nott fo forr sale sale but but fo forr the the use use on only ly of an any y reli religi giou ous, s, ch char arit itab able le,, or edu educa cati tion onal al society or institution duly incorporated or registered, or is fo forr the the encou encoura rage geme ment nt of the the fine arts, or for any state school, co colllege lege,, uni nive vers rsit ity y, or free ree publicc library publi library in the Philippines. Philippines.

Importation of work without authorizati Importation authorization on may also be allowed when such copies form parts of  libr librar arie iess an and d pers person onal al bagg baggag age e belo belong nging ing to pe pers rson onss or fami amili lies es ar arrrivin iving g from for orei eign gn coun countr trie iess and and ar are e no nott inten ntende ded d for sal sale: Provided, That such copies do not exceed three. Copies imported as allowed by this Section may not lawfully be used in any way to violate the rights rights of owner owner the copyr copyrigh ightt or annul annul or limit th the e prot protec ecti tion on se secu cure red d by this this Ac Act, t, an and d such such unlawf unl awful ul use sha shallll be deemed deemed an inf infrin ringem gement ent an and d shal shalll be pu puni nish shab able le as such such with withou outt prejudice to the proprietor's right of action. Moral Rights Scope The author of a work shall, independently of the economic rights in Section 177 or the grant of  an assign assignment ment or licens license e with with respec respectt to such such right, have the right: 1. To requ requir ire e that that the the au auth thor orsh ship ip of the the works be attributed to him, in particular, the right that his name, as far as practicable, be indicated in a prominent

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way way on th the e co copi pies es,, an and d in co conn nnec ecti tion on with the public use of his work; 2. To make make an any y al alte tera rattions ions of his work  work  prior to, or to withhold it from publication; 3. To obj object ect to any disto distorti rtion, on, mutila mutilatio tion n or other modification of, or other de dero roga gato tory ry acti action on in rela relati tion on to to,, hi hiss work wor k which which would would be prejud prejudici icial al to his honor or reputation; and 4. To restr restrai ain n th the e us use e of his name name wi with th respe espect ct to any any work work no nott of his own own creation or in a distorted version of his work. Waiver  An author may waive his rights mentioned in Se Sect ctio ion n 19 193 3 by a wr writ itte ten n in inst stru rume ment nt,, bu butt no such waiver shall be valid where its effects is to permit another: 1. To use use th the e na name me of the auth author or,, or th the e title of his work, or otherwise to make use of his reputation with respect to any version or adaptation of his work which, becaus bec ause e of alt altera eratio tions ns therei therein, n, would would substa sub stanti ntiall ally y tend tend to inj injure ure the lit litera erary ry or artistic reputation of another author; or 2. To us use e the the nam ame e of the the au auttho horr wi with th respect to a work he did not create. Right of Attribution in a Collective Work   A    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 wit h the underst understand anding ing that that it will will be dis disclo closed sed by th the e la latt tter er unde underr hi hiss own own na name me an and d th that at cont contri ribu buti ting ng na natu turral pe pers rson onss wi will ll no nott be identified. When an author contributes to a collective work, his right right to have have his contri contributi bution on att attrib ribute uted d to hi him m is de deem emed ed wa waiv ived ed un unle less ss he ex expr pres essl sly y reserves it. Ed Edit itin ing, g, Ar Arra rang ngin ing, g, an and d Adap Adapta tati tion on of  Work  In the absence of a contrary stipulation at the time tim e an author author licens licenses es or permit permitss anothe anotherr to use his work, work, the necess necessary ary editin editing, g, arrang arranging ing or ad adap apta tati tion on of su such ch work work,, for for publ public icat atio ion, n, broadcast, use in a motion picture, dr dram amat atiz izat atio ion, n, or mech mechan anic ical al or el elec ectr tric ical al reproduction in accordance with the reasonable and customary standards or requirements of the medium in which the work is to be used, shall not be deemed to contravene the author's rights se secu cure red d by th this is ch chap apte ter. r. No Norr sh shal alll co comp mple lete te destruction of a work unconditionally transferred by the author be deemed to violate such rights. Term of Moral Rights The rights of an author under this chapter shall la last st duri during ng the the li life feti time me of th the e au auth thor or an and d for for fifty (50) years after his death and shall not be assignable or subject to license. The person or pe pers rson onss to be ch char arge ged d wi with th th the e post posthum humous ous enforcemen enforc ementt of these these rights rights shall be named named in writin wri ting g to be fil filed ed with with the National National Librar Library. y. In

