Professional Documents
Culture Documents
1. State Policies
Chapter II.
Sec. 2. Declaration of State Policy. - The State PATENTS
recognizes that an effective intellectual and
industrial property system is vital to the
development of domestic and creative activity, 1. What are Patentable
facilitates transfer of technology, attracts foreign
investments, and ensures market access for our 1.1. Inventions
products. It shall protect and secure the exclusive
rights of scientists, inventors, artists and other Sec. 21. Patentable Inventions. - Any technical
gifted citizens to their intellectual property and solution of a problem in any field of human
creations, particularly when beneficial to the activity which is new, involves an inventive
people, for such periods as provided in this Act. step and is industrially applicable shall be
The use of intellectual property bears a social patentable. It may be, or may relate to, a
function. To this end, the State shall promote the product, or process, or an improvement of any
diffusion of knowledge and information for the of the foregoing. (Sec. 7, RA 165a)
promotion of national development and progress
and the common good. Sec. 23. Novelty. - An invention shall not be
It is also the policy of the State to streamline considered new if it forms part of a prior art.
administrative procedures of registering patents, (Sec. 9, RA 165a)
trademarks and copyright, to liberalize the
registration on the transfer of technology, and to Sec. 24. Prior Art. - Prior art shall consist of:
enhance the enforcement of intellectual property
rights in the Philippines. 24.1. Everything which has been made
available to the public anywhere in the
world, before the filing date or the priority
date of the application claiming the
2. Intellectual Property Rights invention; and
Sec. 4.1 The term "intellectual property rights" 24.2. The whole contents of an application
consists of: for a patent, utility model, or industrial
1. Copyright and Related Rights; design registration, published in accordance
2. Trademarks and Service Marks; with this Act, filed or effective in the
3. Geographic Indications; Philippines, with a filing or priority date that
4. Industrial Designs; is earlier than the filing or priority date of
5. Patents; the application: Provided, That the
6. Layout-Designs (Topographies) of application which has validly claimed the
Integrated Circuits; and filing date of an earlier application under
7. Protection of Undisclosed Information Section 31 of this Act, shall be prior art
[TRIPS]. with effect as of the filing date of such
earlier application: Provided further, That
Kho v. CA, et al., 379 SCRA 410 [2002] the applicant or the inventor identified in
both applications are not one and the
Trademark, copyright and patents are different same. (Sec. 9, RA 165a)
intellectual property rights that cannot be
interchanged with one another. A trademark is any Sec. 26. Inventive Step. - An invention
visible sign capable of distinguishing the goods involves an inventive step if, having regard to
(trademark) or services (service mark) of an prior art, it is not obvious to a person skilled in
enterprise and shall include a stamped or marked the art at the time of the filing date or priority
container of goods. date of the application claiming the invention.
In relation thereto, a trade name means the name Sec. 27. Industrial Applicability. - An invention
or designation identifying or distinguishing an that can be produced and used in any industry
enterprise. Meanwhile, the scope of a copyright is shall be industrially applicable.
confined to literary and artistic works which are
original intellectual creations in the literary and 1.2. Utility Model
artistic domain protected from the moment of their
creation. Patentable inventions, on the other hand, Sec. 109.1 (a) An invention qualifies for
refer to any technical solution of a problem in any registration as a utility model if it is new and
field of human activity which is new, involves an industrially applicable.
inventive step and is industrially applicable. (b) Section 21, "Patentable Inventions", shall
apply except the reference to inventive step as
3. Reverse Reciprocity a condition of protection.
1.3. Industrial Designs Sec. 29. First to File Rule. - If two (2) or more
persons have made the invention separately
Sec. 112.1 An Industrial Design is any and independently of each other, the right to
composition of lines or colors or any three- the patent shall belong to the person who filed
dimensional form, whether or not associated an application for such invention, or where two
with lines or colors: Provided, That such or more applications are filed for the same
composition or form gives a special appearance invention, to the applicant who has the earliest
to and can serve as pattern for an industrial filing date or, the earliest priority date. (3rd
product or handicraft; Sentence, Sec. 10, RA 165a.)
36.1. The application shall contain one (1) or final action by the examiner. (Sec. 16, RA
more claims which shall define the matter for 165a)
which protection is sought. Each claim shall be
clear and concise, and shall be supported by 6.2. Classification and Search
the description.
Sec. 43. Classification and Search. - An
36.2. The Regulations shall prescribe the application that has complied with the formal
manner of the presentation of claims. requirement shall be classified and a search
conducted to determine the prior art.
Sec. 37. The Abstract. - The abstract shall consist
of a concise summary of the disclosure of the 6.3. Publication
invention as contained in the description, claims
and drawings in preferably not more than one Sec. 44. Publication of Patent Application. -
hundred fifty (150) words. It must be drafted in a
way which allows the clear understanding of the 44.1. The patent application shall be
technical problem, the gist of the solution of that published in the IPO Gazette together with
problem through the invention, and the principal a search document established by or on
use or uses of the invention. The abstract shall behalf of the Office citing any documents
merely serve for technical information. that reflect prior art, after the expiration of
eighteen (18) months from the filing date
6. Procedure for Grant of Patent or priority date.
40.2. If any of these elements is not Sec. 44.2. After publication of a patent
submitted within the period set by the application, any interested party may inspect
Regulations, the application shall be the application documents filed with the Office.
considered withdrawn.
Sec. 47. Observation by Third Parties. -
Sec. 41. According a Filing Date. - The Office Following the publication of the patent
shall examine whether the patent application application, any person may present
satisfies the requirements for the grant of date observations in writing concerning the
of filing as provided in Section 40 hereof. If the patentability of the invention. Such
date of filing cannot be accorded, the applicant observations shall be communicated to the
shall be given an opportunity to correct the applicant who may comment on them. The
deficiencies in accordance with the Office shall acknowledge and put such
implementing Regulations. If the application observations and comment in the file of the
does not contain all the elements indicated in application to which it relates.
Section 40, the filing date should be that date
when all the elements are received. If the 6.5. Request for Substantive Examination
deficiencies are not remedied within the
prescribed time limit, the application shall be Sec. 48. Request for Substantive Examination.
considered withdrawn. -
1. Formality Examination
48.1. The application shall be deemed
Sec. 42. Formality Examination. - withdrawn unless within six (6) months
from the date of publication under Section
42.1. After the patent application has been 41, a written request to determine whether
accorded a filing date and the required fees a patent application meets the
have been paid on time in accordance with requirements of Sections 21 to 27 and
the Regulations, the applicant shall comply Sections 32 to 39 and the fees have been
with the formal requirements specified by paid on time.
Section 32 and the Regulations within the
prescribed period, otherwise the application 48.2. Withdrawal of the request for
shall be considered withdrawn. examination shall be irrevocable and shall
not authorize the refund of any fee.
42.2. The Regulations shall determine the
procedure for the re-examination and SEC. 49. Amendment of Application. - An
revival of an application as well as the applicant may amend the patent application
appeal to the Director of Patents from any during examination: Provided, That such
amendment shall not include new matter the patent, and to conclude licensing
outside the scope of the disclosure contained in contracts for the same. (Sec. 37, RA 165a)
the application as filed.
