PHILIPPINE CHRISTIAN UNIVERSITY

College of Law
Intellectual Property Law

I. INTRODUCTION
A. Constitutional Basis
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Section 13, Article XIV, 1987 Constitution

Section 13. The State shall protect and secure the exclusive
rights of scientists, inventors, artists, and other gifted citizens to
their intellectual property and creations, particularly when
beneficial to the people, for such period as may be provided by
law.

B. Statutory Basis
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Republic Act No. 8293 (The Intellectual Property Code of the

Philippines)
Approved: June 6, 1997
Effectivity: January 1, 1998

Other Related Laws

II. PHILIPPINE COMMITMENT TO GATT-TRIPS AGREEMENT

A. Section 3, RA 8293
Section 3. International Conventions and Reciprocity. - Any person
who is a national or who is domiciled or has a real and effective
industrial establishment in a country which is a party to any
convention, treaty or agreement relating to intellectual property rights
or the repression of unfair competition, to which the Philippines is also
a party, or extends reciprocal rights to nationals of the Philippines by
law, shall be entitled to benefits to the extent necessary to give effect
to any provision of such convention, treaty or reciprocal law, in
addition to the rights to which any owner of an intellectual property
right is otherwise entitled by this Act.

B. Tanada vs. Angara, G.R. No. 118295, May 2, 1997

Facts: This is a petition seeking to nullify the Philippine ratification of the World Trade
Organization (WTO) Agreement. Petitioners questioned the concurrence of herein respondents
acting in their capacities as Senators via signing the said agreement.
The respondent Senators posit that the WTO will open access to foreign markets, especially
its major trading partners, though the reduction of tariffs on its exports, particularly
agricultural and industrial products. Thus, it will provide new opportunities for the service
sector cost and uncertainty associated with exporting and more investment in the country.
These are the benefits espoused by WTO.

Petitioners on the other hand viewed the WTO Agreement as one that limits, restricts and
impair Philippine economic sovereignty and legislative power. That the Filipino First Policy of
the Constitution was taken granted as it gives foreign trading intervention.
Issue: WON the 1987 Constitution prohibit our country from participating in worldwide trade
liberalization and economic globalization and from integrating into a global economy that is
liberalized, deregulated and privatized
Held: There are enough balancing provisions in the Constitution to allow the Senate to ratify
the Philippine concurrence in the WTO Agreement.
[W]hile the Constitution indeed mandates a bias in favor of Filipino goods, services, labor and
enterprises, at the same time, it recognizes the need for business exchange with the rest of
the world on the bases of equality and reciprocity and limits protection of Filipino enterprises
only against foreign competition and trade practices that are unfair. In other words, the
Constitution did not intend to pursue an isolationist policy. It did not shut out foreign
investments, goods and services in the development of the Philippine economy. While the
Constitution does not encourage the unlimited entry of foreign goods, services and
investments into the country, it does not prohibit them either. In fact, it allows an exchange
on the basis of equality and reciprocity, frowning only on foreign competition that is unfair.
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[T]he constitutional policy of a self-reliant and independent national economy does not
necessarily rule out the entry of foreign investments, goods and services. It contemplates
neither economic seclusion nor mendicancy in the international community. As explained
by Constitutional Commissioner Bernardo Villegas, sponsor of this constitutional policy:
Economic self-reliance is a primary objective of a developing country that is keenly aware of
overdependence on external assistance for even its most basic needs. It does not mean autarky
or economic seclusion; rather, it means avoiding mendicancy in the international community.
Independence refers to the freedom from undue foreign control of the national economy,
especially in such strategic industries as in the development of natural resources and public
utilities.
The WTO reliance on most favored nation, national treatment, and trade without
discrimination cannot be struck down as unconstitutional as in fact they are rules of
equality and reciprocity that apply to all WTO members. Aside from envisioning a trade policy
based on equality and reciprocity, the fundamental law encourages industries that are
competitive in both domestic and foreign markets, thereby demonstrating a clear policy
against a sheltered domestic trade environment, but one in favor of the gradual development
of robust industries that can compete with the best in the foreign markets. Indeed, Filipino
managers and Filipino enterprises have shown capability and tenacity to compete
internationally. And given a free trade environment, Filipino entrepreneurs and managers in
Hongkong have demonstrated the Filipino capacity to grow and to prosper against the best
offered under a policy of laissez faire.
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It is true, as alleged by petitioners, that broad constitutional principles require the State to
develop an independent national economy effectively controlled by Filipinos; and to protect
and/or prefer Filipino labor, products, domestic materials and locally produced goods. But it
is equally true that such principles while serving as judicial and legislative guides are
not in themselves sources of causes of action. Moreover, there are other equally fundamental
constitutional principles relied upon by the Senate which mandate the pursuit of a trade
policy that serves the general welfare and utilizes all forms and arrangements of exchange on
the basis of equality and reciprocity and the promotion of industries which are competitive
in both domestic and foreign markets, thereby justifying its acceptance of said treaty. So too,
the alleged impairment of sovereignty in the exercise of legislative and judicial powers is
balanced by the adoption of the generally accepted principles of international law as part of
the law of the land and the adherence of the Constitution to the policy of cooperation and
amity with all nations.