Intellectual Property Law Notes

default of such person or pers ersons, such en enfo forc rcem emen entt sh shal alll devo devolv lve e up upon on eith either er the the author aut hor's 's hei heirs, rs, and in defaul defaultt of the heirs, heirs, the Director Direc tor of the National Library. Fo Forr pu purp rpos oses es of this this Sect Sectio ion, n, "P "Per erso son" n" shal shalll mean mea n any indivi individua dual, l, partne partnersh rship, ip, cor corpor porati ation, on, as asso soci ciat atio ion, n, or so soci ciet ety. y. The The Di Dire rect ctor or of the the National Nation al Library Library may prescribe prescribe reasonable reasonable fees to be charged for his services in the application of provisions of this Section. Breach of Contract  An author cannot be compelled to perform his contract to create a work or for the publication of his wor work k alr alread eady y in existe existence nce.. Howeve However, r, he may ma y be held held li liab able le fo forr da damag mages es fo forr brea breach ch of  such contract. Right to Proceeds in Subsequent Transfers of Copyright Sale or Lease of Work  In ev ever ery y sa sale le or leas lease e of an or orig igin inal al work work of  painting or scul ulp pture or of the original manuscript of a writer or composer, subsequent to the first disposition thereof by the author, the au auth thor or or hi hiss heir heirss shal shalll have have an in inal alie iena nabl ble e right to participate in the gross proceeds of the sale or lease to the extent of five percent (5%). Thiss right Thi right sha shallll exist exist during during the lifetime lifetime of the author and for fifty (50) years after his death. The provisions of this Chapter shall not apply to pri prints nts,, etchin etchings, gs, engrav engravings ings,, works works of applie applied d art, or works of similar kind wherein the author prim primar aril ily y deri derive vess gain gain fr from om the the proc procee eeds ds of  reproductions. Performers, Producers, as Broadcasting Organization Definition 1. "Pe "Perrfor orme mers rs"" ar are e ac acto tors rs,, sin inge gers rs,, musicia mus icians, ns, dancer dancers, s, and other other per person sonss who act, sing, declaim, play in, interpret, or otherwise perform literary and artistic work; 2. "So "Sound und recor recordin ding" g" means means the fixati fixation on of  the sounds of a performance or of other sound so unds, s, or repr repres esen enta tati tion on of so soun und, d, othe ot herr than than in the the fo form rm of a fi fixa xati tion on in incor corpo pora rate ted d in a ci cine nema mato togr grap aphic hic or other audiovisual work; 3. An "aud "audio iovi visu sual al work work or fi fixa xati tion on"" is a work that consists of a series of related images ima ges whi which ch impart impart the impres impressio sion n of  motion mot ion,, with with or withou withoutt acc accomp ompany anying ing so soun unds ds,, su susc scep epti tibl ble e of bein being g made made visi visibl ble e an and, d, wher where e ac acco comp mpan anie ied d by so soun unds ds,, su susc scep epti tibl ble e of bein being g made made audible; 4. "Fix "Fixat atio ion" n" mean meanss the the embo embodi dime ment nt of  sou ound nds, s, or of the the repr repres esen enta tati tion onss thereof, from which they can be perceived, reproduced or communicated through a device; 5. "Pr "Produc oducer er of a sound sound recordi recording" ng" means means the person, person, or the legal legal entity, entity, who or which whic h take takess the the in init itia iati tive ve an and d has has the the responsibility for the first fixation of the

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6.

7.

8.

9.

sou ound ndss of a pe perf rfor orma manc nce e or othe otherr sounds, or the representation of sounds; "Pu "Publi blicat cation ion of a fixed fixed perform performance ance or a sound recording" means the offering of  copies cop ies of the fixed performa performance nce or the sound recording to the public, with the consen con sentt of the right right holder holder:: Provid Provided, ed, That copies are offered to the public in reasonable quality; "Broa "Broadcas dcastin ting" g" means means the tra transm nsmiss ission ion by wireless means for the public recept rec eption ion of sounds sounds or of images images or of  representations thereof; such transmission by satellite is also "b "bro road adcas casti ting ng"" wher where e th the e mean meanss for for decrypting are provided to the public by the broadcasting organization or with its consent; "Broad roadca cassti ting ng orga organi nizzat atio ion" n" shal shalll inclu include de a na natu tura rall pe pers rson on or a ju juri ridi dica call enti entity ty duly duly au auth thor oriz ized ed to en enga gage ge in broadcasting; and "Commu ommuni nica cati tion on to th the e pu publ blic ic of a pe perf rfor orma manc nce e or a so soun und d reco record rdin ing" g" means mea ns the tra transm nsmiss ission ion to the public public,, by any any medi medium um,, othe otherw rwis ise e tha han n by broadcasting, of sounds of a perfor per forman mance ce or the repres represent entati ations ons of  sounds sou nds fix fixed ed in a sound sound record recording ing.. For purposes of Section 209, "communication "communicati on to the public" public" includes includes making the sounds or representations of  sou ound ndss fix ixed ed in a sou sound reco recorrdi ding ng audible to the public.