Pearl and Dean, Inc v. Shoemart Inc (2003)
6.6. Grant or Refusal of Application
To be able to effectively and legally preclude others
Sec. 50. Grant of Patent. - from copying and profiting from the invention, a
patent is a primordial requirement. No patent, no
50.1. If the application meets the protection. The ultimate goal of a patent system is
requirements of this Act, the Office shall to bring new designs and technologies into the
grant the patent: Provided, That all the public domain through disclosure. Ideas, once
fees are paid on time. disclosed to the public without the protection of a
50.2. If the required fees for grant and valid patent, are subject to appropriation without
printing are not paid in due time, the significant restraint.
application shall be deemed to be
withdrawn. 8. Term
50.3. A patent shall take effect on the date Sec. 54. Term of Patent. - The term of a patent
of the publication of the grant of the patent shall be twenty (20) years from the filing date of
in the IPO Gazette. (Sec. 18, RA 165a) the application. (Sec. 21, RA 165a)
Sec. 51. Refusal of the Application. - Sec. 109.3. A utility model registration shall
expire, without any possibility of renewal, at the
51.1. The final order of refusal of the end of the seventh year after the date of the filing
examiner to grant the patent shall be of the application.
appealable to the Director in accordance
with this Act. Sec. 118. The Term of Industrial Design or Layout-
Design Registration. - 118.1. The registration of an
51.2. The Regulations shall provide for the industrial design shall be for a period of five (5)
procedure by which an appeal from the years from the filing date of the application.
order of refusal from the Director shall be
undertaken. 118.2. The registration of an industrial design
may be renewed for not more than two (2)
6.7. Publication of the Grant of Patent consecutive periods of five (5) years each, by
paying the renewal fee. xxx xxx xxx
Sec. 52. Publication Upon Grant of Patent. -
118.5. Registration of a layout-design shall be
52.1. The grant of the patent together with valid for a period often (10) years, without
other related information shall be published renewal, and such validity to be counted from
in the IPO Gazette within the time the date of commencement of the protection
prescribed by the Regulations. accorded to the layout-design. The protection
of a layout-design under this Act shall
52.2. Any interested party may inspect the commence:
complete description, claims, and drawings
of the patent on file with the Office. (Sec. a) on the date of the first commercial
18, RA 165a) exploitation, anywhere in the world, of
the layout-design by or with the
7. Rights Conferred by Patent consent of the right holder: Provided,
That an application for registration is
Sec. 71. Rights Conferred by Patent. - filed with the Intellectual Property
Office within two (2) years from such
71.1. date of first commercial exploitation;
A patent shall confer on its owner the following or
exclusive rights: b) on the filing date accorded to the
application for the registration of the
(a) Where the subject matter of a patent layout-design if the layout-design has
is a product, to restrain, prohibit and not been previously exploited
prevent any unauthorized person or commercially anywhere in the world.
entity from making, using, offering for
sale, selling or importing that 9. Limitations on Rights of Patentees
product;
(b) Where the subject matter of a patent Sec. 72. Limitations of Patent Rights. - The owner
is a process, to restrain, prevent or of a patent has no right to prevent third parties
prohibit any unauthorized person or from performing, without his authorization, the acts
entity from using the process, and referred to in Section 71 hereof in the following
from manufacturing, dealing in, circumstances:
using, selling or offering for sale, or
importing any product obtained 72.1. Using a patented product which has been
directly or indirectly from such put on the market in the Philippines by the
process. owner of the product, or with his express
consent, insofar as such use is performed after
71.2. Patent owners shall also have the that product has been so put on the said
right to assign, or transfer by succession market;
72.4. Where the act consists of the preparation 11. Patent Infringement
for individual cases, in a pharmacy or by a
medical professional, of a medicine in 11.1. Civil Action
accordance with a medical prescription or acts
concerning the medicine so prepared; Sec. 76. Civil Action for Infringement. -
72.5. Where the invention is used in any ship, 76.1. The making, using, offering for sale,
vessel, aircraft, or land vehicle of any other selling, or importing a patented product or
country entering the territory of the Philippines a product obtained directly or indirectly
temporarily or accidentally: Provided, That such from a patented process, or the use of a
invention is used exclusively for the needs of patented process without the authorization
the ship, vessel, aircraft, or land vehicle and of the patentee constitutes patent
not used for the manufacturing of anything to infringement.
be sold within the Philippines. (Secs. 38 and
39, RA 165a) 76.2. Any patentee, or anyone possessing
any right, title or interest in and to the
Sec. 73. Prior User. - patented invention, whose rights have been
infringed, may bring a civil action before a
73.1. Notwithstanding Section 72 hereof, any court of competent jurisdiction, to recover
prior user, who, in good faith was using the from the infringer such damages sustained
invention or has undertaken serious thereby, plus attorney’s fees and other
preparations to use the invention in his expenses of litigation, and to secure an
enterprise or business, before the filing date or injunction for the protection of his rights.
priority date of the application on which a
patent is granted, shall have the right to 76.3. If the damages are inadequate or
continue the use thereof as envisaged in such cannot be readily ascertained with
preparations within the territory where the reasonable certainty, the court may award
patent produces its effect. by way of damages a sum equivalent to
reasonable royalty.
73.2. The right of the prior user may only be
transferred or assigned together with his 76.4. The court may, according to the
enterprise or business, or with that part of his circumstances of the case, award damages
enterprise or business in which the use or in a sum above the amount found as actual
preparations for use have been made. (Sec. 40, damages sustained: Provided, That the
RA 165a) award does not exceed three (3) times the
amount of such actual damages.
Sec. 74. Use of Invention by Government. -
76.5. The court may, in its discretion,
74.1. A Government agency or third person order that the infringing goods, materials
authorized by the Government may exploit the and implements predominantly used in the
invention even without agreement of the patent infringement be disposed of outside the
owner where: channels of commerce or destroyed,
without compensation.
(a) the public interest, in particular,
national security, nutrition, health or 76.6. Anyone who actively induces the
the development of other sectors, as infringement of a patent or provides the
determined by the appropriate agency infringer with a component of a patented
of the government, so requires; or product or of a product produced because
(b) A judicial or administrative body has of a patented process knowing it to be
determined that the manner of especially adopted for infringing the
exploitation, by the owner of the patented invention and not suitable for
patent or his licensee, is anti- substantial non-infringing use shall be
competitive. liable as a contributory infringer and shall
be jointly and severally liable with the
74.2. The use by the Government, or third infringer. (Sec. 42, RA 165a)
person authorized by the Government shall be
subject, mutatis mutandis, to the conditions set
forth in Sections 95 to 97 and 100 to 102.
(Sec. 41, RA 165a)
11.2. Criminal Action
10. Notice Requirement
Sec. 84. Criminal Action for Repetition of substantially identical means and the principle or
Infringement. - If infringement is repeated by mode of operation must be substantially the same.
the infringer or by anyone in connivance with
him after finality of the judgment of the court Creser Precision Systems, Inc. v. CA, et al.,
against the infringer, the offenders shall, 286 SCRA 13 [1998]
without prejudice to the institution of a civil
action for damages, be criminally liable therefor Only the patentee or his successor-in-interest may
and, upon conviction, shall suffer imprisonment file an action for infringement. Moreover, there can
for the period of not less than six (6) months be no infringement of a patent until a patent has
but not more than three (3) years and/or a fine been issued, since whatever right one has to the
of not less than One hundred thousand pesos invention covered by the patent arises alone from
(P100,000) but not more than Three hundred the grant of patent. In short, a person or entity
thousand pesos (P300,000), at the discretion of who has not been granted letter of patent over an
the court. The criminal action herein provided invention and has not acquired any rights or title
shall prescribe in three (3) years from date of thereto either as an assignee or a licensee, has no
the commission of the crime. (Sec. 48, RA cause of action for infringement because the right
165a) to maintain an infringement suit depends upon the
existence of a patent.