That the Senate, after deliberation and voting, voluntarily and overwhelmingly gave its
consent to the WTO Agreement thereby making it a part of the law of the land is a
legitimate exercise of its sovereign duty and power. We find no patent and gross
arbitrariness or despotism by reason of passion or personal hostility in such exercise. It is
not impossible to surmise that this Court, or at least some of its members, may even agree
with petitioners that it is more advantageous to the national interest to strike down Senate
Resolution No. 97. But that is not a legal reason to attribute grave abuse of discretion to the
Senate and to nullify its decision. To do so would constitute grave abuse in the exercise of our
own judicial power and duty. Ineludibly, what the Senate did was a valid exercise of its
authority. As to whether such exercise was wise, beneficial or viable is outside the realm of
judicial inquiry and review. That is a matter between the elected policy makers and the
people. As to whether the nation should join the worldwide march toward trade liberalization
and economic globalization is a matter that our people should determine in electing their
policy makers. After all, the WTO Agreement allows withdrawal of membership, should this
be the political desire of a member.

The General Agreement on Tariffs and Trade (GATT) was a multilateral

agreement regulating international trade. According to its preamble, its purpose was
the "substantial reduction of tariffs and other trade barriers and the elimination of
preferences, on a reciprocal and mutually advantageous basis." It was negotiated
during the United Nations Conference on Trade and Employment and was the
outcome of the failure of negotiating governments to create the International Trade
Organization (ITO). GATT was signed by 23 nations in Geneva on October 30, 1947
and took effect on January 1, 1948. It lasted until the signature by 123 nations in
Marrakesh on April 14, 1994 of the Uruguay Round Agreements, which established
the World Trade Organization (WTO) on January 1, 1995.
Whilst GATT was a set of rules agreed upon by nations, the WTO is an institutional
body. The WTO expanded its scope from traded goods to include trade within the
service sector and intellectual property rights.

III. PRELIMINARY MATTERS

A. Declaration of State Policy
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Section 2, RA 8293

Section 2. Declaration of State Policy. - The State recognizes that an

effective intellectual and industrial property system is vital to the
development of domestic and creative activity, facilitates transfer of
technology, attracts foreign investments, and ensures market access for
our products. It shall protect and secure the exclusive rights of
scientists, inventors, artists and other gifted citizens to their intellectual
property and creations, particularly when beneficial to the people, for
such periods as provided in this Act.
The use of intellectual property bears a social function. To this end, the
State shall promote the diffusion of knowledge and information for the
promotion of national development and progress and the common good.
It is also the policy of the State to streamline administrative procedures
of registering patents, trademarks and copyright, to liberalize the
registration on the transfer of technology, and to enhance the
enforcement of intellectual property rights in the Philippines.

Twentieth Century Music Corp. vs. Aiken, 422 U.S. 151

Facts: 20Th Century Music Corporation copyrighted songs were received on the radio in
Aikens food shop from a local broadcasting station, which was licensed by the American
Society of Composers, Authors and Publishers to perform the songs, but Aiken had no such
license. 20th Century Music then sued Aiken for copyright infringement. The District Court
granted awards, but the Court of Appeals reversed.
Issue: Whether the reception of a copyrighted song on a radio broadcast constitutes a
copyright violation if the copyright owner has only licensed the broadcaster to "perform the
composition publicly for profit
Held : Aiken did not infringe upon 20th Century exclusive right, under the Copyright Act,
"[t]o perform the copyrighted work publicly for profit," since the radio reception did not
constitute a "performance" of the copyrighted songs.
To hold that Aiken "performed" the copyrighted works would obviously result in a wholly
unenforceable regime of copyright law, and would also be highly inequitable, since (short of
keeping his radio turned off) one in Aiken's position would be unable to protect himself from
infringement liability. Such a ruling, moreover, would authorize the sale of an untold number
of licenses for what is basically a single rendition of a copyrighted work, thus conflicting with
the balanced purpose of the Copyright Act of assuring the composer an adequate return for
the value of his composition while, at the same time, protecting the public from oppressive
monopolies.
The limited scope of the copyright holder's statutory monopoly, like the limited copyright
duration required by the Constitution, reflects a balance of competing claims upon the public
interest: creative work is to be encouraged and rewarded, but private motivation must
ultimately serve the cause of promoting broad public availability of literature, music, and the
other arts. The immediate effect of our copyright law is to secure a fair return for an
"author's" creative labor. But the ultimate aim is, by this incentive, to stimulate artistic
creativity for the general public good. "The sole interest of the United States and the primary
object in conferring the monopoly," this Court has said, "lie in the general benefits derived by
the public from the labors of authors." When technological change has rendered its literal
terms ambiguous, the Copyright Act must be construed in light of this basic purpose.

Feist Publications Inc. vs. Rural Television Services

499 U.S. 340, 1991

Company,

Facts: Rural Telephone Service Company is a certified public utility that provides telephone
service to several communities in northwest Kansas. It is subject to a state regulation that
requires all telephone companies operating in Kansas to issue annually an updated telephone
directory. Accordingly, as a condition of its monopoly franchise, Rural publishes a typical
telephone directory, consisting of white pages and yellow pages. The white pages list in
alphabetical order the names of Rural's subscribers, together with their towns and telephone
numbers. The yellow pages list Rural's business subscribers alphabetically by category and
feature classified advertisements of various sizes. Rural distributes its directory free of charge
to its subscribers, but earns revenue by selling yellow pages advertisements.
Feist Publications, Inc., is a publishing company that specializes in area-wide telephone
directories. Unlike a typical directory, which covers only a particular calling area, Feist's areawide directories cover a much larger geographical range, reducing the need to call directory
assistance or consult multiple directories. The Feist directory that is the subject of this
litigation covers 11 different telephone service areas in 15 counties and contains 46,878
white pages listings -- compared to Rural's approximately 7,700 listings. Like Rural's
directory, Feist's is distributed free of charge and includes both white pages and yellow pages.
Feist and Rural compete vigorously for yellow pages advertising.
As the sole provider of telephone service in its service area, Rural obtains subscriber
information quite easily. Persons desiring telephone service must apply to Rural and provide
their names and addresses; Rural then assigns them a telephone number. Feist is not a
telephone company, let alone one with monopoly status, and therefore lacks independent
access to any subscriber information. To obtain white pages listings for its area-wide
directory, Feist approached each of the 11 telephone companies operating in northwest
Kansas and offered to pay for the right to use its white pages listings.