Scope of Performers’ Right Perfor Per former merss shall shall enjoy enjoy the follow following ing exclus exclusive ive rights: 1. As rega regards rds their their perfor performan mances ces,, the right of authorizing: a. The The br broa oadc dcas asti ting ng an and d othe otherr commun com municat ication ion to the public public of  their performance; and b. The The fixati xation on of th thei eirr un unfi fixe xed d performance. 2. The The ri righ ghtt of au auth thor oriz izin ing g th the e di dire rect ct or indirect reproduction of their performances fixed in sound recordings, in any manner or form; 3. Sub Subjec jectt to the provis provision ionss of Section Section 206, 206, the right right of author authorizi izing ng the first first public public distribution of the original and copies of  thei theirr pe perf rfor orma manc nce e fixe fixed d in th the e so sound und recording through sale or rental or other formss of transfer of ownership; form ownership; 4. The rig right ht of authoriz authorizing ing the commer commercia ciall rental ren tal to the public public of the original original and co copi pies es of th thei eirr perf perfor orma mance ncess fixe fixed d in sound recordings, even after distribution of them by, or pursuant to the authorization by the performer; and 5. The The ri righ ghtt of au auth thor oriz izin ing g th the e maki making ng available to the public of their performances fixed in sound recordings, by wi wire re or wi wire rele less ss mean means, s, in su such ch a way way th that at membe members rs of th the e publ public ic ma may y acce access ss th them em from rom a pl plac ace e an and d ti time me individually chosen by them.

Intellectual Property Law Notes

Moral Rights of Performers Independently of a performer's economic rights, the per perfor former mer,, sha shall, ll, as regard regardss his live live aur aural al perfor per forman mances ces or perfor performan mances ces fix fixed ed in sound sound reco recorrding dings, s, ha have ve the the ri righ ghtt to cl clai aim m to be identified as the performer of his performances, ex exce cept pt wh wher ere e the the omis omissi sion on is dict dictat ated ed by the the manner man ner of the use of the perfor performan mance, ce, and to ob obje ject ct to an any y dist distor orti tion, on, muti mutila lati tion on or othe otherr modification of his performances that would be prejudicial to his reputation. Term of Rights Granted Granted to Performer Performer The rights granted to a performer in accordance with wit h Subsec Subsectio tion n 203.1 203.1 sha shallll be mainta maintaine ined d and exercised fifty (50) years after his death, by his heirs, hei rs, and in defaul defaultt of heirs, heirs, the governmen government, t, where protection is claimed. Limitation on Right Oncce the performer has authorized the On broadcasting or fixation of his performance, the provisions of Sections 203 shall have no further application. The provisio provisions ns of Sectio Section n 184 and Sectio Section n 185 shall apply mutatis mutandis to performers.  Additional Remuneration for Subsequent Communications or Broadcasts Unless oth Unless otherw erwise ise pro provid vided ed in the con contra tract, ct, in every communication to the public or broadcast of a pe perrfor orma manc nce e subs subseq eque uent nt to the the fir irsst co comm mmuni unica cati tion on or br broa oadc dcas astt ther thereo eoff by the the broadcasting broadc asting organizatio organization, n, the perfo performer rmer shall be en enti titl tled ed to an addi additi tion onal al remu remune nera rati tion on equiva equ ivalent lent to at least least fiv five e percen percentt (5% (5%)) of the original compensation he or she received for the first communication or broadcast. Scop Scope e of Righ Rightt of Pr Prod oduc ucer ers s of Soun Sound d Recordings Su Subj bjec ectt to the the pr prov ovis isio ions ns of Se Sect ctio ion n 212, 212, produc pro ducers ers of sound sound record recording ingss sha shallll enjoy enjoy the following exclusive rights: 1. The ri righ ghtt to auth author oriz ize e the the dir direct ect or in indi dire rect ct repr reprod oduc ucti tion on of thei theirr so sound und recordings, in any manner or form; the plac placin ing g of thes these e repr reprod oduct uctio ions ns in the the market and the right of rental or lending; 2. Th The e ri righ ghtt to author authoriz ize e the the fi firs rstt publ public ic distribution of the original and copies of  their the ir sound sound record recording ingss thr throug ough h sale sale or rent rental al or othe otherr fo form rmss of tr tran ansf sfer erri ring ng ownership; and 3. Th The e ri righ ghtt to au auth thor oriz ize e the the co comm mmer erci cial al rental ren tal to the public public of the ori origin ginal al and copies cop ies of their their sound sound rec record ording ings, s, even even after distribution by them by or pursuan antt to au autthorization by the producer. Communication Communicatio n to the Public If a sou sound nd record recording ing publis published hed for commer commercia ciall purp purpos oses es,, or a repr reprod oduc ucti tion on of su such ch so soun und d record rec ording ing,, is use used d dir direct ectly ly for broadc broadcast asting ing or for for othe otherr co commu mmuni nicat catio ion n to the the pu publ blic ic,, or is publicly performed with the intention of making an and d enha enhanc nciing pr prof ofit it,, a sing single le equi equittable able