Sony Computer v Supergreen, Inc. (2007)
SMITH KLINE BECKMAN CORPORATION v
Supergreen is engaged in reproduction and CA (2003)
distribution of counterfeit “PlayStation” game
software, consoles and accessories, violative of The doctrine of equivalents provides that an
Sony’s intellectual property rights. NBI served infringement also takes place when a device
search warrants on subject premises [Cavite] and appropriates a prior invention by incorporating its
seized a replicating machine and several units of innovative concept and, although with some
counterfeit “PlayStation” consoles, joy pads, modification and change, performs substantially the
housing, labels and game software. Respondent filed same function in substantially the same way to
Motion to Quash – which was granted by RTC – achieve substantially the same result… The
alleging impropriety of venue/lack of jurisdiction. principle or mode of operation must be the
SC: The alleged acts constitute a transitory or same or substantially the same.
continuing offense under Section 168, IPC [RA The doctrine of equivalents thus requires
8293] – in relation to Art. 189(1) RPC on unfair satisfaction of the function-means-and-result test,
competition. Respondent’s imitation of the general the patentee having the burden to show that all
appearance of petitioner’s goods was done three components of such equivalency test are
allegedly in Cavite, but sold such in Mandaluyong met.
City, Metro Manila.
14. Voluntary Licensing
12. Tests of infringement
Sec. 85. Voluntary License Contract. - To
Godines v. CA, 226 SCRA 576 [1993] encourage the transfer and dissemination of
technology, prevent or control practices and
Tests have been established to determine conditions that may in particular cases constitute
infringement. These are [a] literal infringement; an abuse of intellectual property rights having an
and [b] the doctrine of equivalents. In using literal adverse effect on competition and trade, all
infringement as a test, resort must be had in the technology transfer arrangements shall comply
first instance to the words of the claim. To with the provisions of this Chapter.
determine whether the particular item falls within
the literal meaning of the patent claims, the court Sec. 88. Mandatory Provisions. - The following
must juxtapose the claims of the patent and the provisions shall be included in voluntary license
accused product within the overall context of the contracts:
claims and specifications, to determine whether
there is exact identity of all material elements. On 88.1. That the laws of the Philippines shall
the other hand, under the doctrine of equivalents, govern the interpretation of the same and in
an infringement also occurs when a device the event of litigation, the venue shall be the
appropriates a prior invention by incorporating its proper court in the place where the licensee
innovative concept and, albeit with some has its principal office;
modification and change, performs substantially the
same function in substantially the same way to 88.2. Continued access to improvements in
achieve substantially the same result. techniques and processes related to the
technology shall be made available during the
13. Patent infringement period of the technology transfer arrangement;
88.4. The Philippine taxes on all payments conditions, or introducing innovation to it, as
relating to the technology transfer arrangement long as it does not impair the quality standards
shall be borne by the licensor. prescribed by the licensor;
Sec. 87. Prohibited Clauses. - Except in cases 87.14. Those which exempt the licensor for
under Section 91, the following provisions shall be liability for non-fulfillment of his responsibilities
deemed prima facie to have an adverse on under the technology transfer arrangement
competition and trade: and/or liability arising from third party suits
brought about by the use of the licensed
87.1. Those which impose upon the licensee product or the licensed technology; and
the obligation to acquire from a specific source
capital goods, intermediate products, raw 87.15. Other clauses with equivalent effects.
materials, and other technologies, or of (Sec. 33-C[2], RA 165a)
permanently employing personnel indicated by
the licensor; 15. Compulsory Licensing
87.2. Those pursuant to which the licensor Sec. 93. Grounds for Compulsory Licensing. - The
reserves the right to fix the sale or resale Director of Legal Affairs may grant a license to
prices of the products manufactured on the exploit a patented invention, even without the
basis of the license; agreement of the patent owner, in favor of any
person who has shown his capability to exploit the
87.3. Those that contain restrictions regarding invention, under any of the following
the volume and structure of production; circumstances:
87.4. Those that prohibit the use of 93.1. National emergency or other
competitive technologies in a non-exclusive circumstances of extreme urgency;
technology transfer agreement;
93.2. Where the public interest, in particular,
87.5. Those that establish a full or partial national security, nutrition, health or the
purchase option in favor of the licensor; development of other vital sectors of the
national economy as determined by the
87.6. Those that obligate the licensee to appropriate agency of the Government, so
transfer for free to the licensor the inventions requires; or
or improvements that may be obtained through
the use of the licensed technology; 93.3. Where a judicial or administrative body
has determined that the manner of exploitation
87.7. Those that require payment of royalties by the owner of the patent or his licensee is
to the owners of patents for patents which are anti-competitive; or
not used;
93.4. In case of public non-commercial use of
87.8. Those that prohibit the licensee to export the patent by the patentee, without satisfactory
the licensed product unless justified for the reason;
protection of the legitimate interest of the
licensor such as exports to countries where 93.5. If the patented invention is not being
exclusive licenses to manufacture and/or worked in the Philippines on a commercial
distribute the licensed product(s) have already scale, although capable of being worked,
been granted; without satisfactory reason: Provided, That the
importation of the patented article shall
87.9. Those which restrict the use of the constitute working or using the patent. (Secs.
technology supplied after the expiration of the 34, 34-A, and 34-B, RA 165a)
technology transfer arrangement, except in
cases of early termination of the technology Sec. 97. Compulsory License Based on
transfer arrangement due to reason(s) Interdependence of Patents. - If the invention
attributable to the licensee; protected by a patent, hereafter referred to as the
"second patent," within the country cannot be
87.10. Those which require payments for worked without infringing another patent, hereafter
patents and other industrial property rights referred to as the "first patent," granted on a prior
after their expiration, termination application or benefiting from an earlier priority, a
arrangement; compulsory license may be granted to the owner of
the second patent to the extent necessary for the
87.11. Those which require that the working of his invention, subject to the following
technology recipient shall not contest the conditions:
validity of any of the patents of the technology
supplier; 97.1. The invention claimed in the second
patent involves an important technical advance
87.12. Those which restrict the research and of considerable economic significance in
development activities of the licensee designed relation to the first patent;
to absorb and adapt the transferred technology
to local conditions or to initiate research and 97.2. The owner of the first patent shall be
development programs in connection with new entitled to a cross-license on reasonable terms
products, processes or equipment; to use the invention claimed in the second
patent;
87.13. Those which prevent the licensee from
adapting the imported technology to local
97.3. The use authorized in respect of the first 61.2. Where the grounds for cancellation relate
patent shall be non-assignable except with the to some of the claims or parts of the claim,
assignment of the second patent; and cancellation may be effected to such extent
only. (Secs. 28 and 29, RA 165a)
97.4. The terms and conditions of Sections 95,
96 and 98 to 100 of this Act. (Sec. 34-C, RA Sec. 62. Requirement of the Petition. - The petition
165a) for cancellation shall be in writing, verified by the
petitioner or by any person in his behalf who knows
16. Assignment and Transfer of Patent the facts, specify the grounds upon which it is
based, include a statement of the facts to be relied
Sec. 104. Assignment of Inventions. - An upon, and filed with the Office. Copies of printed
assignment may be of the entire right, title or publications or of patents of other countries, and
interest in and to the patent and the invention other supporting documents mentioned in the
covered thereby, or of an undivided share of the petition shall be attached thereto, together with the
entire patent and invention, in which event the translation thereof in English, if not in English
parties become joint owners thereof. An language. (Sec. 30, RA 165)
assignment may be limited to a specified territory.
