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INTELLECTUAL PROPERTY CODE

A. Intellectual Property Rights in General

Intellectual Property Rights

Copyright and Related Rights

Mark (trade, service and collective)

Geographic indications

Industrial designs

Patents

Layout

Integrated Circuits

Protection of Undisclosed Information

designs

(Topographies)

of

Differences between Copyrights, Trademarks and Patent

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Technology Transfer Arrangements

Contracts or arrangements involving the transfer of


systematic knowledge for the manufacture of a product,
the application of the process, or rendering a service
including management contracts, and transfer, assignment
or licensing of all forms of intellectual property rights,
including licensing of computer software except computer
software developed for mass market. (Sec. 4.2, IPC)

statutory grant which confers to an inventor or his legal


successor, in return for the disclosure of the invention to
the public, the right for a limited period of time to exclude
others from making, using, selling or importing the
invention within the territory of the country that grants the
patent.

B. Patents

a. Patentable Inventions
Any technical solution of a problem in any field of human activity
which is new, involves an inventive step and is industrially
applicable. It may be, or may relate to, a product, or process, or
an improvement of any of the foregoing. (Sec. 21)
b. Non-Patentable Inventions
a. Discoveries,
methods

scientific

theories

and

mathematical

b. In the case of Drugs and medicines, mere discovery of


a new form or new property of a known substance
which does not result in the enhancement of the
efficacy of that substance

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c. Schemes, rules and methods of performing mental
acts, playing games or doing business, and programs
for computers
d. Methods for treatment of the human or Animal body
e. Plant varieties or animal breeds or essentially
biological process for the production of plants or
animals. This provision shall not apply to micro
organisms and nonbiological and microbiological
processes
f. Aesthetic creations
g. Anything which is contrary to public order or morality.
(Sec. 22, IPC as amended by R.A. 9502)
c. Ownership of a Patent
a. Right to a Patent

Inventor, his heirs, or assigns.

Joint invention Jointly by the inventors. (Sec. 28, IPC)

2 or more persons invented separately and independently


of each other To the person who filed an application;

2 or more applications are filed the applicant who has the


earliest filing date or, the earliest priority date. First to file
rule. (Sec. 29, IPC)

Inventions created pursuant to a commission Person who


commissions the work, unless otherwise provided in the
contract. (Sec. 30.1, IPC)

Employee made the invention in the course of his


employment contract:
o The employee, if the inventive activity is not a part of
his regular duties even if the employee uses the
time, facilities and materials of the employer.

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o The employer, if the invention is the result of the
performance of his regularlyassigned duties, unless
there is an agreement, express or implied, to the
contrary. (Sec. 30.2, IPC)
b. First-to-File Rule

If two (2) or more persons have made the


invention separately and independently of each
other, the right to the patent shall belong to the
person who filed an application for such
invention, or

Where two or more applications are filed for the


same invention, to the applicant whi has the
earliest filing date. (Sec. 29, IPC)

c. Right of Priority

An application for patent filed by any person who


has previously applied for the same invention in
another country which by treaty, convention, or
law affords similar privileges to Filipino citizens,
shall be considered as filed as of the date of
filing the foreign application. (Sec. 31, IPC)

d. Grounds for Cancellation of a Patent

The invention is Not new or patentable;

The patent does not Disclose the invention in a


manner sufficiently clear and complete for it to
be carried out by any person skilled in the art; or

Contrary to public order or morality.(Sec. 61.1,


IPC)

Patent is found Invalid


infringement (Sec. 82, IPC)

in

an

e. Remedy of the True and Actual Inventor

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action

for

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He may only ask the court to substitute him as


a patentee or to cancel the patent and ask for
damages when the application of the false
inventor is granted. He may not the IPO of
processing the false application.

f. Rights Conferred by a Patent


a. Subject matter is a product Right to restrain,
prohibit and prevent any unauthorized person
or entity from making, using, offering for sale,
selling or importing the product.
b. Subject matter is a process Right to restrain
prohibit and prevent any unauthorized person
or entity from manufacturing, dealing in, using,
offering for sale, selling or importing any
product obtained directly or indirectly from
such process (Sec. 71, IPC).
c. Right to assign the patent, to transfer by
succession,
and
to
conclude
licensing
contracts. (Sec. 71.2, IPC)
g. Limitations of Patent Rights
a. Prior User

GR: If put on the market in the


Philippines by the owner of the
product, or with his express
consent.