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remuneratio remune ration n for the performer performer or performers performers,, and the produc producer er of the sound record recording ing shall shall be paid by the user to both the performers and th the e pr prod oduc ucer er,, who, who, in th the e abs absence ence of an any y agreement shall share equally. Limitation of Right of Producers of Sound Recordings Se Sect ctio ions ns 18 184 4 and and 185 185 shal shalll appl apply y mu muta tati tiss mutandis to the producer of sound recordings. Scope of Right of Broadcasting Organizations Su Subj bjec ectt to the the pr prov ovis isio ions ns of Se Sect ctio ion n 212, 212, broa broadc dcas asti ting ng or orga gani niza zati tion onss sh shal alll en enjo joy y th the e exclusive right to carry out, authorize or prevent any of the following acts: 1. The rebroa rebroadcasti dcasting ng of their broadcasts broadcasts;; 2. The rec record ording ing in any manner manner,, includin including g the making of films or the use of video tap ape e, of their broadcasts for the purpose of communication to the public of te tele levi visi sion on br broa oadc dcas asts ts of th the e sa same; me; and 3. The use of such records for fresh transmissions or for fresh recording.

In cas case e of works works of applie applied d art the protec protectio tion n shallll be for a period sha period of twenty twenty-fi -five ve (25) years from the date of making. In case of Photographic Photographic Works In cas case e of photog photograp raphic hic works, works, the pro protec tectio tion n shall be for fifty (50) years from publication of  th the e wo work rk an and, d, if un unpu publ blis ished hed,, fi fift fty y (50) (50) year yearss from the making. In case of Audiovisual Works In case case of audioaudio-vis visual ual works works inc includ luding ing those those produced by process analogous to photography or any process for making audio-visual reco record rding ings, s, the the term term shal shalll be fi fift fty y (50) (50) ye year arss from from date date of publ public icat atio ion n an and, d, if un unpub publi lish shed ed,, from the date of making. Circulation of Term Circulation The term of protection subsequent to the death of the author provided in the preceding Section shal shalll run run from the the da date te of hi hiss de deat ath h or of  pu publ blic icat atio ion, n, bu butt su such ch term termss shal shalll al alwa ways ys be deemed to begin on the first day of January of  the year following the event which gave rise to them.

Limitations on Protection Sections 203, 208 and 209 shall not apply where the acts referred to in those Sections are related

Term of Protection Producers, and Organizations

to:

The rights granted to performers and producers of sound recordings under this law shall expire: a. Fo Forr perf perfor orma mance ncess not not in inco corp rpor orat ated ed in recordings, fifty (50) years from the end of the the year year in whic which h the the perf perfor orma manc nce e took place; and b. For sound or image and sound recor ecord din ings gs and and for pe perrfor orma manc nces es in incor corpo pora rate ted d ther therei ein, n, fi fift fty y (5 (50) 0) year yearss from the end of the year in which the recording took place.