(Sec. 51, RA 165) Sec. 63. Notice of Hearing. - Upon filing of a
petition for cancellation, the Director of Legal
Sec. 105. Form of Assignment. - The assignment Affairs shall forthwith serve notice of the filing
must be in writing, acknowledged before a notary thereof upon the patentee and all persons having
public or other officer authorized to administer oath grants or licenses, or any other right, title or
or perform notarial acts, and certified under the interest in and to the patent and the invention
hand and official seal of the notary or such other covered thereby, as appears of record in the Office,
officer. (Sec. 52, RA 165) and of notice of the date of hearing thereon on
such persons and the petitioner. Notice of the filing
Sec. 106. Recording. - of the petition shall be published in the IPO
Gazette. (Sec. 31, RA 165a)
106.1. The Office shall record assignments,
licenses and other instruments relating to the Sec. 66. Effect of Cancellation of Patent or Claim. -
transmission of any right, title or interest in The rights conferred by the patent or any specified
and to inventions, and patents or application claim or claims cancelled shall terminate. Notice of
for patents or inventions to which they relate, the cancellation shall be published in the IPO
which are presented in due form to the Office Gazette. Unless restrained by the Director General,
for registration, in books and records kept for the decision or order to cancel by Director of Legal
the purpose. The original documents together Affairs shall be immediately executory even
with a signed duplicate thereof shall be filed, pending appeal. (Sec. 32, RA 165a)
and the contents thereof should be kept
confidential. If the original is not available, an
authenticated copy thereof in duplicate may be Chapter III.
filed. Upon recording, the Office shall retain the
duplicate, return the original or the INDUSTRIAL DESIGNSAND LAY-OUT
authenticated copy to the party who filed the DESIGNS (TOPOGRAPHIES) OF
same and notice of the recording shall be
published in the IPO Gazette.
INTEGRATED CIRCUITS
1.1. Rights Conferred on Registered Owner of Director of Legal Affairs to cancel the industrial
Lay-out Design design on any of the following grounds:
Sec. 119.4. Rights Conferred to the Owner of a (a) If the subject matter of the industrial
Layout-Design Registration. - The owner of a design is not registerable within the
layout-design registration shall enjoy the following terms of Sections 112 and 113;
rights: (b) If the subject matter is not new; or
(c) If the subject matter of the industrial
(1) to reproduce, whether by incorporation in design extends beyond the content of
an integrated circuit or otherwise, the the application as originally filed.
registered layout-design in its entirety or
any part thereof, except the act of 120.2. Where the grounds for cancellation
reproducing any part that does not relate to a part of the industrial design,
comply with the requirement of cancellation may be effected to such extent
originality; and only. The restriction may be effected in the
(2) to sell or otherwise distribute for form of an alteration of the effected features of
commercial purposes the registered the design.
layout design, an article or an integrated
circuit in which the registered layout- 120.3. Grounds for Cancellation of Layout-
design is incorporated. Design of Integrated Circuits.- Any interested
person may petition that the registration of a
Sec. 119.5. Limitations of Layout Rights. - The layout-design be canceled on the ground that:
owner of a layout design has no right to prevent
third parties from reproducing, selling or otherwise (a) the layout-design is not protectable
distributing for commercial purposes the registered under this Act;
layout-design in the following circumstances: (b) the right holder is not entitled to
protection under this Act; or
(1) Reproduction of the registered layout- (c) where the application for registration
design for private purposes or for the of the layout-design, was not filed
sole purpose of evaluation, analysis, within two (2) years from its first
research or teaching; commercial exploitation anywhere in
(3) Where the act is performed in respect of a the world.
layout-design created on the basis of such
analysis or evaluation and which is itself Where the grounds for cancellation are
original in the meaning as provided established with respect only to a part of the
herein; layout-design, only the corresponding part of
(4) Where the act is performed in respect of a the registration shall be canceled.
registered lay-out-design, or in respect of Any canceled layout-design registration or part
an integrated circuit in which such a thereof, shall be regarded as null and void from
layout-design is incorporated, that has the beginning and may be expunged from the
been put on the market by or with the records of the Intellectual Property Office.
consent of the right holder; Reference to all canceled layout-design
(5) In respect of an integrated circuit where registration shall be published in the IPO
the person performing or ordering such Gazette.
an act did not know and had no
reasonable ground to know when
acquiring the integrated circuit or the
article incorporating such an integrated Chapter IV.
circuit, that it incorporated an unlawfully TRADEMARKS
reproduced layout-design: Provided,
however, That after the time that such
person has received sufficient notice that 1. Marks and Names
the layout-design was unlawfully
reproduced, that person may perform any Sec. 121. Definitions. - As used in Part III, the
of the said acts only with respect to the following terms have the following meanings:
stock on hand or ordered before such
time and shall be liable to pay to the right 121.1. "Mark" means any visible sign capable
holder a sum equivalent to at least 5% of of distinguishing the goods (trademark) or
net sales or such other reasonable royalty services (service mark) of an enterprise and
as would be payable under a freely shall include a stamped or marked container of
negotiated license in respect of such goods; (Sec. 38, RA 166a)
layout-design; or
(6) Where the act is performed in respect of 121.2. "Collective mark" means any visible
an identical layout-design which is original sign designated as such in the application for
and has been created independently by a registration and capable of distinguishing the
third party. origin or any other common characteristic,
including the quality of goods or services of
1.2. Grounds for Cancellation of Registration different enterprises which use the sign under
the control of the registered owner of the
Sec. 120. Cancellation of Design Registration. – collective mark; (Sec. 40, RA 166a)
120.1. At any time during the term of the 121.3. "Trade name" means the name or
industrial design registration, any person upon designation identifying or distinguishing an
payment of the required fee, may petition the enterprise; (Sec. 38, RA 166a)
(k) Consists of shapes that may be determined on the basis of visual, aural,
necessitated by technical factors or by the connotative comparisons and overall impressions
nature of the goods themselves or factors engendered by the marks in controversy as they
that affect their intrinsic value; are encountered in the marketplace. The totality or
(l) Consists of color alone, unless defined by holistic test only relies on visual comparisons
a given form; or between two trademarks whereas the dominancy
(m) Is contrary to public order or morality. test relies not only on the visual but also on the
aural and connotative comparisons and overall
A mark is valid if it is distinctive and hence not impressions between the two trademarks.
barred from registration under the Trademark
Law. However, once registered, not only the McDonald’s Corporation v. L.C. Big Mak
mark’s validity but also the registrant’s ownership Burger, Inc., et al., 437 SCRA 10 [2004]
thereof is prima facie presumed.