XPN: Drugs and medicines


introduced in the Philippines or
anywhere else in the world by the
patent owner, or by any party
authorized to use the invention
(Sec. 72.1, as amended by R.A.
9502)

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Where the act is done privately and


on a noncommercial scale or for a
noncommercial purpose. (Sec.
72.2, IPC)

Exclusively for experimental use of


the invention for scientific purposes
or
educational
purposes
(experimental use provision). (Sec.
72.3, IPC)

Bolar Provision In the case of


drugs and medicines, where the
aact
includes
testing,
using,
making or selling the invention
including any data related thereto,
solely for purposes reasonably
related to the development and
submission of information and
issuance
of
approvals
by
government regulatory agencies
required under any law of the
Philippines or of another country
that regulates the manufacture,
construction, use or sale of any
product.(Sec. 72.4, IPC)

Where the act consists of the


preparation for individual cases, in
a pharmacy or by a medical
professional, of a medicine in
accordance
with
a
medical
prescription. (Sec. 72.5, IPC)

Where the invention is used in any


ship, vessel, aircraft, or land
vehicle of any other country
entering the territory of the
Philippines
temporarily
or
accidentally. (Sec. 72.5, IPC)

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Reverse reciprocity of foreign law


Any
condition,
restriction,
limitation, diminution, requirement,
penalty or any similar burden
imposed by the law of a foreign
country on a Philippine national
seeking protection of intellectual
property rights in that country,
shall reciprocally be enforceable
upon nationals of said country,
within Philippine jurisdiction. (Sec.
231, IPC)

Prior user Person other than the


applicant, who in good faith,
started using the invention in the
Philippines, or undertaken serious
preparations to use the same,
before the filing date or priority
date of the application shall have
the right to continue the use
thereof, but this right shall only be
transferred or assigned further with
his enterprise or business. (Sec.
73, IPC)

Use
by
Government

A
government agency or third person
authorized by the government may
exploit invention even without
agreement of a patent owner
where:
a. Public interest, as determined
by the appropriate agency of
the government, so requires;
or
b. A judicial or administrative
body has determined that the

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manner of exploitation by
owner of patent is anti
competitive. (Sec. 74, IPC)
h. Patent Infringement

Making, using, offering for sale, selling or


importing a patented product or a product
obtained directly or indirectly from a patented
process; or

Use
of
a
patented
process
without
authorization of the owner of the patent (Sec.
76, IPC)

a. Tests in Patent Infringement


Literal Infringement

Resort must be had, in the first


instance, to words of the claim. If
the accused matter clearly falls
within the claim, infringement is
committed.

Minor modifications are sufficient


to put the item beyond literal
infringement. (Godines v. CA, G.R.
No. L97343, Sept. 13, 1993)

Doctrine of Equivalents

There is infringement where a


device
appropriates
a
prior
invention by incorporating its
innovative concept and, although
with
some
modification
and
change, performs substantially the
same function in substantially the
same way to achieve substantially
the same result.

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b. Defenses in Action for Infringement
Invalidity of the patent; (Sec. 81, IPC);
Any of the grounds for cancellation of
patents:
That what is claimed as the invention is
not new or patentable
That the patent does not disclose the
invention in a manner sufficiently clear
and complete for it to be carried out by
any person skilled in the art; or
That the patent is contrary to public
order or morality. (Sec. 61, IPC)

i. Licensing
a. Voluntary
The grant by the patent owner to a third
person of the right to exploit a patented
invention.
b. Compulsory
The Director of Legal Affairs may grant a
license to exploit a patented invention, even
without the agreement of the patent owner, in
favor of any person who has shown his
capability to exploit the invention, under any of
the following circumstances:
National
emergency
or
other
circumstances of extreme urgency
Where the public interest, in particular,
national security, nutrition, health or the