Of the 11 telephone companies, only Rural refused to license its listings to Feist. Rural's
refusal created a problem for Feist, as omitting these listings would have left a gaping hole in
its area-wide directory, rendering it less attractive to potential yellow pages advertisers.
Unable to license Rural's white pages listings, Feist used them without Rural's consent. Feist
began by removing several thousand listings that fell outside the geographic range of its areawide directory, then hired personnel to investigate the 4,935 that remained. These employees
verified [p*344] the data reported by Rural and sought to obtain additional information. As a
result, a typical Feist listing includes the individual's street address; most of Rural's listings
do not. Notwithstanding these additions, however, 1,309 of the 46,878 listings in Feist's 1983
directory were identical to listings in Rural's 1982-1983 white pages. Four of these were
fictitious listings that Rural had inserted into its directory to detect copying.
Rural sued for copyright infringement in the District Court for the District of Kansas taking
the position that Feist, in compiling its own directory, could not use the information
contained in Rural's white pages. Rural asserted that Feist's employees were obliged to travel
door-to-door or conduct a telephone survey to discover the same information for themselves.
Feist responded that such efforts were economically impractical and, in any event,
unnecessary because the information copied was beyond the scope of copyright protection.
Issues: Whether or not Telephone directories are copyrightable or not?
Held: The court rule that facts are not copyrightable; the other, that compilations of facts
generally are. There can be no valid copyright in facts is universally understood. The most
fundamental axiom of copyright law is that "no author may copyright his ideas or the facts he
narrates." Rural wisely concedes this point, noting in its brief that "facts and discoveries, of
course, are not themselves subject to copyright protection." However, it is beyond dispute that
compilations of facts are within the subject matter of copyright. Compilations were expressly
mentioned in the Copyright Act of 1909, and again in the Copyright Act of 1976.
Notes
On what basis may one claim a copyright in such a work?
Common sense tells us that 100 uncopyrightable facts do not magically change their status
when gathered together in one place. Yet copyright law seems to contemplate that
compilations that consist exclusively of facts are potentially within its scope.
Facts are not copyrightable. The sine qua non of copyright is originality. To qualify for
copyright protection, a work must be original to the author. See Harper Original, as the term
is used in copyright, means only that the work was independently created by the author (as
opposed to copied from other works), and that it possesses at least some minimal degree of
creativity. To be sure, the requisite level of creativity is extremely low; even a slight amount
will suffice. The vast majority of works make the grade quite easily, as they possess some
creative spark, "no matter how crude, humble or obvious" it might be.
Why facts are not copyrightable?
No one may claim originality as to facts. This is because facts do not owe their origin to an act
of authorship. The distinction is one between creation and discovery: the first person to find
and report a particular fact has not created the fact; he or she has merely discovered its
existence. One who discovers a fact is not its "maker" or "originator." The discoverer merely
finds and records.
Illustrative Example
Census-takers do not "create" the population figures that emerge from their efforts; in a
sense, they copy these figures from the world around them. Census data therefore do not
trigger copyright because these data are not "original" in the constitutional sense. The same
is true of all facts -- scientific, historical, biographical, and news of the day. "They may not be
copyrighted and are part of the public domain available to every person."
Factual compilations, on the other hand, may possess the requisite originality. The
compilation author typically chooses which facts to include, in what order to place them, and
how to arrange the collected data so that they may be used effectively by readers. These
choices as to selection and arrangement, so long as they are made independently by the

compiler and entail a minimal degree of creativity, are sufficiently original that Congress may
protect such compilations through the copyright laws. Thus, even a directory that contains
absolutely no protectible written expression, only facts, meets the constitutional minimum for
copyright protection if it features an original selection or arrangement.
Originality does not signify novelty; a work may be original even though it closely resembles
other works so long as the similarity is fortuitous, not the result of copying. To illustrate,
assume that two poets, each ignorant of the other, compose identical poems. Neither work is
novel, yet both are original and, hence, copyrightable.
Originality requires independent creation plus a modicum of creativity: "While the word
writings may be liberally construed, as it has been, to include original designs for engraving,
prints, &c., it is only such as are original, and are founded in the creative powers of the mind.
The writings which are to be protected are the fruits of intellectual labor, embodied in the
form of books, prints, engravings, and the like."
Author - in a constitutional sense is to mean "he to whom anything owes its origin; originator;
maker.

B. International Convention and Principle of Reciprocity

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Section 3, RA 8293

Section 3. International Conventions and Reciprocity. - Any person

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

Section 231, RA 8293

Section 231. Reverse Reciprocity of Foreign Laws. - 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.