This Court, xxx, has relied on the dominancy test
5. Tests to Determine Confusing Similarity rather than the holistic test. The dominancy test
considers the dominant features in the competing
Between Marks
marks in determining whether they are confusingly
similar. Under the dominancy test, courts give
5.1. Colorable imitation greater weight to the similarity of the appearance
of the product arising from the adoption of the
Societe des Produits Nestlé, S.A. v. CA, 356 dominant features of the registered mark,
SCRA 207 [2001] disregarding minor differences. Courts will
consider more the aural and visual impressions
Colorable imitation denotes such a close or created by the marks in the public mind, giving
ingenious imitation as to be calculated to deceive little weight to factors like prices, quality, sales
ordinary persons, or such a resemblance to the outlets and market segments.
original as to deceive an ordinary purchaser giving
such attention as a purchaser usually gives, as to McDonald’s Corp v MACJOY Fastfood Corp
cause him to purchase the one supposing it to be (2007)
the other. In ascertaining whether one mark is
confusingly similar to or is a colorable imitation of Applying the dominancy test to the instant case,
another, no set rules can be deduced. Each case the Court finds that herein petitioner’s
must be decided on its own merits. The “MCDONALD’S” and respondent’s “MACJOY” marks
complexities attendant to an accurate assessment are confusingly similar with each other such that an
of likelihood of confusion require that the entire ordinary purchaser can conclude an association or
panoply of elements constituting the relevant relation between the marks.
factual landscape be comprehensively examined. To begin with, both marks use the corporate “M”
design logo and the prefixes “Mc” and/or “Mac” as
dominant features. The first letter “M” in both
5.2. Holistic test marks puts emphasis on the prefixes “Mc” and/or
“Mac” by the similar way in which they are depicted
Del Monte Corporation, et al. v. CA, 181 SCRA i.e. in an arch-like, capitalized and stylized manner.
410 [1990] For sure, it is the prefix “Mc,” an abbreviation of
“Mac,” which visually and aurally catches the
To determine whether a trademark has been attention of the consuming public. Verily, the word
infringed, we must consider the mark as a whole “MACJOY” attracts attention the same way as did
and not as dissected. If the buyer is deceived, it is “McDonalds,” “MacFries,” “McSpaghetti,” “McDo,”
attributable to the marks as a totality, not usually “Big Mac” and the rest of the MCDONALD’S marks
to any part of it. The court therefore should be which all use the prefixes Mc and/or Mac.
guided by its first impression, for the buyer acts Besides and most importantly, both trademarks are
quickly and is governed by a casual glance, the used in the sale of fastfood products. Indisputably,
value of which may be dissipated as soon as the the respondent’s trademark application for the
court assumed to analyze carefully the respective “MACJOY & DEVICE” trademark covers goods under
features of the mark. Classes 29 and 30 of the International
Classification of Goods, namely, fried chicken,
chicken barbeque, burgers, fries, spaghetti, etc.
5.3. Test of dominancy Likewise, the petitioner’s trademark registration for
the MCDONALD’S marks in the Philippines covers
Asia Brewery v. CA and San Miguel, 224 SCRA goods which are similar if not identical to those
437 [1993] covered by the respondent’s application.
Infringement is determined by the test of
“dominancy” rather than by differences or
variations in the details of one trademark and of 6. Well-known Marks
another. Similarity in size, form and color, while
relevant, is not conclusive. If the competing Sec. 123.1. (e) Is identical with, or confusingly
trademark contains the main or essential or similar to, or constitutes a translation of a mark
dominant features of another, and confusion is which is considered by the competent authority of
likely to result, infringement takes place. the Philippines to be well-known internationally and
in the Philippines, whether or not it is registered
Societe Des Produits Nestle, S.A. v. CA (2001) here, as being already the mark of a person other
than the applicant for registration, and used for
The totality or holistic test is contrary to the identical or similar goods or services: Provided,
elementary postulate of the law on trademarks and That in determining whether a mark is well-known,
unfair competition that confusing similarity is to be account shall be taken of the knowledge of the
relevant sector of the public, rather than of the principal parts of the mark which
public at large, including knowledge in the are in that color;
Philippines which has been obtained as a result of (h) Where the mark is a three-
the promotion of the mark; dimensional mark, a statement to
(f) Is identical with, or confusingly similar to, or that effect;
constitutes a translation of a mark considered well- (i) One or more reproductions of the
known in accordance with the preceding paragraph, mark, as prescribed in the
which is registered in the Philippines with respect Regulations;
to goods or services which are not similar to those (j) A transliteration or translation of the
with respect to which registration is applied for: mark or of some parts of the mark,
Provided, That use of the mark in relation to those as prescribed in the Regulations;
goods or services would indicate a connection (k) The names of the goods or services
between those goods or services, and the owner of for which the registration is sought,
the registered mark: Provided further, That the grouped according to the classes of
interests of the owner of the registered mark are the Nice Classification, together with
likely to be damaged by such use; the number of the class of the said
Classification to which each group of
Sec. 147.2. The exclusive right of the owner of a goods or services belongs; and
well-known mark defined in Subsection 123.1(e) (l) A signature by, or other self-
which is registered in the Philippines, shall extend identification of, the applicant or his
to goods and services which are not similar to representative.
those in respect of which the mark is registered:
Provided, That use of that mark in relation to those 124.2. The applicant or the registrant shall
goods or services would indicate a connection file a declaration of actual use of the mark
between those goods or services and the owner of with evidence to that effect, as prescribed
the registered mark: Provided, further, That the by the Regulations within three (3) years
interests of the owner of the registered mark are from the filing date of the application.
likely to be damaged by such use. Otherwise, the application shall be refused
or the mark shall be removed from the
7. Registration Register by the Director.
7.1. Requirements for Registration 124.3. One (1) application may relate to
several goods and/or services, whether
Sec. 124. Requirements of Application. - they belong to one (1) class or to several
classes of the Nice Classification.
124.1. The application for the registra
(a) A request for registration; 124.4. If during the examination of the
tion of the mark shall be in Filipino or in English application, the Office finds factual basis to
and shall contain the following: reasonably doubt the veracity of any
(b) The name and address of the indication or element in the application, it
applicant; may require the applicant to submit
(c) The name of a State of which the sufficient evidence to remove the doubt.
applicant is a national or where he (Sec. 5, RA 166a)
has domicile; and the name of a
State in which the applicant has a
real and effective industrial or 7.2. Priority Right
commercial establishment, if any;
(d) Where the applicant is a juridical Sec. 131. Priority Right. -
entity, the law under which it is
organized and existing; 131.1. An application for registration of a mark
(e) The appointment of an agent or filed in the Philippines by a person referred to
representative, if the applicant is in Section 3, and who previously duly filed an
not domiciled in the Philippines; application for registration of the same mark in
(f) Where the applicant claims the one of those countries, shall be considered as
priority of an earlier application, an filed as of the day the application was first filed
indication of: in the foreign country.
1) The name of the State with
whose national office the earlier 131.2. No registration of a mark in the
application was filed or it filed Philippines by a person described in this section
with an office other than a shall be granted until such mark has been
national office, the name of registered in the country of origin of the
that office, applicant.