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development of other vital sectors of the
national economy as determined by the
appropriate agency of the Government,
so requires; or
Where a judicial or administrative body
has determined that the manner of
exploitation by the owner of the patent
or his licensee is anti-competitive; or
In case of public non-commercial use of
the patent by the patentee, without
satisfactory reason;
If the patented invention is not being
worked
in
the
Philippines
on
a
commercial scale, although capable of
being
worked,
without
satisfactory
reason: Provided, That the importation of
the patented article shall constitute
working or using the patent. (Secs. 34,
34-A, 34-B, R.A. No. 165a)
j. Assignment and Transmission of Right

Total assignment of entire right, title or


interest in and to the patent and the invention
covered thereby.

Partial
o Separate rights assignment of a specific
right (ex: right to sell)b.
o Pro Indiviso assignment of an aliquot
part which results in coownership

C. Trademarks

Definition of Marks, Collective Marks, Trade Names

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A mark is any visible sign capable of distinguishing the


goods (trademark) or services (service mark) of an
enterprise. A trade name is a name or designation
identifying or distinguishing an enterprise.

A "collective mark" or collective tradename" is a mark or


tradename used by the members of a cooperative, an
association or other collective group or organization. (Sec.
40, R.A. 166)

Acquisition of Ownership of Mark

Acquisition of Ownership of Trade Name

Marks are acquired solely through registration. (Sec. 122,


IPC)

Trade names or business names are acquired through


adoption and use. Registration is not required. (Sec. 165,
IPC)

Non-Registrable Marks

Consists of immoral, deceptive or scandalous matter or


falsely suggest a connection with persons, institutions,
beliefs, or national symbols

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Consists of the flag or coat of arms or other insignia of the


Philippines or any of its political subdivisions, or of any
foreign nation

Consists of a name, portrait or signature identifying a


particular living individual except by his written consent, or
the name, signature, or portrait of a deceased President of
the Philippines, during the life of his widow except by
written consent of the widow

Identical with a registered mark belonging to a different


proprietor or a mark with an earlier filing or priority date, in
respect of:
o The same goods or services, or
o Closely related goods or services, or
o If it nearly resembles such a mark as to be likely to
deceive or cause confusion;

Is identical with an internationally wellknown mark, whether


or not it is registered here, used for identical or similar goods
or services

Is identical with an internationally wellknown mark which is


registered in the Philippines with respect to nonsimilar goods
or services. Provided, that the interests of the owner of the
registered mark are likely to be damaged by such use

Is likely to mislead the public as to the nature, quality,


characteristics or geographical origin of the goods or services

Consists exclusively of signs that are generic for the goods or


services that they seek to identify

Consists exclusively of signs that have become customary or


usual to designate the goods or services in everyday language
and established trade practice

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Consists exclusively that may serve in trade to designate the


kind, quality, quantity, intended purpose, value, geographical
origin, time or production of the goods or rendering of the
services, or other characteristics of the goods or services

Consists of shapes that may be necessitated by technical


factors or by the nature of the goods themselves or factors
that affect their intrinsic value

Consists of color alone, unless defined by a given form; or

Is contrary to public order or morality. (Sec. 123)

Prior Use of Mark as a Requirement

Actual prior use in commerce in the Philippines has been


abolished as a condition for the registration of a trademark.
(RA 8293)

Tests to Determine Confusing Similarity between Marks


o Dominancy Test
o Focuses on the similarity of the prevalent features of
the competing marks. If the competing trademark
contains the main or essential or dominant features
of another, and confusion is likely to result,
infringement takes place. (Asia Brewery v. CA, G.R.
No. 103543, 5 July 1993)
o Holistic Test
a. Confusing similarity is to be determined on the basis
of visual, aural, connotative comparisons and overall
impressions engendered by the marks in controversy
as they are encountered in the marketplace.

Well-Known Marks

Considered by the competent authority of the Philippines


to be wellknown international and in the Philippines as
the mark of a person other than the applicant or registrant

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Need not be used or registered in the Philippines

Need not be known by the public at large but only by


relevant sector of the public.