Mirpuri vs. CA, G.R. No. 114508, Nov. 19, 1999

Facts: Lolita Escobar applied with the Bureau of Patents for the registration of the trademark
Barbizon, alleging that she had been manufacturing and selling these products since 1970.
private respondent Barbizon Corp opposed the application in IPC No. 686. The Bureau
granted the application and a certificate of registration was issued for the trademark
Barbizon. Escobar later assigned all her rights and interest over the trademark to petitioner
Mirpuri. In 1979, Escobar failed to file with the Bureau the Affidavit of Use of the trademark.
Due to his failure, the Bureau cancelled the certificate of registration. Escobar reapplied and
Mirpuri also applied and this application was also opposed by private respondent in IPC No.
2049, claiming that it adopted said trademark in 1933 and has been using it. It obtained a
certificate from the US Patent Office in 1934. Then in 1991, DTI cancelled petitioners
registration and declared private respondent the owner and prior user of the business name
Barbizon International.
Issue: Whether or not the treaty (Paris Convention) affords protection to a foreign corporation
against a Philippine applicant for the registration of a similar trademark.

Held: The Court held in the affirmative. RA 8293 defines trademark as any visible sign
capable of distinguishing goods. The Paris Convention is a multilateral treaty that seeks to
protect industrial property consisting of patents, utility models, industrial designs,
trademarks, service marks, trade names and indications of source or appellations of origin,
and at the same time aims to repress unfair competition. In short, foreign nationals are to be
given the same treatment in each of the member countries as that country makes available to
its own citizens. Nationals of the various member nations are thus assured of a certain
minimum of international protection of their industrial property.

C. Coverage of Intellectual Property Rights

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Section 4, RA 8293
Section 4. Definitions. - 4.1. The term "intellectual property rights" consists of:
a) Copyright and Related Rights;
b) Trademarks and Service Marks;
c) Geographic Indications;
d) Industrial Designs;
e) Patents;
f) Layout-Designs (Topographies) of Integrated Circuits; and
g) Protection of Undisclosed Information

Kho vs. CA, G.R. No. 115758, March 19, 2002

Facts Kho is doing business under the name and style of KEC Cosmetics Laboratory, the
registered owner of the copyrights Chin Chun Su and Oval Facial Cream Container/Case,
that she also has patent rights on Chin Chun Su & Device and Chin Chun Su for medicated
cream after purchasing the same from Quintin Cheng, the registered owner thereof in the
Supplemental Register of the Philippine Patent Office.
Summerville advertised and sold Khos cream products under the brand name Chin Chun
Su, in similar containers that Kho uses, thereby misleading the public, and resulting in the
decline in the Khos business sales and income; and, that the Summerville should be
enjoined from allegedly infringing on the copyrights and patents of the Kho.
Summerville on the other hand, alleged as their defense that they are the exclusive and
authorized importer, re-packer and distributor of Chin Chun Su products manufactured by
Shun Yi Factory of Taiwan; that the said Taiwanese manufacturing company authorized
Summerville to register its trade name Chin Chun Su Medicated Cream with the Philippine
Patent Office and other appropriate governmental agencies; that KEC Cosmetics Laboratory
of the of Kho obtained the copyrights through misrepresentation and falsification; and, that
the authority of Quintin Cheng, assignee of the patent registration certificate, to distribute
and market Chin Chun Su products in the Philippines had already been terminated by the
said Taiwanese Manufacturing Company.
On December 20, 1991, Elidad C. Kho filed a complaint for injunction and damages with a
prayer for the issuance of a writ of preliminary injunction, against the Summerville General
Merchandising and Company (Summerville, for brevity) and Ang Tiam Chay.
Issue: Whether the copyright and patent over the name and container of a beauty cream
product would entitle the registrant to the use and ownership over the same to the exclusion
of
the
others
Held: Trademark, copyright and patents are different intellectual property rights that cannot
be interchanged with one another. A trademark is any visible sign capable of distinguishing
the goods (trademark) or services (service mark) of an enterprise and shall include a stamped
or marked container of goods. In relation thereto, a trade name means the name or
designation identifying or distinguishing an enterprise. Meanwhile, the scope of a copyright is
confined to literary and artistic works which are original intellectual creations in the literary
and artistic domain protected from the moment of their creation. Patentable inventions, on

the other hand, refer to any technical solution of a problem in any field of human activity
which is new, involves an inventive step and is industrially applicable.
Kho has no right to support her claim for the exclusive use of the subject trade name and its
container. The name and container of a beauty cream product are proper subjects of a
trademark inasmuch as the same falls squarely within its definition. In order to be entitled to
exclusively use the same in the sale of the beauty cream product, the user must sufficiently
prove that she registered or used it before anybody else did. The petitioners copyright and
patent registration of the name and container would not guarantee her right to the exclusive
use of the same for the reason that they are not appropriate subjects of the said intellectual
rights. Consequently, a preliminary injunction order cannot be issued for the reason that the
petitioner has not proven that she has a clear right over the said name and container to the
exclusion of others, not having proven that she has registered a trademark thereto or used
the same before anyone did.
NOTE:
Trademark, copyright, and patents are different intellectual property rights that cannot be
interchanged with one another. A trademark is any visible sign capable of distinguishing the
goods (trademark) or services (service mark) of an enterprise and shall include a stamped or
marked container goods. In relation thereto, a trade name means the name or designation
identifying or distinguishing an enterprise. Meanwhile, the scope of copyright is confined to
literary and artistic works which are original intellectual creations in the literary and artistic
domain protected from the moment of their creation. Patentable inventions, on the other
hand, refer to any technical solution of a problem in any field of human activity which is new,
involves an inventive step and is industrial applicable.