2) The date on which the earlier
application was filed, and 131.3. Nothing in this section shall entitle the
3) Where available, the application owner of a registration granted under this
number of the earlier section to sue for acts committed prior to the
application; date on which his mark was registered in this
(g) Where the applicant claims color as country: Provided, That, notwithstanding the
a distinctive feature of the mark, a foregoing, the owner of a well-known mark as
statement to that effect as well as defined in Section 123.1(e) of this Act, that is
the name or names of the color or not registered in the Philippines, may, against
colors claimed and an indication, in an identical or confusingly similar mark, oppose
respect of each color, of the its registration, or petition the cancellation of
its registration or sue for unfair competition,
without prejudice to availing himself of other fulfilled, it shall, upon payment of the
remedies provided for under the law. prescribed fee. Forthwith cause the application,
as filed, to be published in the prescribed
131.4. In like manner and subject to the same manner.
conditions and requirements, the right provided
in this section may be based upon a 133.3. If after the examination, the applicant
subsequent regularly filed application in the is not entitled to registration for any reason,
same foreign country: Provided, That any the Office shall advise the applicant thereof and
foreign application filed prior to such the reasons therefor. The applicant shall have a
subsequent application has been withdrawn, period of four (4) months in which to reply or
abandoned, or otherwise disposed of, without amend his application, which shall then be re-
having been laid open to public inspection and examined. The Regulations shall determine the
without leaving any rights outstanding, and has procedure for the re-examination or revival of
not served, nor thereafter shall serve, as a an application as well as the appeal to the
basis for claiming a right of priority. (Sec. 37, Director of Trademarks from any final action by
RA 166a) the Examiner.
infringement takes place at the moment any of pesos (P50,000) to Two hundred thousand pesos
the acts stated in Subsection (P200,000), shall be imposed on any person who is
found guilty of committing any of the acts
155.1. or this subsection are committed mentioned in Section 155, Section 168 and
regardless of whether there is actual sale of Subsection 169.1. (Arts. 188 and 189, Revised
goods or services using the infringing material. Penal Code)
(Sec. 22, RA No 166a)
Sec. 159. Limitations to Actions for Infringement. -
Sec. 156. Actions, and Damages and Injunction for Notwithstanding any other provision of this Act, the
Infringement. - remedies given to the owner of a right infringed
under this Act shall be limited as follows:
156.1. The owner of a registered mark may
recover damages from any person who 159.1. Notwithstanding the provisions of
infringes his rights, and the measure of the Section 155 hereof, a registered mark shall
damages suffered shall be either the have no effect against any person who, in good
reasonable profit which the complaining party faith, before the filing date or the priority date,
would have made, had the defendant not was using the mark for the purposes of his
infringed his rights, or the profit which the business or enterprise: Provided, That his right
defendant actually made out of the may only be transferred or assigned together
infringement, or in the event such measure of with his enterprise or business or with that part
damages cannot be readily ascertained with of his enterprise or business in which the mark
reasonable certainty, then the court may award is used.
as damages a reasonable percentage based
upon the amount of gross sales of the 159.2. Where an infringer who is engaged
defendant or the value of the services in solely in the business of printing the mark or
connection with which the mark or trade name other infringing materials for others is an
was used in the infringement of the rights of innocent infringer, the owner of the right
the complaining party. (Sec. 23, First Par., RA infringed shall be entitled as against such
166a) infringer only to an injunction against future
printing.
156.2. On application of the complainant, the
court may impound during the pendency of the 159.3. Where the infringement complained of
action, sales invoices and other documents is contained in or is part of paid advertisement
evidencing sales. in a newspaper, magazine, or other similar
156.3. In cases where actual intent to mislead periodical or in an electronic communication,
the public or to defraud the complainant is the remedies of the owner of the right infringed
shown, in the discretion of the court, the as against the publisher or distributor of such
damages may be doubled. (Sec. 23, First Par., newspaper, magazine, or other similar
RA 166) periodical or electronic communication shall be
limited to an injunction against the
156.4. The complainant, upon proper showing, presentation of such advertising matter in
may also be granted injunction. (Sec. 23, future issues of such newspapers, magazines,
Second Par., RA 166a) or other similar periodicals or in future
transmissions of such electronic
Sec. 157. Power of Court to Order Infringing communications. The limitations of this
Material Destroyed. - subparagraph shall apply only to innocent
infringers: Provided, That such injunctive relief
157.1. In any action arising under this Act, in shall not be available to the owner of the right
which a violation of any right of the owner of infringed with respect to an issue of a
the registered mark is established, the court newspaper, magazine, or other similar
may order that goods found to be infringing be, periodical or an electronic communication
without compensation of any sort, disposed of containing infringing matter where restraining
outside the channels of commerce in such a the dissemination of such infringing matter in
manner as to avoid any harm caused to the any particular issue of such periodical or in an
right holder, or destroyed; and all labels, signs, electronic communication would delay the
prints, packages, wrappers, receptacles and delivery of such issue or transmission of such
advertisements in the possession of the electronic communication is customarily
defendant, bearing the registered mark or conducted in accordance with the sound
trade name or any reproduction, counterfeit, business practice, and not due to any method
copy or colorable imitation thereof, all plates, or device adopted to evade this section or to
molds, matrices and other means of making prevent or delay the issuance of an injunction
the same, shall be delivered up and destroyed. or restraining order with respect to such
infringing matter.
157.2. In regard to counterfeit goods, the
simple removal of the trademark affixed shall
not be sufficient other than in exceptional cases Mighty Corporation v. E. & J. Gallo Winery,
which shall be determined by the Regulations, 434 SCRA 473 [2004]
to permit the release of the goods into the
channels of commerce. (Sec. 24, RA 166a). A crucial issue in any trademark infringement case
is the likelihood of confusion, mistake or deceit as
Sec. 170. Penalties. - Independent of the civil and to the identity, source or origin of the goods or
administrative sanctions imposed by law, a criminal identity of the business as a consequence of using
penalty of imprisonment from two (2) years to five a certain mark. Likelihood of confusion is
(5) years and a fine ranging from Fifty thousand admittedly a relative term, to be determined rigidly
according to the particular (and sometimes by displaying with the mark the words "Registered
peculiar) circumstances of each case. In Mark" or the letter R within a circle or if the
determining likelihood of confusion, the court must defendant had otherwise actual notice of the
consider: [a] the resemblance between the registration. (Sec. 21, RA 166a)
trademarks; [b] the similarity of the goods to
which the trademarks are attached; [c] the likely 9. Unfair Competition
effect on the purchaser; and [d] the registrant’s
express or implied consent and other fair and Sec. 168. Unfair Competition, Rights, Regulation
equitable considerations. and Remedies. -
McDonald’s Corporation v. L.C. Big Mak 168.1. A person who has identified in the mind
Burger, Inc., et al., 437 SCRA 10 [2004] of the public the goods he manufactures or
deals in, his business or services from those of
To establish trademark infringement, the following others, whether or not a registered mark is
elements must be shown: [1] the validity of the employed, has a property right in the goodwill
mark; [2] the plaintiff’s ownership of the mark; of the said goods, business or services so
and [3] the use of the mark or its colorable identified, which will be protected in the same
imitation by the alleged infringer results in manner as other property rights.
“likelihood of confusion.” Of these, it is the element
of likelihood of confusion that is the gravamen of 168.2. Any person who shall employ deception
trademark infringement. Two types of confusion or any other means contrary to good faith by
arise from the use of similar or colorable imitation which he shall pass off the goods manufactured
marks, namely, confusion of goods (product by him or in which he deals, or his business, or
confusion) and confusion of business (“source or services for those of the one having established
origin confusion). While there is confusion of goods such goodwill, or who shall commit any acts
when the products are competing, confusion of calculated to produce said result, shall be guilty
business exists when the products are non- of unfair competition, and shall be subject to an
competing but related enough to produce confusion action therefor.
of affiliation.