Rights Conferred by Registration

Use by Third Parties of Names, etc. Similar to Registered Mark

10 years, renewable for a period of another 10 years. Each


request for renewal must be made within 6 months before
or after the expiration of the registration.

Registration of the mark shall not confer on the registered


owner the right to preclude third parties from using bona
fide their names, addresses, pseudonyms, a geographical
name, or exact indications concerning the kind, quality,
quantity, destination, value, place of origin, or time of
production or of supply, of their goods or services.

Infringement and Remedies


o Trademark Infringement

The use without consent of the trademark owner of


any a) reproduction, b) counterfeit, c) copy or d)
colorable imitation of any registered mark or
tradename in connection with the sale, offering for
sale, or advertising of any goods, business or
services on or in connection with which such use is
likely to cause confusion or mistake or to deceive
purchasers or others as to the source or origin of
such goods or services, or identity of such business;
or reproduce, counterfeit, copy or colorably imitate
any such mark or tradename and apply such
reproduction, counterfeit, copy or colorable limitation
to labels, signs, prints, packages, wrappers,
receptacles or advertisements intended to be used
upon or in connection with such goods, business or
services (Esso Standard Eastern v. CA, G.R. No. L
29971, Aug. 31, 1982)

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o Damages

The owner of a trademark which has been infringed


is entitled to actual damages:

The reasonable profit which the complaining party


would have made, had the defendant not infringed
his said rights; or

The profit which the defendant actually made out of


infringement; or

The court may award as damages a reasonable


percentage based upon the amount of gross sales of
the defendant of the value of the services in
connection with which

Unfair Competition
o The passing off of ones goods as those of another.

Trade Names or Business Names

Any individual name or surname, firm name, device nor


word used by manufacturers, industrialists, merchants, and
others to identify their businesses, vocations or occupants
(Converse rubber Corp. vs. Universal Rubber Products, GR
No. L27425, L30505, April 28, 1980).

Collective Marks

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A "collective mark" or collective tradename" is a mark or


tradename used by the members of a cooperative, an
association or other collective group or organization. (Sec.
40, R.A. 166)

D. Copyrights

Basic Principles, Sections 172.2, 175 and 181

Literary and artistic works, hereinafter referred to


as "works", are original intellectual creations in the literary
and artistic domain protected from the moment of their
creation and shall include in particular:
(a) Books, pamphlets, articles and other writings;
(b) Periodicals and newspapers;
(c) Lectures, sermons, addresses, dissertations
prepared for oral delivery, whether or not reduced in
writing or other material form;
(d) Letters;
(e) Dramatic or dramatico-musical compositions;
choreographic works or entertainment in dumb
shows;
(f) Musical compositions, with or without words;
(g) Works of drawing, painting, architecture,
sculpture, engraving, lithography or other works of
art; models or designs for works of art;
(h) Original ornamental designs or models for articles
of manufacture, whether or not registrable as an
industrial design, and other works of applied art;
(i) Illustrations, maps, plans, sketches, charts and
three-dimensional works relative to geography,
topography, architecture or science;
(j) Drawings or plastic works of a scientific or
technical character;
(k) Photographic works including works produced by
a process analogous to photography; lantern slides;
(l) Audiovisual works and cinematographic works and
works produced by a process analogous to

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cinematography or any process for making audiovisual recordings;


(m) Pictorial illustrations and advertisements;
(n) Computer programs; and
(o) Other literary, scholarly, scientific and artistic
works.
Unprotected Subject Matter. - Notwithstanding the
provisions of Sections 172 and 173, no protection shall
extend, under this law, to any idea, procedure, system
method or operation, concept, principle, discovery or mere
data as such, even if they are expressed, explained,
illustrated or embodied in a work; news of the day and
other miscellaneous facts having the character of mere
items of press information; or any official text of a
legislative, administrative or legal nature, as well as any
official translation thereof.
The copyright is distinct from the property in the material
object subject to it. Consequently, the transfer or
assignment of the copyright shall not itself constitute a
transfer of the material object. Nor shall a transfer or
assignment of the sole copy or of one or several copies of
the work imply transfer or assignment of the copyright.