Pearl & Dean Inc. vs. Shoemart Inc, G.R. No. 148222, August 15,
2003
Facts: Plaintiff P and D is engaged in manufacturing advertising display units called as light
boxes. These are specialty printed posters with plastic sheets and illuminated back lights that
are mainly used as stationeries. They secure copyright registration over these advertising
light boxes and marketed using the trademark poster ads. They applied for the registration
of trademark before the Bureau of Patents, Trademark and Technology Transfer which was
approved on September 12, 1988. P and D negotiated with the defendant Shoemart for the
lease and installation of the light boxes in SM City North Edsa but was given an alternative to
have them leased to SM Makati and SM Cubao while the said branch was under
construction. Only the contract with SM Makati was returned with signature. In 1986 the
counsel of Shoemart informed P and D that it is rescinding its contract for SM Makati due to
non-performance of the terms thereof. Two years later, the Metro Industrial Services, the
same company contracted by the plaintiff to fabricate their display units offered to construct
light boxes for the Shoemart chain of stores wherein 10 light boxes were created for them.
Upon the termination of contract with Metro Industrial Service, SM hired EYD Rainbow
Advertising Co. to make light boxes. When P and D knew about the exact copies of its light
boxes installed at SM City branches in 1989, it investigated and found out that North Edsa
Marketing Inc (NEMI), sister company of SM was primarily selling ad space in lighted display
units. P and D sent letter to both NEMI and SM enjoining them to cease from using the
subject light boxes and remove them from SM establishments. It also demanded to
discontinue the use of its trademark poster ads with compensatory damages of 20M. SM
suspended the lease of light boxes in its branches while NEMI took down its advertisement for
poster ads. Claiming both failed to meet its demand P and D filed a case for infringement of
trademark, copyright, unfair competition and damages.

SM denied the charges against it and noted that the registration of mark poster ads is
limited to stationeries like letterhead and envelope. It further stresses that it independently
develop its own poster panels using techniques and available technology without notice to P
and D copyright. It further contends that poster ads is a generic name that cannot be

appropriated for a trademark and that P and Ds advertising display units contained no
copyright notice in violation of Section 27 of P.D. 49. NEMI likewise repleaded the averments
of SM and denied to have manufactured, installed or advertised the display units. The RTC
decided in favor of P and D but on appeal the Court of Appeals reversed its decision. In its
judgment its stand is that the copyright of the plaintiff is limited to its technical drawings
only and not the light boxes itself. When a drawing is technical, the copyright over the
drawing does not extend to actual object. Thus the CA is constrained to adopt the view of the
respondents that the poster ads is a generic poster term ads and in the absence of
convincing proof that such wording acquired secondary meaning, the P and Ds exclusive
right to use poster ads is limited to what is written on its certificate of registration which is
stationaries.
Issue: Whether or not there is patent infringement
Ruling: It held that the petitioner never secured patent for the light boxes. Without any
acquired rights to protect its invention it cannot legally prevent anyone from manufacturing
the same. There can be no infringement of a patent until a patent has been issued, since
whatever right one has to the invention covered by the patent arises alone from the grant of
patent. Inventors have no common law right to monopoly of his work. He has the right to
invent but once he voluntarily discloses it the world is free to copy and use it. A patent gives
the inventor the exclusive right to make, sell, use and exclude others from using his
invention. Assuming the petitioners ad units were patentable, he made them public by
submitting its engineering drawings to the National Library. To legally preclude others from
copying and profiting from ones invention, patent is a primary requirement. The ultimate
goal of a patent system is to bring new designs and technologies into the public domain
through disclosure. Ideas, once disclosed to the public without the protection of a valid
patent, are subject to appropriation without significant restraint. Therefore, without any
patent secured to protect ones work, there is no protection against its use by the public.
Petitioner mainly secured copyright in which its design is classified as class O limited to box
wraps, pictorial illustration, labels and tags. Thus its copyright is covered only the works
falling within this category. Moreover, the term poster ads is generic and incapable to be
used as trademark thus the respondents are not held guilty of the charges against them.

D. Functions of Intellectual Property Office

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Section 5, RA 8293

Section 5. Functions of the Intellectual Property Office (IPO). - 5.1. To administer and
implement the State policies declared in this Act, there is hereby created the
Intellectual Property Office (IPO) which shall have the following functions:
a) Examine applications for grant of letters patent for inventions and register
utility models and industrial designs;
b) Examine applications for the registration of marks, geographic indication,
integrated circuits;
c) Register technology transfer arrangements and settle disputes involving
technology transfer payments covered by the provisions of Part II, Chapter IX
on Voluntary Licensing and develop and implement strategies to promote and
facilitate technology transfer;
d) Promote the use of patent information as a tool for technology
development;
e) Publish regularly in its own publication the patents, marks, utility models
and industrial designs, issued and approved, and the technology transfer
arrangements registered;
f) Administratively adjudicate contested proceedings affecting intellectual
property rights; and

g) Coordinate with other government agencies and the private sector efforts
to formulate and implement plans and policies to strengthen the protection of
intellectual property rights in the country.
5.2. The Office shall have custody of all records, books, drawings, specifications,
documents, and other papers and things relating to intellectual property rights
applications filed with the Office.