1. The us use e by a natural natural person person exclusi exclusivel vely y for his own personal purposes; 2. Using ing sho hort rt exce excerrpt ptss for repo reporrti ting ng current events; 3. Us Use e so sole lely ly for the purp purpos ose e of teac teachi hing ng or for scientific research; and 4. Fai Fairr use of the the broadca broadcast st subjec subjectt to the conditions condit ions under Section Section 185.

Term of Copyright Term of Protection The copyright in works under Sections 172 and 17 173 3 sh shal alll be pr prot otec ecte ted d du duri ring ng th the e li life fe of th the e author aut hor and for fifty fifty (50) (50) yea years rs after after his death. death. This rule also applies to posthumous works. In case of Joint Authorship In ca case se of wor works of join jointt au auth thor orsh ship ip,, th the e economi eco nomicc rights rights shall shall be pro protec tected ted during during the life of the last surviving author and for fifty (50) years after his death. In cas case e of Anonym Anonymous ous or Pseudo Pseudonym nymous ous Works In case of anonymous or pseudonymous works, the copyri copyright ght shall shall be protec protected ted for fifty (50) (50) years from the date on which the work was first lawfully published: Provided, That where, before the expira expiratio tion n of the said said period period,, the author's author's identity is revealed or is no longer in doubt, the provisions of Subsections 213.1. and 213.2 shall apply, app ly, as the case may be: Provid Provided, ed, furthe further, r, That such works if not published before shall be protected for fifty (50) years counted from the making of the work. In case of Works of Applied Art

Intellectual Property Law Notes

for

Performers, Broadcasting

In case of broadcasts, the term shall be twenty (20)) year (20 yearss fr from om the the da date te the the broa broadc dcas astt to took  ok  place. The extended term shall be applied only to old works works with with subsist subsisting ing protec protectio tion n under under the prior law. Remedies Against Infringement Civil Action  Any person infringing a right protected under this law shall be liable: a. To an injuncti ction restraining such infringement. The court may also order the defendant to desist from an infringement, among others, to prevent the entry into the channels of   comme ommerrce of impo import rted ed go good odss that that involv inv olve e an inf infrin ringem gement ent,, imm immedi ediate ately ly after customs clearance of such goods. b. Pay Pay to the the co copy pyri righ ghtt pr prop opri riet etor or or hi hiss assign ass ignss or heirs heirs such actual actual damage damages, s, including legal costs and other expenses, as he ma may y ha have ve in incu curr rred ed due due to the the inf infrin ringem gement ent as well well as the profits profits the in infr frin inge gerr may may have have made made due due to such such infringement, and in proving profits the plaintiff shall be required to prove sales only and the defendant shall be

Page  23

 

required to prove every element of cost whic wh ich h he clai claims ms,, or, or, in lieu lieu of ac actu tual al damag damages es an and d prof profit its, s, su such ch da damag mages es whic wh ich h to the the court court shall shall ap appe pear ar to be  just and shall not be regarded as penalty. c. Deli Delive verr unde underr oa oath th,, for for impo impoun undi ding ng during the pendency of the action, upon such terms and conditions as the court may prescribe, sales invoices and other documents docume nts evidencing evidencing sales, sales, all articles articles and their packaging alleged to infringe a copyri cop yright ght and implem implement entss for making making them. d. Del eliv iver er un unde derr oath oath for de dest stru ruct ctio ion n without witho ut any compensation compensation all infringing infringing copies or devices, as well as all plates, molds, or other means for making such infringing copies as the court may order. e. Such other terms and conditions, incl includ udin ing g th the e pa paym ymen entt of mora morall an and d ex exem empl plar ary y da dama mage ges, s, whic which h th the e co court urt may deem deem proper proper,, wise wise and equita equitable ble and the destruction of infringing copies of the work even in the event of   acquittal in a criminal case. In an inf infrin ringem gement ent action action,, the court court shall shall also also ha have ve the po powe werr to orde orderr th the e sei eizu zure re and and impound imp ounding ing of any art articl icle e which which may serve as evidence in the court proceedings. Criminal Penalties  Any person infringing any right secured by pr prov ovis isio ions ns of Pa Part rt IV of th this is Act Act or ai aidi ding ng or abetti abe tting ng such such inf infrin ringem gement ent shall shall be guilty guilty of a crime punishable by: a. Impr Impris isonm onmen entt of one (1) ye year ar to th thre ree e (3) years plus a fine ranging from Fifty tho hous usan and d pe peso soss (P (P50 50,0 ,000 00)) to One One hundred fifty thousand pesos (P150,000) for the first offense. b. Impr Impris ison onme ment nt of th thre ree e (3) (3) year yearss an and d one (1) day to six (6) years plus a fine ranging from One hundred fifty th thou ousa sand nd pe peso soss (P15 (P150, 0,00 000) 0) to Fi Five ve hundred thousand pesos (P500,000) for the second offense. offense. c. Impr Impris isonm onmen entt of six (6) years years and one (1) (1) day day to ni nine ne (9) (9) year yearss pl plus us a fine fine ra rang ngin ing g fr from om five five hu hundr ndred ed th thous ousan and d peso pesoss (P50 (P500,0 0,000 00)) to One One mill millio ion n five five hundre hun dred d thousan thousand d pesos pesos (P1,500 (P1,500,000 ,000)) for the third and subsequent offenses. d. In all case cases, s, subsidia subsidiary ry impriso imprisonmen nmentt in cases of insolvency. In determining the number of years of  imprisonment and the amount of fine, the court shal shalll con onsi side derr the the value alue of th the e in infr frin ingi ging ng materi mat erials als that the def defend endant ant has produc produced ed or manufactured and the damage that the copyri cop yright ght owner has suf suffer fered ed by reason reason of the infringement.