Copyrightable Works
o Original Works
(a) Books, pamphlets, articles and other writings;
(b) Periodicals and newspapers;
(c) Lectures, sermons, addresses, dissertations
prepared for oral delivery, whether or not reduced in
writing or other material form;
(d) Letters;
(e) Dramatic or dramatico-musical compositions;
choreographic works or entertainment in dumb
shows;
(f) Musical compositions, with or without words;
(g) Works of drawing, painting, architecture,
sculpture, engraving, lithography or other works of
art; models or designs for works of art;

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(h) Original ornamental designs or models for articles
of manufacture, whether or not registrable as an
industrial design, and other works of applied art;
(i) Illustrations, maps, plans, sketches, charts and
three-dimensional works relative to geography,
topography, architecture or science;
(j) Drawings or plastic works of a scientific or
technical character;
(k) Photographic works including works produced by
a process analogous to photography; lantern slides;
(l) Audiovisual works and cinematographic works and
works produced by a process analogous to
cinematography or any process for making audiovisual recordings;
(m) Pictorial illustrations and advertisements;
(n) Computer programs; and
(o) Other literary, scholarly, scientific and artistic
works.
o Derivative Works
a. Dramatizations,
translations,
adaptations,
abridgements, arrangements, and other alterations
of literary or artistic works;
b. Collections of literary, scholarly, or artistic works and
compilations of data and other materials which are
original by reason of the selection or coordination or
arrangement of their contents. (Sec. 173)

Non-Copyrightable Works
o Idea, procedure, system, method or operation, concept,
principle, discovery or mere data as such
o News of the day and other items of press information
o Any official text of a legislative, administrative or legal
nature, as well as any official translation thereof
o Pleadings

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o Decisions of courts and tribunals this refers to original
decisions and not to annotated decisions such as the SCRA
or SCAD as these already fall under the classification of
derivative works, hence copyrightable
o Any work of the Government of the Philippines
GR: Conditions imposed prior the approval of the
government agency or office wherein the work is created
shall be necessary for exploitation of such work for profit.
Such agency or office, may, among other things, impose
as condition the payment of royalties.
XPN: No prior approval or conditions shall be required for
the use of any purpose of statutes, rules and regulations,
and speeches, lectures, sermons, addresses, and
dissertations, pronounced, read, or rendered in courts of
justice, before administration agencies, in deliberative
assemblies and in meetings of public character. (Section
176, IPC)

TV programs, format of TV programs (Joaquin v. Drilon, G.R.


No. 108946, Jan. 28, 1999)

Systems of bookkeeping; and

Statutes

Rights of Copyright Owner

Economic rights The right to carry out, authorize or


prevent the following acts:
o Reproduction of the work or substantial portion
thereof
o Carryout derivative work (dramatization, translation,
adaptation, abridgement, arrangement or other
transformation of the work)
o First distribution of the original and each copy of the
work by sale or other forms of transfer of ownership

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o Rental right
o Public display
o Public performance
o Other communications to the public

Moral rights For reasons of professionalism and propriety,


the author has the right:
o To require that the authorship of the works be
attributed to him (attribution right)
o To make any alterations of his work prior to, or to
withhold it from publication
o Right to preserve integrity of work, object to any
distortion, mutilation or other modification which
would be prejudicial to his honor or reputation; and
o To restrain the use of his name with respect to any
work not of his own creation or in a distorted version
of his work. (Sec.193, IPC)
o Droit de suite (Right to proceeds in subsequent
transfers or follow up rights) This is an inalienable
right of the author or his heirs to receive to the
extent of 5% of the gross proceeds of the sale or
lease of a work of painting or sculpture or of the
original manuscript of a writer or composer,
subsequent to its first disposition by the author. The
following works are not covered: Prints, Etchings,
Engravings, Works of applied art, Similar works
wherein the author primarily derives gain from the
proceeds of reproductions. (Sec. 201, IPC)

Rules on Ownership of Copyright


o Author Original literary and artistic works. (Sec. 178.1,
IPC)

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o Coauthors Works of joint authorship; in the absence of
agreement, their rights shall be governed by the rules on
coownership.
o In the course of employment, the copyright shall belong to:
a. The employee, if not a part of his regular duties even
if the employee uses the time, facilities and materials
of the employer. (Sec. 178.3, IPC)
b. The employer, if the work is the result of the
performance of his regularlyassigned duties, unless
there is an agreement, express or implied, to the
contrary. (ibid.)