E. The Intellectual Property Office

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Section 6 - 19, RA 8293

Section 6. The Organizational Structure of the IPO. - 6.1. The Office shall be headed
by a Director General who shall be assisted by two (2) Deputies Director General.
6.2. The Office shall be divided into six (6) Bureaus, each of which shall be headed by
a Director and assisted by an Assistant Director. These Bureaus are:
a) The Bureau of Patents;
b) The Bureau of Trademarks;
c) The Bureau of Legal Affairs;
d) The Documentation, Information and Technology Transfer Bureau;
e) The Management Information System and EDP Bureau; and
f) The Administrative, Financial and Personnel Services Bureau.
6.3. The Director General, Deputies Director General, Directors and Assistant
Directors shall be appointed by the President, and the other officers and employees of
the Office by the Secretary of Trade and Industry, conformably with and under the
Civil Service Law. (n)
Section 7. The Director General and Deputies Director General. - 7.1. Functions. - The
Director General shall exercise the following powers and functions:
a) Manage and direct all functions and activities of the Office, including the
promulgation of rules and regulations to implement the objectives, policies,
plans, programs and projects of the Office: Provided, That in the exercise of
the authority to propose policies and standards in relation to the following:
(1) the effective, efficient, and economical operations of the Office requiring
statutory enactment; (2) coordination with other agencies of government in
relation to the enforcement of intellectual property rights; (3) the recognition
of attorneys, agents, or other persons representing applicants or other
parties before the Office; and (4) the establishment of fees for the filing and
processing of an application for a patent, utility model or industrial design or
mark or a collective mark, geographic indication and other marks of
ownership, and for all other services performed and materials furnished by
the Office, the Director General shall be subject to the supervision of the
Secretary of Trade and Industry;
b) Exercise exclusive appellate jurisdiction over all decisions rendered by the
Director of Legal Affairs, the Director of Patents, the Director of Trademarks,
and the Director of the Documentation, Information and Technology Transfer
Bureau. The decisions of the Director General in the exercise of his appellate
jurisdiction in respect of the decisions of the Director of Patents, and the
Director of Trademarks shall be appealable to the Court of Appeals in

10

accordance with the Rules of Court; and those in respect of the decisions of
the Director of Documentation, Information and Technology Transfer Bureau
shall be appealable to the Secretary of Trade and Industry; and
c) Exercise original jurisdiction to resolve disputes relating to the terms of a
license involving the author's right to public performance or other
communication of his work. The decisions of the Director General in these
cases shall be appealable to the Secretary of Trade and Industry.
7.2. Qualifications. - The Director General and the Deputies Director General must
be natural born citizens of the Philippines, at least thirty-five (35) years of age on the
day of their appointment, holders of a college degree, and of proven competence,
integrity, probity and independence: Provided, That the Director General and at least
one (1) Deputy Director General shall be members of the Philippine Bar who have
engaged in the practice of law for at least ten (10) years: Provided further, That in the
selection of the Director General and the Deputies Director General, consideration
shall be given to such qualifications as would result, as far as practicable, in the
balanced representation in the Directorate General of the various fields of intellectual
property.
7.3. Term of Office. - The Director General and the Deputies Director General shall be
appointed by the President for a term of five (5) years and shall be eligible for
reappointment only once: Provided, That the first Director General shall have a first
term of seven (7) years. Appointment to any vacancy shall be only for the unexpired
term of the predecessor.
7.4. The Office of the Director General. - The Office of the Director General shall
consist of the Director General and the Deputies Director General, their immediate
staff and such Offices and Services that the Director General will set up to support
directly the Office of the Director General. (n)
Section 8. The Bureau of Patents. - The Bureau of Patents shall have the following
functions:
8.1. Search and examination of patent applications and the grant of patents;
8.2. Registration of utility models, industrial designs, and integrated circuits; and
8.3. Conduct studies and researches in the field of patents in order to assist the
Director General in formulating policies on the administration and examination of
patents. (n)
Section 9. The Bureau of Trademarks. - The Bureau of Trademarks shall have the
following functions:
9.1. Search and examination of the applications for the registration of marks,
geographic indications and other marks of ownership and the issuance of the
certificates of registration; and
9.2. Conduct studies and researches in the field of trademarks in order to assist the
Director General in formulating policies on the administration and examination of
trademarks. (n)
Section 10. The Bureau of Legal Affairs. - The Bureau of Legal Affairs shall have the
following functions:
10.1. Hear and decide opposition to the application for registration of marks;
cancellation of trademarks; subject to the provisions of Section 64, cancellation of
patents, utility models, and industrial designs; and petitions for compulsory licensing
of patents;
10.2. (a) Exercise original jurisdiction in administrative complaints for violations of
laws involving intellectual property rights: Provided, That its jurisdiction is limited to