an infringing copy of the work for the purpose of: a. Se Sell llin ing, g, lett lettin ing g fo forr hi hire re,, or by wa way y of  tra trade de off offeri ering ng or exposi exposing ng for sale, or hire, the article; article; b. Di Dist stri ribut butin ing g the the ar arti ticl cle e fo forr purp purpos ose e of  trad trade, e, or fo forr an any y othe otherr pu purp rpose ose to an extent ext ent that that will will prejud prejudice ice the rights rights of  the copyright owner in the work; or c. Tr Trad ade e ex exhi hibi bitt of the the ar arti ticl cle e in publ public ic,, shall be guilty of an offense and shall be liable on conviction to imprisonment and fine as above mentioned. mentioned.  Affidavit Evidence  An affidavit made before a notary public by or on behalf of the owner of the copyright in any work or other subject matter and stating that: a. At the time specifi specified ed therein therein,, copyright copyright subsist sub sisted ed in the work work or other other subject subject matter; b. He or the per perso son n named named ther therei ein n is the the owner of the copyright; and c. Th The e copy copy of the work work or othe otherr su subj bjec ectt matter mat ter annex annexed ed theret thereto o is a tru true e cop copy y thereof, shall be admitted in evidence in any procee proceedin dings gs for an off offens ense e und under er this this Chap Chapte terr an and d shal shalll be pr prim ima a fa faci cie e proof of the matters therein stated until the the co contr ntrar ary y is prov proved ed,, an and d the the co cour urtt before which such affidavit is produced sh shal alll as assu sume me that that the the af affi fida davi vitt wa wass made by or on behalf of the owner of  the copyright. Presumption In an action under this Chapter: a. Copyri Copyright ght shall shall be presumed presumed to subsist subsist in the work or other other subjec subjectt matter matter to which the action relates if the defendant doe oess not put in issue ssue the the qu ques esti tion on whethe whe therr copyri copyright ght subsis subsists ts in the work  work  or other subject matter; and b. Whe Where re the subsist subsistenc ence e of the copyrigh copyrightt is es esta tabl blis ishe hed, d, the the plai plaint ntif ifff sh shal alll be presumed to be the owner of the co copy pyri righ ghtt if he cl clai aims ms to be the the owne ownerr of the copyright and the defendant does not put in iss issue the the qu ques esttio ion n of hi hiss ownership. Where the defend Where defendant ant,, withou withoutt good good faith, faith, put putss in issu issue e the the ques questi tion onss of whet whethe herr co copy pyri righ ghtt subs subsis ists ts in a wo work rk or othe otherr subj subjec ectt matt matter er to whic wh ich h the the ac acti tion on rela relate tes, s, or the the owne owners rship hip of  copy copyri righ ghtt in such such work work or subj subjec ectt matt matter er,, thereby occasioning unnecessary costs or delay in the the proc procee eedi ding ngs, s, the the co cour urtt may may dire direct ct that that an any y co cost stss to the the defe defend ndan antt in resp respec ectt of the the action shall not be allowed by him and that any co cost stss oc occas casio ione ned d by the the defe defend ndan antt to othe otherr pa part rtiies shal shalll be pa paid id by him to suc uch h othe otherr parties.