The person who commissioned the work shall own the


work but the copyright thereto shall remain with the
creator In cases of work pursuant to commission, unless
there is a written stipulation to the contrary. (Sec. 178.4,
IPC)

GR: Producer, the author of the scenario, the composer of


the music, the film director, and the author of the work so
adapted audiovisual work.
XPN: The producers shall exercise the copyright to an
extent required for the exhibition of the work in any
manner. (Sec. 178.5, IPC)

o Writer in respect of letters subject to the provisions of


Article 723, Civil Code. (Sec. 178.6, IPC)
o GR: Publishers deemed representatives of the author in
case of anonymous and pseudonymous works.
XPN: When the contrary appears or where the pseudonym
or adopted name leaves no doubt as to the authors
identity; or author discloses his identity.
o In case of collective works contributor is deemed to have
waived his right unless he expressly reserves it. (Sec. 196,
IPC)

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Limitations on Copyright
o Doctrine of Fair Use
Fair use permits a secondary use that serves the
copyright objective of stimulating productive thought and
public instruction without excessively diminishing the
incentives for creativity.
o The purpose and character of the use, including
whether such use is of a commercial nature or is for
nonprofit educational purpose;
o The nature of the copyrighted work;
o The amount and substantiality of the portion used in
relation to the copyrighted work as a whole; and
o The effect of the use upon the potential market for or
value of the copyrighted work.
Note: The fact that a work is unpublished shall not by
itself bar a finding of fair use if such finding is made
upon consideration of all the above factors. (Sec.
182.2, IPC)
o Copyright Infringement
It is the doing by any person, without the consent of the
owner of the copyright, of anything the sole right to do
which is conferred by statute on the owner of the
copyright. The act of lifting from anothers book substantial
portions of discussions and examples and the failure to
acknowledge the same is an infringement of copyright.
(Habana v. Robles, G.R. No. 131522, July 19, 1999)

E. Rules of Procedure for Intellectual Property Rights Cases (A.M.


No. 10-3-10-SC)

The contested or inter partes proceedings are:

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o Patent Cases
a. Petition to cancel an invention patent, utility model
registration, industrial design registration, or any
claim or parts of a claim;
b. Petition for Compulsory Licensing or a license to
exploit a patented invention.
o Trademark Cases
a.

Opposition against the registration of a mark published for opposition

b.

Petition to cancel the registration of a mark.

Parties in inter partes proceedings.


The Petitioner in a
cancellation proceeding and in a compulsory licensing
proceeding and the Opposer in an opposition proceeding shall
be deemed to be in the position of a plaintiff while the
Respondent in a cancellation, compulsory licensing or opposition
proceeding shall be in the position of defendant, with respect
thereto.
Section 3. Original jurisdiction over inter partes
proceedings. The Director shall have original jurisdiction over
inter partes proceedings. Such inter partes proceedings shall be
heard before the Director, any Hearing Officer or other ranking
official of the Bureau designated by the Director but all decisions
and final orders shall be signed by the Director.

Workflow/procedure in inter partes proceedings.


(a) The Petition for Cancellation, Compulsory Licensing or Notice
of Opposition shall be filed with the Bureau which shall check if
the complaint is in due form and thereafter, shall issue an order
for the payment of the required fee.
(b) After payment of the required fee, the petitioner, his counsel
or representative shall submit to the Bureau a copy of the
official receipt and present the original thereof for comparison.
Within twenty four (24) hours from receipt of the proof of
payment of the required fee, the Assistant Director of the
Bureau shall acknowledge receipt of the papers by assigning
the Inter Partes Case Number, docket the same and then assign

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the case to any of the Hearing Officers through raffle under the
rules promulgated by the Director General.
(c) Within three (3) working days from receipt of the petition by
the Bureau, the Hearing Officer to whom the petition
is
assigned shall immediately prepare and send, in the name of
the Director, to all parties required to be notified in the IP Code
and these Regulations the necessary orders, notice of
publication, summons, and other notices, either by registered
mail or by personal delivery.