11

complaints where the total damages claimed are not less than Two hundred thousand
pesos (P200,000): Provided further, That availment of the provisional remedies may
be granted in accordance with the Rules of Court. The Director of Legal Affairs shall
have the power to hold and punish for contempt all those who disregard orders or
writs issued in the course of the proceedings. (n)
(b) After formal investigation, the Director for Legal Affairs may impose one (1) or
more of the following administrative penalties:
(i) The issuance of a cease and desist order which shall specify the acts that
the respondent shall cease and desist from and shall require him to submit a
compliance report within a reasonable time which shall be fixed in the order;
(ii) The acceptance of a voluntary assurance of compliance or discontinuance
as may be imposed. Such voluntary assurance may include one or more of
the following:
(1) An assurance to comply with the provisions of the intellectual
property law violated;
(2) An assurance to refrain from engaging in unlawful and unfair acts
and practices subject of the formal investigation;
(3) An assurance to recall, replace, repair, or refund the money value
of defective goods distributed in commerce; and
(4) An assurance to reimburse the complainant the expenses and
costs incurred in prosecuting the case in the Bureau of Legal Affairs.
The Director of Legal Affairs may also require the respondent to submit
periodic compliance reports and file a bond to guarantee compliance of his
undertaking;
(iii) The condemnation or seizure of products which are subject of the
offense. The goods seized hereunder shall be disposed of in such manner as
may be deemed appropriate by the Director of Legal Affairs, such as by sale,
donation to distressed local governments or to charitable or relief
institutions, exportation, recycling into other goods, or any combination
thereof, under such guidelines as he may provide;
(iv) The forfeiture of paraphernalia and all real and personal properties which
have been used in the commission of the offense;
(v) The imposition of administrative fines in such amount as deemed
reasonable by the Director of Legal Affairs, which shall in no case be less
than Five thousand pesos (P5,000) nor more than One hundred fifty
thousand pesos (P150,000). In addition, an additional fine of not more than
One thousand pesos (P1,000) shall be imposed for each day of continuing
violation;
(vi) The cancellation of any permit, license, authority, or registration which
may have been granted by the Office, or the suspension of the validity thereof
for such period of time as the Director of Legal Affairs may deem reasonable
which shall not exceed one (1) year;
(vii) The withholding of any permit, license, authority, or registration which is
being secured by the respondent from the Office;
(viii) The assessment of damages;
(ix) Censure; and

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(x) Other analogous penalties or sanctions. (Secs. 6, 7, 8, and 9, Executive

Order No. 913 [1983]a)
10.3. The Director General may by Regulations establish the procedure to govern the
implementation of this Section. (n)
Section 11. The Documentation, Information and Technology Transfer Bureau. - The
Documentation, Information and Technology Transfer Bureau shall have the following
functions:
11.1. Support the search and examination activities of the Office through the
following activities:
(a) Maintain and upkeep classification systems whether they be national or
international such as the International Patent Classification (IPC) system;
(b) Provide advisory services for the determination of search patterns;
(c) Maintain search files and search rooms and reference libraries; and
(d) Adapt and package industrial property information.
11.2. Establish networks or intermediaries or regional representatives;
11.3. Educate the public and build awareness on intellectual property through the
conduct of seminars and lectures, and other similar activities;
11.4. Establish working relations with research and development institutions as well
as with local and international intellectual property professional groups and the like;
11.5. Perform state-of-the-art searches;
11.6. Promote the use of patent information as an effective tool to facilitate the
development of technology in the country;
11.7. Provide technical, advisory, and other services relating to the licensing and
promotion of technology, and carry out an efficient and effective program for
technology transfer; and
11.8. Register technology transfer arrangements, and settle disputes involving
technology transfer payments. (n)
Section 12. The Management Information Services and EDP Bureau. - The
Management Information Services and EDP Bureau shall:
12.1. Conduct automation planning, research and development, testing of systems,
contracts with firms, contracting, purchase and maintenance of equipment, design
and maintenance of systems, user consultation, and the like; and
12.2. Provide management information support and service to the Office. (n)
Section 13. The Administrative, Financial and Human Resource Development Service
Bureau. - 13.1. The Administrative Service shall: (a) Provide services relative to
procurement and allocation of supplies and equipment, transportation, messengerial
work, cashiering, payment of salaries and other Office's obligations, office
maintenance, proper safety and security, and other utility services; and comply with
government regulatory requirements in the areas of performance appraisal,
compensation and benefits, employment records and reports;
(b) Receive all applications filed with the Office and collect fees t herefor, and

13

(c) Publish patent applications and grants, trademark applications, and

registration of marks, industrial designs, utility models, geographic
indication, and lay-out-designs of integrated circuits registrations.
13.2. The Patent and Trademark Administration Services shall perform the following
functions among others:
(a) Maintain registers of assignments, mergings, licenses, and bibliographic
on patents and trademarks;
(b) Collect maintenance fees, issue certified copies of documents in its
custody and perform similar other activities; and
(c) Hold in custody all the applications filed with the office, and all patent
grants, certificate of registrations issued by the office, and the like.
13.3. The Financial Service shall formulate and manage a financial program to
ensure availability and proper utilization of funds; provide for an effective monitoring
system of the financial operations of the Office; and
13.4. The Human Resource Development Service shall design and implement human
resource development plans and programs for the personnel of the Office; provide for
present and future manpower needs of the organization; maintain high morale and
favorable employee attitudes towards the organization through the continuing design
and implementation of employee development programs. (n)
Section 14. Use of Intellectual Property Rights Fees by the IPO. - 14.1. For a more
effective and expeditious implementation of this Act, the Director General shall be
authorized to retain, without need of a separate approval from any government
agency, and subject only to the existing accounting and auditing rules and
regulations, all the fees, fines, royalties and other charges, collected by the Office
under this Act and the other laws that the Office will be mandated to administer, for
use in its operations, like upgrading of its facilities, equipment outlay, human
resource development, and the acquisition of the appropriate office space, among
others, to improve the delivery of its services to the public. This amount, which shall
be in addition to the Office's annual budget, shall be deposited and maintained in a
separate account or fund, which may be used or disbursed directly by the Director
General.
14.2. After five (5) years from the coming into force of this Act, the Director General
shall, subject to the approval of the Secretary of Trade and Industry, determine if the
fees and charges mentioned in Subsection 14.1 hereof that the Office shall collect are
sufficient to meet its budgetary requirements. If so, it shall retain all the fees and
charges it shall collect under the same conditions indicated in said Subsection 14.1
but shall forthwith, cease to receive any funds from the annual budget of the National
Government; if not, the provisions of said Subsection 14.1 shall continue to apply
until such time when the Director General, subject to the approval of the Secretary of
Trade and Industry, certifies that the above-stated fees and charges the Office shall
collect are enough to fund its operations. (n)
Section 15. Special Technical and Scientific Assistance. - The Director General is
empowered to obtain the assistance of technical, scientific or other qualified officers
and employees of other departments, bureaus, offices, agencies and instrumentalities
of the Government, including corporations owned, controlled or operated by the
Government, when deemed necessary in the consideration of any matter submitted to
the Office relative to the enforcement of the provisions of this Act. (Sec. 3, R.A. No.
165a)
Section 16. Seal of Office. - The Office shall have a seal, the form and design of
which shall be approved by the Director General. (Sec. 4, R.A. No. 165a)
Section 17. Publication of Laws and Regulations. - The Director General shall cause
to be printed and make available for distribution, pamphlet copies of this Act, other