168.3. In particular, and without in any way
Canon Kabushiki Kaisha v. CA, et al., 336 limiting the scope of protection against unfair
SCRA 266 [2000] competition, the following shall be deemed
guilty of unfair competition:
The likelihood of confusion of goods or business is a
relative concept, to be determined according to the (a) Any person, who is selling his goods
particular, and sometimes peculiar, circumstances and gives them the general
of each case. In cases of confusion of business or appearance of goods of another
origin, the question that usually arises is whether manufacturer or dealer, either as to
the respective goods or services of the senior user the goods themselves or in the
and the junior user are so related as to likely cause wrapping of the packages in which
confusion of business or origin, and thereby render they are contained, or the devices or
the trademark or tradenames confusingly similar. words thereon, or in any other feature
Goods are related when they belong to the same of their appearance, which would be
class or have the same descriptive properties; likely to influence purchasers to
when they possess the same physical attributes or believe that the goods offered are
essential characteristics with reference to their those of a manufacturer or dealer,
form, composition, texture or quality. They may other than the actual manufacturer or
also be related because they serve the same dealer, or who otherwise clothes the
purpose or are sold through the same channels of goods with such appearance as shall
distribution. deceive the public and defraud
another of his legitimate trade, or any
Samson v. Daway, 434 SCRA 612 [2004] subsequent vendor of such goods or
any agent of any vendor engaged in
R.A. No. 8293 and R.A. No. 166 are special laws selling such goods with a like purpose;
conferring jurisdiction over violations of intellectual (b) Any person who by any artifice, or
property rights to the Regional Trial Court. They device, or who employs any other
should therefore prevail over R.A. No. 7691, which means calculated to induce the false
is a general law. Hence, jurisdiction is properly belief that such person is offering the
lodged with the Regional Trial Court even if the services of another who has identified
penalty therefore is imprisonment of less than six such services in the mind of the
years, or from 2 to 5 years and a fine ranging from public; or
P50,000 to P200,000. (c) Any person who shall make any false
statement in the course of trade or
who shall commit any other act
8.1. Notice Requirement contrary to good faith of a nature
calculated to discredit the goods,
Sec. 158. Damages; Requirement of Notice. - In business or services of another.
any suit for infringement, the owner of the
registered mark shall not be entitled to recover 168.4. The remedies provided by Sections
profits or damages unless the acts have been 156, 157 and 161 shall apply mutatis
committed with knowledge that such imitation is mutandis. (Sec. 29, RA 166a)
likely to cause confusion, or to cause mistake, or to
deceive. Such knowledge is presumed if the
registrant gives notice that his mark is registered
Joaquin, Jr., et al. v. Drilon, et al., 302 SCRA Ching Kian Chuan v. Court of Appeals, 363
225 [1999] SCRA 142 [2001]
A person to be entitled to a copyright must be the similar kind wherein the author primarily derives
original creator of the work. He must have created gain from the proceeds of reproductions. (Sec. 33,
it by his own skill, labor, and judgment without PD No. 49)
directly copying or evasively imitating the work of
another. 8. Moral Rights
Ching v Salinas (2005) Sec. 193. Scope of Moral Rights. - The author of a
work shall, independently of the economic rights in
Ownership of copyrighted material is shown by Section 177 or the grant of an assignment or
proof of originality and copyrightability. By license with respect to such right, have the right:
originality is meant that the material was not
copied, and evidences at least minimal creativity; 193.1. To require that the authorship of the
that it was independently created by the author works be attributed to him, in particular, the
and that it possesses at least same minimal degree right that his name, as far as practicable, be
of creativity. Copying is shown by proof of access indicated in a prominent way on the copies,
to copyrighted material and substantial similarity and in connection with the public use of his
between the two works. The applicant must thus work;
demonstrate the existence and the validity of his
copyright because in the absence of copyright 193.2. To make any alterations of his work
protection, even original creation may be freely prior to, or to withhold it from publication;
copied.
193.3. To object to any distortion, mutilation
6. Economic Rights or other modification of, or other derogatory
action in relation to, his work which would be
Sec. 177. Copy or Economic Rights. - Subject to prejudicial to his honor or reputation; and
the provisions of Chapter VIII, copyright or
economic rights shall consist of the exclusive right 193.4. To restrain the use of his name with
to carry out, authorize or prevent the following respect to any work not of his own creation or
acts: in a distorted version of his work. (Sec. 34, PD
No. 49)
177.1. Reproduction of the work or substantial
portion of the work; 9. Ownership of Copyright
177.2. Dramatization, translation, adaptation, Sec. 178. Rules on Copyright Ownership. -
abridgment, arrangement or other Copyright ownership shall be governed by the
transformation of the work; following rules:
177.3. The first public distribution of the 178.1. Subject to the provisions of this
original and each copy of the work by sale or section, in the case of original literary and
other forms of transfer of ownership; artistic works, copyright shall belong to the
author of the work;
177.4. Rental of the original or a copy of an
audiovisual or cinematographic work, a work 178.2. In the case of works of joint authorship,
embodied in a sound recording, a computer the co-authors shall be the original owners of
program, a compilation of data and other the copyright and in the absence of agreement,
materials or a musical work in graphic form, their rights shall be governed by the rules on
irrespective of the ownership of the original or co-ownership. If, however, a work of joint
the copy which is the subject of the rental; authorship consists of parts that can be used
separately and the author of each part can be
177.5. Public display of the original or a copy identified, the author of each part shall be the
of the work; original owner of the copyright in the part that
he has created;
177.6. Public performance of the work; and
178.3. In the case of work created by an
177.7. Other communication to the public of author during and in the course of his
the work (Sec. 5, PD No. 49a) employment, the copyright shall belong to:
190.2. Copies imported as allowed by this applies to posthumous works. (Sec. 21, First
Section may not lawfully be used in any way to Sentence, PD No. 49a)
violate the rights of owner the copyright or
annul or limit the protection secured by this 213.2. In case of works of joint authorship, the
Act, and such unlawful use shall be deemed an economic rights shall be protected during the
infringement and shall be punishable as such life of the last surviving author and for fifty
without prejudice to the proprietor’s right of (50) years after his death. (Sec. 21, Second
action. Sentence, PD No. 49)
Sec. 192. Notice of Copyright. - Each copy of a 180.2. The copyright is not deemed assigned
work published or offered for sale may contain a inter vivos in whole or in part unless there is a
notice bearing the name of the copyright owner, written indication of such intention.