Summons and answer. The summons shall require respondent to


answer the petition (and not to file a motion to dismiss) within
fifteen (15) days from service of the summon.
The respondent shall answer the petition in writing, either by
denying specifically the material allegations of the petition or by
alleging any lawful defense. He shall file his answer together with
the sworn statements and documentary evidence and serve copies
thereof upon the petitioner or opposer.
The original answer shall be considered as answer to the amended
petition unless a new answer is filed within ten (10) days from
notice or service.
No motion to dismiss shall be entertained. Instead, all grounds for
dismissal shall be pleaded as affirmative defenses, the resolution of
which shall be made in the decision on the merits.
Pre-trial. Upon joinder of issues, the designated clerk of the Bureau
shall prepare the Notice of Pre-Trial upon receipt of invitation from
the Hearing Officer setting the date of the pre-trial conference. The
pre-trial conference shall be set within two (2) months but not
earlier than one (1) month from receipt of the Answer or other
pleading. The notice of pre-trial shall be delivered by personal
delivery or registered mail within two (2) days from the date on
which instruction was given to the clerk. The notice of pre-trial shall
require the parties to submit a pre-trial brief containing the
following:
(a) A brief statement of the parties claims and defenses;
(b) Suggestions, if any, for simplification of issues;
(c) A list of documents they intend to produce as evidence, together
with appropriate markings as exhibits as well as the identification of

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witnesses and a statement of the substance and purpose of their
testimony during the hearing on the merits. These documents must
be produced for
examination during the pre-trial conference
without prejudice to the presentation of additional documents
during the trial if the party was prevented from producing the same
during the pre-trial on account of fraud, accident, mistake,
excusable negligence or such other reason which the Director or
Hearing Officer deems justifiable in the interest of justice and fair
play;
(d) A statement whether they can stipulate on facts not covered by
admissions in their pleadings. If so, they should come with drafts of
matters they are ready to stipulate on;
(e) A statement whether they are open to the possibility of an
amicable settlement; if so, they should be prepared on the pre-trial
date to submit their minimum demands for purposes of settlement;
and,
(f) Such other matters as may aid in the prompt disposition of the
action.
Each party shall file with the Bureau and serve on the adverse party
said pre-trial briefs at least three (3) days before the date of pretrial conference fixed in the notice.
As counsel needs the consent of his client for purposes of accepting
an offer of compromise, the attendance not only of the attorneys of
record but also of the parties themselves, is required for the pre-trial
conference. Presence of any party may be dispensed with if his
counsel is provided with a notarized power of attorney or the
appropriate corporate authorization to make admissions and/or to
accept and approve compromise proposals.
The failure of the petitioner/opposer to appear when so required
shall be cause for dismissal of the action with prejudice. A similar
failure on the part of the respondent shall be cause to allow the
petitioner/opposer to present his evidence ex parte and the Director
to render judgment on the basis thereof.

Dismissal for failure to prosecute. If the petitioner/opposer does not


appear at the time and place designated in the Notice of Pre-trial
Conference or a Notice of Hearing or in a subsequent order, or failed to

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prosecute his case for an unreasonable length of time, or fail to comply