Possession on Infringing Copy of the Work   Any person who at the time when copyright

Presumption of Authorship The natural person whose name is indicated on a work in the usual manner as the author shall,

su subs bsis ists ts in a work work has has in hi hiss po poss sses essi sion on an article which he knows, or ought to know, to be

in the the ab abse senc nce e of pr proo ooff to the the cont contra rary ry,, be pres presum umed ed to be the the au auth thor or of the the wo work rk.. This This

Intellectual Property Law Notes

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provision shall be applicable even if the name is a pseudonym, where the pseudonym leaves no doubt as to the identity of the author. The The pe pers rson on or body body corp corpor orat ate e whos whose e na name me appe appear arss on a au audi dioo-vi visua suall work work in th the e us usual ual mann ma nner er sh shal all, l, in th the e ab abse senc nce e of pr proo ooff to th the e contrary, be presumed to be the maker of said work. Jurisdiction Without prejudic ice e to the provisions of  Subsec Sub sectio tion n 7.1(c), 7.1(c), act action ionss under under this this Act sha shallll be co cogn gniz izab able le by th the e co cour urts ts wi with th ap appr prop opri riat ate e  jurisdiction under existing law. Prescription of Action for Damages No damage damagess may be recover recovered ed under under this this Act after four (4) years from the time the cause of  action arose. Enforcement of Moral Rights  Violation of any of the rights conferred by this Chapte Cha pterr shall shall entitl entitle e those those charge charged d with with their their enforc enf orcemen ementt to the same same rights rights and remedi remedies es avai availa labl ble e to a co copy pyri righ ghtt owne owner. r. In ad addi diti tion on,, da dama mage gess whic which h may may be av avai aile led d of unde underr th the e Civil Code may also be recovered. Any damage recovered after the creator's death shall be held in tr trus ustt fo forr an and d re remi mitt tted ed to hi hiss heir heirs, s, an and d in default of the heirs, shall belong to the government. Points of Attachment Points Poin ts of Atta Attach chme ment nt for for Work Work unde underr Sections 172 and 173 The protection afforded by this Act to co copy pyri righ ghta tabl ble e work workss unde underr Se Sect ctio ions ns 172 172 an and d 173 shall apply to: 1. Work Workss of autho authors rs who are nation national alss of, of, or have have their their habitu habitual al reside residence nce in, the Philippines; 2. Au Audi dio o-v -vis isua uall wor works the pr prod oduc ucer er of  which whi ch has his headqu headquart arters ers or hab habitu itual al residence in the Philippines; 3. Work Workss of arch archit itec ectu ture re erec erecte ted d in th the e Phili hilipp ppiine ness or othe otherr arti artist stic ic wor works inco incorp rpor orat ated ed in a bu buil ildi ding ng or othe otherr structure located in the Philippines; 4. Wor Works ks first first published published in the Philippi Philippines; nes; and 5. Wor Works ks first first publish published ed in another another country country but but al also so publ publis ished hed in th the e Ph Phil ilip ippi pines nes with within in th thir irty ty days days,, irre irresp spec ecti tive ve of th the e nationality natio nality or residence residence of the authors. The pr prov ovis isio ions ns of th this is Act Act shal shalll al also so ap appl ply y to works that are to be protected by virtue of and in accordance with any international convention or oth other er intern internati ationa onall agreem agreement ent to which which the Philippines is a party. Points of Attachment for Performers The provisio provisions ns of this this Act on the protecti protection on of  performers shall apply to: 1. Pe Perf rfor orme mers rs who who are are na nati tion onal alss of th the e Philippines;