and the year of its first publication, and, in copies
produced after the creator’s death, the year of such 180.3. The submission of a literary,
death. (Sec. 27, PD No. 49a) photographic or artistic work to a newspaper,
magazine or periodical for publication shall
constitute only a license to make a single
13. Duration of Copyright publication unless a greater right is expressly
granted. If two (2) or more persons jointly own
Sec. 213. Term of Protection. - 213.1. Subject to a copyright or any part thereof, neither of the
the provisions of Subsections 213.2 to 213.5, the owners shall be entitled to grant licenses
copyright in works under Sections 172 and 173 without the prior written consent of the other
shall be protected during the life of the author and owner or owners. (Sec. 15, PD No. 49a)
for fifty (50 years after his death. This rule also
Sec. 181. Copyright and Material Object. - The in any manner or form; the placing of these
copyright is distinct from the property in the reproductions in the market and the right of
material object subject to it. Consequently, the rental or lending;
transfer or assignment of the copyright shall not
itself constitute a transfer of the material object. 208.2. The right to authorize the first public
Nor shall a transfer or assignment of the sole copy distribution of the original and copies of their
or of one or several copies of the work imply sound recordings through sale or rental or
transfer or assignment of the copyright. (Sec. 16, other forms of transferring ownership; and
PD No. 49)
208.3. The right to authorize the commercial
Sec. 182. Filing of Assignment of License. - An rental to the public of the original and copies of
assignment or exclusive license may be filed in their sound recordings, even after distribution
duplicate with the National Library upon payment by them by or pursuant to authorization by the
of the prescribed fee for registration in books and producer. (Sec. 46, PD No. 49a)
records kept for the purpose. Upon recording, a
copy of the instrument shall be, returned to the Sec. 211. Scope of Right. - Subject to the
sender with a notation of the fact of record. Notice provisions of Section 212, broadcasting
of the record shall be published in the IPO Gazette. organizations shall enjoy the exclusive right to
(Sec. 19, PD No. 49a) carry out, authorize or prevent any of the following
acts:
Sec. 183. Designation of Society. - The copyright
owners or their heirs may designate a society of 211.1. The rebroadcasting of their broadcasts;
artists, writers or composers to enforce their
economic rights and moral rights on their behalf. 211.2. The recording in any manner, including
(Sec. 32, PD No. 49a) the making of films or the use of video tape, of
their broadcasts for the purpose of
15. Neighboring Rights communication to the public of television
broadcasts of the same; and
Sec. 203. Scope of Performers' Rights. - Subject to
the provisions of Section 212, performers shall 211.3. The use of such records for fresh
enjoy the following exclusive rights: transmissions or for fresh recording. (Sec. 52,
PD No. 49)
203.1. As regards their performances, the
right of authorizing: Sec. 215. Term of Protection for Performers,
Producers and Broadcasting Organizations.-
(a) The broadcasting and other
communication to the public of their 215.1. The rights granted to performers and
performance; and producers of sound recordings under this law
(b) The fixation of their unfixed shall expire:
performance.
(a) For performances not incorporated in
203.2. The right of authorizing the direct or recordings, fifty (50) years from the
indirect reproduction of their performances end of the year in which the
fixed in sound recordings, in any manner or performance took place; and
form; (b) For sound or image and sound
recordings and for performances
203.3. Subject to the provisions of Section incorporated therein, fifty (50) years
206, the right of authorizing the first public from the end of the year in which the
distribution of the original and copies of their recording took place.
performance fixed in the sound recording
through sale or rental or other forms of transfer 215.2. In case of broadcasts, the term shall be
of ownership; twenty (20) years from the date the broadcast
took place. The extended term shall be applied
203.4. The right of authorizing the commercial only to old works with subsisting protection
rental to the public of the original and copies of under the prior law. (Sec. 55, PD 49a)
their performances fixed in sound recordings,
even after distribution of them by, or pursuant 16. Infringement
to the authorization by the performer; and
Habana, et al., v. Robles, et al., 310 SCRA 511
203.5. The right of authorizing the making [1999]
available to the public of their performances
fixed in sound recordings, by wire or wireless Infringement consists in the doing by any person,
means, in such a way that members of the without the consent of the owner of the copyright,
public may access them from a place and time of anything the sole right to do which is conferred
individually chosen by them. (Sec. 42, PD No. by statute on the owner of the copyright. The act of
49a) lifting from another’s book substantial portions of
discussions and examples and the failure to
Sec. 208. Scope of Right. - Subject to the acknowledge the same is an infringement of
provisions of Section 212, producers of sound copyright. For there to be substantial reproduction
recordings shall enjoy the following exclusive of a book it does not necessarily require that the
rights: entire copyrighted work, or even a large portion of
it, be copied. If so much is taken that the value of
208.1. The right to authorize the direct or the original work is substantially diminished, there
indirect reproduction of their sound recordings, is an infringement of copyright and to an injurious
extent, the work is appropriated. It is no defense and conditions as the court may
that the pirate did not know whether or not he was prescribe, sales invoices and
infringing any copyright; he at least knew that other documents evidencing
what he was copying was not his, and he copied at sales, all articles and their
his peril. In cases of infringement, copying alone is packaging alleged to infringe a
not what is prohibited. The copying must produce copyright and implements for
an “injurious effect”. making them.
(d) Deliver under oath for
Columbia Picture Entertainment, Inc v CA destruction without any
compensation all infringing
It is evidently incorrect to suggest, as the ruling in copies or devices, as well as all
20th Century Fox may appear to do, that in plates, molds, or other means for
copyright infringement cases, the presentation of making such infringing copies as
master tapes of the copyrighted films is always the court may order.
necessary to meet the requirement of probable (e) Such other terms and conditions,
cause and that, in the absence thereof, there can including the payment of moral
be no finding of probable cause for the issuance of and exemplary damages, which
a search warrant. It is true that such master tapes the court may deem proper, wise
are object evidence, with the merit that in this and equitable and the destruction
class of evidence the ascertainment of the of infringing copies of the work
controverted fact is made through demonstrations even in the event of acquittal in a
involving the direct use of the senses of the criminal case.
presiding magistrate. (City of Manila v. Cabangis,
10 Phil. 151 [1908]; Kabase v. State, 31 Ala. App. 216. 2. In an infringement action, the
77, 12 So. 2ND, 758, 764). Such auxiliary court shall also have the power to order the
procedure, however, does not rule out the use of seizure and impounding of any article which
testimonial or documentary evidence, depositions, may serve as evidence in the court
admissions, or other classes of evidence tending to proceedings. (Sec. 28, PD 49a)
prove the factum probandum (See Phil. Movie
Workers Association v. Premiere Productions, Inc.,
92 Phil. 843 [1953]) especially where the 17.2. Criminal Action
production in court of object evidence would result
in delay, inconvenience or expenses out of Sec. 217. Criminal Penalties. -
proportion to its evidentiary value.
217. 1. Any person infringing any right
17. Remedies for Infringement secured by provisions of Part IV of this Act
or aiding or abetting such infringement
17.1. Civil Action shall be guilty of a crime punishable by:
Sec. 216. Remedies for Infringement. - (a) Imprisonment of one (1) year to
three (3) years plus a fine ranging
216.1. Any person infringing a right from Fifty thousand pesos
protected under this law shall be liable: (P50,000) to One hundred fifty
thousand pesos (P150,000) for the
(a) To an injunction restraining such first offense.
infringement. The court may also (b) Imprisonment of three (3) years
order the defendant to desist and one (1) day to six (6) years
from an infringement, among plus a fine ranging from One
others, to prevent the entry into hundred fifty thousand pesos
the channels of commerce of (P150,000) to Five hundred
imported goods that involve an thousand pesos (P500,000) for the
infringement, immediately after second offense.
customs clearance of such goods. (c) Imprisonment of six (6) years and
(b) Pay to the copyright proprietor or one (1) day to nine (9) years plus a
his assigns or heirs such actual fine ranging from Five hundred
damages, including legal costs thousand pesos (P500,000) to One
and other expenses, as he may million five hundred thousand
have incurred due to the pesos (P1,500,000) for the third
infringement as well as the and subsequent offenses.
profits the infringer may have (d) In all cases, subsidiary
made due to such infringement, imprisonment in cases of
and in proving profits the plaintiff insolvency.
shall be required to prove sales
only and the defendant shall be 217. 2. In determining the number of
required to prove every element years of imprisonment and the amount of
of cost which he claims, or, in fine, the court shall consider the value of
lieu of actual damages and the infringing materials that the defendant
profits, such damages which to has produced or manufactured and the
the court shall appear to be just damage that the copyright owner has
and shall not be regarded as suffered by reason of the infringement.
penalty.
(c) Deliver under oath, for 217. 3. Any person who at the time when
impounding during the pendency copyright subsists in a work has in his
of the action, upon such terms possession an article which he knows, or