with these Regulations or any order of the Bureau, the petition or
notice of opposition, as the case may be, may be dismissed for failure
to prosecute and judgment rendered for the respondent to recover his
costs from the petitioner/opposer, provided, however, that the Bureau
may cancel the patent or trademark registration where it finds
evidence independent of the petitioners submission.
Within fifteen
(15) days after receipt of the Order of Dismissal, the petitioner/opposer
may file a motion to set aside such order if his failure to appear was by
reason of fraud, accident, mistake or excusable negligence.
Effect of failure of respondent to answer. If the respondent fails to
answer within the period herein provided, the Hearing Officer shall,
upon motion of the petitioner/opposer or motu propio, declare the
respondent in default and forthwith receive evidence ex parte and
submit his recommendations, to the Director. No service of papers
other than substantially amended or supplemental pleadings and final
orders or decisions shall be necessary on a party in default unless he
files a motion to set aside the Order of Default within fifteen (15) days
from receipt thereof on any of the grounds mentioned in the preceding
paragraph, in which event he shall be entitled to notice of all further
proceedings regardless of whether the order of default is set aside or
not.
Conduct of hearings. Should the Hearing Officer be absent on any
scheduled date of hearing, the hearing shall automatically be
conducted by his Chief Hearing Officer or, upon instruction of the
Director,
by any other Hearing Officer.
All hearings shall be
continuous until terminated and no postponement of hearings,
specially those scheduled by agreement of the parties, shall be allowed
over the objection of any party. However, in extremely meritorious
cases and upon written motion filed with the Hearing Officer at least
three (3) days before the scheduled hearing with proof of personal
service upon the other party or parties, a postponement may be
granted.
Order of trial. The following procedure shall be observed during the
hearing of the case:
(a) The petitioner shall submit to the Hearing Officer and serve on the
adverse party the sworn statement of the witnesses (which shall
constitute the direct testimony of the affiants) and other documentary
evidence at least three (3) days before the scheduled hearing and shall

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make his witnesses available for cross-examination by respondent
during the scheduled hearing.
(b) The respondent shall then present the sworn
witnesses (which shall constitute the direct testimony
and other documentary evidence and shall make
available for cross-examination by petitioner during
hearing.

statements of
of the affiants)
his witnesses
the scheduled

(c) The petitioner and the respondent may, in succession, present


rebuttal and sur-rebuttal evidence, with the direct testimony of witness
being reduced into affidavit form, as herein prescribed.
(d) If the testimony of the witness residing outside the Philippines is to
be taken, said witness may testify personally in his own behalf, or the
direct examination may be in the form of an authenticated affidavit
and be submitted within the period fixed by the Hearing Officer, and
the opposing party may cross-examine the witness through written
interrogatories in the manner prescribed by the Rules of Court. The
party presenting the witness shall bear the expenses pertaining
thereto and shall obtain the necessary approval for the deposition.
Submission of the Answer to cross interrogatories to the Bureau shall
be made within six (6) months from the date of the issuance of the
Letters Commission. Said period may be extended once for very
justifiable reasons. In no case, however, shall the submission of said
Answer exceed one (1) year from date of issuance of Letters
Commission. Otherwise, the testimony of said foreign witness shall be
stricken out by the Hearing Officer, motu propio or upon motion of the
opposing party.
(e) Failure to present the sworn statement of the witnesses and
documentary evidence at the pre-trial shall be deemed a waiver of the
right to present evidence during the hearing.

No demurrer to evidence shall be entertained after the presentation of


petitioners evidence. Respondent shall forthwith present evidence in
its behalf.
The Director, Chief Hearing Officer or any Hearing Officer shall receive
relevant and material evidence, rule on offer of evidence and exclude
all irrelevant matter, and shall act according to justice and fairness.
The Bureau in the exercise of its power to investigate and hear cases

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within its jurisdiction shall not be strictly bound by the technical rules
of evidence.
When an answer fails to tender an issue or otherwise admits the
material allegations of the adverse partys pleading, the Director may,
on motion of said adverse party, render judgment on such pleadings.
Any party seeking to recover upon a petition, a claim, counterclaim or
cross-claim or against whom a petition, claim, cross-claim or
counterclaim is asserted may, at any time after the issues are joined,
move with supporting affidavit, depositions or admissions of parties,
for a summary judgment in his favor as to all or any part thereof. The
motion shall be served at least ten (10) days before the time specified
for the hearing. The adverse party may file with the Bureau and serve
opposing affidavits at least three (3) days prior to the day of hearing.
After the hearing, the judgment sought shall be rendered forthwith if
the pleadings, depositions and admissions on file, together with the
affidavits, show that there is no genuine issue as to any material fact
and that the moving party is entitled to a judgment as a matter of law.

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