a. Take Take place place in the the Philip Philippin pines; es; or b. Are incorporated in sound reco record rdin ings gs that that ar are e prot protec ecte ted d under this Act; or c. Which has not been fixed in sound recording but are carried by br bro oadca adcast st qu qual alif ifyi ying ng for protection prote ction under this Act. Points of Attachment for Sound Recordings The provisio provisions ns of this this Act on the protecti protection on of  sound recordings shall apply to: 1. Sou ound nd reco recorrding dingss the the pr prod oduc ucer erss of  which whi ch are nation nationals als of the Philip Philippine pines; s; and 2. Soun und d recordings that were first published in the Philippines. Points of Attachment for Broadcasts The provisio provisions ns of this this Act on the protecti protection on of  broadcasts shall apply to: a. Broadcasts of broadcasting organizations the headquarters of which are situated in the Philippines; and b. Broadcasts transmitted from transmitters situated in the Philippines. The pr prov ovis isio ions ns of this this Act shall shall al also so ap appl ply y to perf perfor ormer merss who, who, an and d to pr prod oduce ucers rs of so sound und reco record rding ingss an and d broa broadc dcas asti ting ng or orga gani niza zati tion onss which, whic h, ar are e to be pr prot otec ecte ted d by virt virtue ue of an and d in accordance with any international convention or othe otherr in inte tern rnat atio iona nall ag agre reem emen entt to whic which h the the Philippines is a party. Deposit and Notice Issuance Issuanc e of Certifi Certificate cate of Deposit Deposit  After the first public dissemination of  perf perfor orma manc nce e by au auth thor orit ity y of the the copy copyri righ ghtt owner of a work falling under Subsections 172.1, 172.2 and 172.3 of this Act, there shall, for the pu purp rpos ose e of co comp mple leti ting ng the rec recor ords ds of the National Library and the Supreme Court Library, wi with thin in thre three e (3) (3) week weeks, s, be regi regist ster ered ed an and d depo deposi site ted d wi with th it, it, by pers person onal al deli delive very ry or by regi regist ster ered ed mail mail two two (2) (2) comp comple lete te copi copies es or reprod rep roduct uction ionss of the work work in such such for form m as the di dire rect ctor orss of sa said id libr librar arie iess ma may y pr pres escr crib ibe. e. A  certif cer tificat icate e of deposi depositt sha shallll be issued issued for which which th the e pres prescr crib ibed ed fee fee shal shalll be co coll llec ecte ted d an and d the the copyri cop yright ght owner owner shall shall be exempt exempt fro from m making making additional deposit of the works with the National Librar Lib rary y and the Sup Suprem reme e Court Court Librar Library y under under ot othe herr la laws ws.. If If,, wi with thin in thre three e (3) (3) we week ekss af afte terr rece receip iptt by the the copy copyri righ ghtt owne ownerr of a wr writ itte ten n demand from the directors for such deposit, the requ requiired red co cop pies ies or repro eprod ducti uction onss ar are e no nott delivered and the fee is not paid, the copyright owner shall be liable to pay a fine equivalent to the required fee per month of delay and to pay to the National National Librar Library y and the Suprem Supreme e Court Court Library the amount of the retail price of the best edition of the work. Only the above mentioned classes of work shall be accepted for deposit by th the e Nati Nation onal al Li Libr brar ary y an and d the the Supr Suprem eme e Co Cour urtt Library.

2. Per Perfor former merss who are not not nationa nationals ls of the Philippines but whose performances:

Intellectual Property Law Notes

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Notice of Copyright Each Each co copy py of a work work publ publis ishe hed d or offe offere red d fo forr sale may contain a notice bearing the name of  th the e co copyr pyrig ight ht owne owner, r, an and d th the e ye year ar of it itss firs firstt public pub licati ation, on, and, and, in copies copies produce produced d after after the creator's death, the year of such death. Effect of Registration Registration and Deposit of Work  The The re regi gist stra rati tion on an and d de depo posi sitt of th the e work work is purely for recording the date of registration and deposit of the work and shall not be conclusive as to co copy pyri rig ght owne owners rshi hip p or th the e te term rm of  copyrights or the rights of the copyright owner, including neighboring rights. Public Records The sectio section n or divisi division on of the Nation National al Lib Librar rary y and and the the Supr Suprem eme e Cour Courtt Libr Librar ary y char charge ged d with with receiving copies and instruments deposited and with with ke keep epin ing g re reco cord rdss requ requir ired ed unde underr th this is Act and and ev ever eryt ythin hing g in it sh shal alll be op open ened ed to pu publ blic ic inspection. inspec tion. The Director Director of the National Library is emp empow ower ered ed to is issu sue e su such ch sa safe fegu guar ards ds an and d regula reg ulatio tions ns as may be necessa necessary ry to implem implement ent this Section and other provisions of this Act. Copyright Division Fees The Cop Copyri yright ght Sectio Section n of the Nation National al Librar Library y shal shalll be clas classi siffie ied d as a Div Divis isio ion n up upon on th the e effectivity of this Act. The National Library shall have the power to collect, for the discharge of  its services under this Act, such fees as may be promulgated by it from time to time subject to the approval of the Department Head.

Intellectual Property Law Notes

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