14

pertinent laws, executive orders and information circulars relating to matters within
the jurisdiction of the Office. (Sec. 5, R.A. No. 165a)
Section 18. The IPO Gazette. - All matters required to be published under this Act
shall be published in the Office's own publication to be known as the IPO Gazette. (n)
Section 19. Disqualification of Officers and Employees of the Office. - All officers and
employees of the Office shall not apply or act as an attorney or patent agent of an
application for a grant of patent, for the registration of a utility model, industrial
design or mark nor acquire, except by hereditary succession, any patent or utility
model, design registration, or mark or any right, title or interest therein during their
employment and for one (1) year thereafter.

Pest Management Association of the Philippines vs. Fertilizer and

Pesticide Authority, G.R. No. 156041, February 21, 2007
Facts: The case commenced upon petitioners filing of a Petition For Declaratory Relief
With Prayer For Issuance Of A Writ Of Preliminary Injunction And/Or Temporary
Restraining Order with the RTC on January 4, 2002. Petitioner, a non-stock
corporation duly organized and existing under the laws of the Philippines, is an
association of pesticide handlers duly licensed by respondent Fertilizer and Pesticide
Authority (FPA). It questioned the validity of Section 3.12 of the 1987 Pesticide
Regulatory Policies and Implementing Guidelines, which provides thus:
3.12 Protection of Proprietary Data
Data submitted to support the first full or conditional registration of
a pesticide active ingredient in the Philippines will be granted
proprietary protection for a period of seven years from the date of
such registration. During this period subsequent registrants may
rely on these data only with third party authorization or otherwise
must submit their own data. After this period, all data may be freely
cited in support of registration by any applicant, provided convincing
proof is submitted that the product being registered is identical or
substantially similar to any current registered pesticide, or differs only in
ways that would not significantly increase the risk of unreasonable
adverse effects.
Pesticides granted provisional registration under P.D. 1144 will be
considered first registered in 1977, the date of the Decree.
Pesticide products in which data is still under protection shall be
referred to as proprietary pesticides, and all others as commodity
pesticides. (Emphasis supplied)

Petitioner argued that the specific provision on the protection of the proprietary data in FPAs
Pesticide Regulatory Policies and Implementing Guidelines is unlawful for going counter to
the objectives of Presidential Decree No. 1144 (P.D. No. 1144); for exceeding the limits of
delegated authority; and for encroaching on the exclusive jurisdiction of the Intellectual
Property Office.
Issue: Whether or not FPA encroach upon the jurisdiction of the Intellectual Property Office
Held: There is no encroachment upon the powers of the IPO granted under R.A. No. 8293,
otherwise known as the Intellectual Property Code of the Philippines. Section 5 thereof
enumerates the functions of the IPO. Nowhere in said provision does it state nor can it be
inferred that the law intended the IPO to have the exclusive authority to protect or promote
intellectual property rights in the Philippines. On the contrary, paragraph (g) of said Section
even provides that the IPO shall "[c]oordinate with other government agencies and the private
sector efforts to formulate and implement plans and policies to strengthen the protection of
intellectual property rights in the country." Clearly, R.A. No. 8293 recognizes that efforts to
fully protect intellectual property rights cannot be undertaken by the IPO alone. Other

15

agencies dealing with intellectual property rights are, therefore, not precluded from issuing
policies, guidelines and regulations to give protection to such rights.
In sum, the assailed provision in the 1987 Pesticide Regulatory Policies and Implementing
Guidelines granting protection to proprietary data is well within the authority of the FPA to
issue so as to carry out its purpose of controlling, regulating and developing the pesticide
industry

III. THE LAW ON PATENTS

-

Section 20 120.3, RA 8293

Manzano vs. CA, G.R. No. 113388. September 5, 1997

The primary purpose of the patent system is not the reward of the
individual but the advancement of arts and sciences. The function of
patent is to add to the sum of useful knowledge and one of the
purposes of the patent system is to encourage dissemination of
information concerning discoveries and invention.
-

Maguan vs. CA, G.R. L-45101 November 28, 1986

16