Intellectual Property Code

• Patent


  A grant issued by the government through the Intellectual Property Office of the Philippines (IP Philippines). It is an exclusive right granted for a product, process or an improvement of a product or process which is new, inventive and useful. This exclusive right gives the inventor the right to exclude others from making, using, or selling the product of his invention during the life of the patent.
• Utility Model


  A protection option, which is designed to protect innovations that are not sufficiently inventive to meet the inventive threshold required for standard patents application. It may be any useful machine, implement, tools, products, composition, process, improvement or part of the same, that is of practical utility, novelty and industrial applicability. It is entitled to seven (7) years of protection from the date of filing, with no possibility of renewal.
• Industrial Design


  Any composition of lines or colors or any three-dimensional form, whether or not associated with lines or colors; provided that such composition or form gives a special appearance to and can serve as pattern for an industrial product or handicraft. It shall be valid for five (5) years from the filing date of the application. It may be renewed for not more than two (2) consecutive period of five (5) years each, by paying the renewal fee.
• Mode of creation of right


  Must be registered with IPO to be protected by law (Created by Registration with IPO)
• Term of patent

  A patent has a term of protection of twenty (20) years providing an inventor significant commercial gain. In return, the patent owner shares the full description of the invention. This information is made available to the public in the form of Intellectual Property Office Gazette and can be utilized as basis of future research and will in turn promote innovation and development.
• Requisites of Patentable Inventions

  • It must be a technical solution to a problem in any field of human activity. It may be, or may be relative to, a product, or process, or an improvement of any of the foregoing.
  • It must be new. An invention shall not be considered new if it forms part of a prior art.
  • It must involve an inventive step. An invention involves an inventive step if, having regard to prior art, it is not obvious to a person skilled in the art at the time of the filing date or priority date of the application claiming the invention.
  • It must be industrially applicable. An invention that can be produced and used in any industry shall be industrially applicable.
• Non-Patentable Inventions


  • Discoveries, scientific theories and mathematical methods.
  • Schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers.
  • Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body. This provision shall not apply to products and composition for use in any of these methods.
  • Plant varieties or animal breeds or essentially biological process for the production of plants or animals. This provision shall not apply to microorganisms and non-biological and microbiological processes. Provisions under this subsection shall not preclude Congress to consider the enactment of a law providing sui generis protection of plant varieties and animal breeds and a system of community intellectual rights protection.
  • Aesthetic creations.
  • Anything which is contrary to public order or morality.
• First to File Rule


  If two (2) or more persons have made the invention separately and independently of each other, the right to the patent shall belong to the persons who filed an application for such invention, or where two or more applications are filed for the same invention, to the applicant who has the earliest filing date or, the earliest priority date.
• Right of Priority


  An application for patent filed by any person who has previously applied for the same invention in another country which by treaty, convention, or laws affords similar privileges to Filipino citizens, shall be considered as filed of the date of filing the foreign application. Provided, that: a, the local application expressly claims priority: b, it is filed within twelve (12) months from the date the earliest foreign application was filed: and c, a certified copy of the foreign application together with an English translation is filed within six (6) months from the date of filing in the Philippines.
• Right to Patent


  The right to a patent belongs to the inventor, his heirs or assigns. When two (2) or more persons have jointly made an invention, the right to a patent shall belong to them jointly.
• Inventions Created Pursuant to a Commission

  The person who commissions the work shall own the patent, unless otherwise provided in the contract. In case the employee made the invention in the course of his employment contract, the patent shall belong to: The employee, if the inventive activity is not a part of his regular duties even if the employee uses the time, facilities and materials of the employer. The employer, if the invention is the result of the performance of his regularly-assigned duties, unless there is an agreement, express or implied, to the contrary.
• Patent Infringement


  The unauthorized making, using, offering for sale or selling any patented invention or products of the patented invention without consent from the patent holder.
• Literal Infringement


  To determine whether the particular item falls within the literal meaning of the patent claims, the court must juxtapose the claims of the patent and the accused product within the overall context of the claims and specifications, to determine whether there is exact identity of all material elements.
• Doctrine of equivalent infringement


  Infringement also takes place when a device appropriates a prior invention by incorporating its innovative concept and, although with some modification and changes, performs substantially the same function in substantially the same way to achieve substantially the same result. It requires satisfaction of the function-means-and-result test.
• Trademark


  Any visible sign capable of distinguishing the goods of an enterprise and shall include a stamped or marked container of goods.
• Service mark


  Any visible sign capable of distinguishing services of an enterprise and shall include a stamped or marked container of services.
• Collective mark


  Any visible sign designated as such in the application for registration and capable of distinguishing the origin or any other common characteristic, including the quality of goods or services of different enterprises which use the sign under the control of the registered owner of the collective mark.
• Trade name


  The name or designation identifying or distinguishing an enterprise.
• Mode of creation of right

  Trademark, service mark and collective market must be registered with IPO to be protected by law while trade name need not be registered to be protected. (Created by Registration)
• Non-registrable marks

  • Consists of immoral, deceptive or scandalous matter, or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.
  • Consists of the flag or coat of arms or other insignia of the Philippines or any of its political subdivisions, or of any foreign nation, or any simulation thereof.
  • Consists of a name, portrait or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the Philippines, during the life of his widow, if any, except by written consent of the widow.
  • Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of: I, The same goods or services, or II, Closely related goods or services, or III, if it nearly resembles such a mark as to be likely to deceive or cause confusion.
  • Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph, which is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for: Provided, that use of the mark in relation to those goods or services would indicate a connection between those goods or services, and the owner of the registered mark: Provided further, that the interest of the owner of the registered mark are likely to be damaged by such use.
  • Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the goods or service.
  • Consists exclusively of signs that are generic for the goods or services that they seek to identify.
  • Consists exclusively of signs or of indications that have become customary or usual to designate the goods or services in everyday language or in bona fide and established trade practice.
  • Consists exclusively of signs or indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of the goods or rendering of the services, or other characteristics of the goods or services.
  • Consists of shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value.
  • Consists of color alone, unless defined by a given form.
  • Is contrary to public order or morality.
• Term of Trademark and Service Mark

  It has a term of 10 years but subject to unlimited times of renewal. Therefore, it has indefinite life.
• Trademark Infringement


  The unauthorized use of a trademark or service mark on or in connection with goods/services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.
• Dominancy Test


  It focuses on the similarity of the main, prevalent or essential features of the competing trademarks that might cause confusion. Infringement takes place when the competing trademark contains the essential features of another. Imitation or an effort to imitate is unnecessary. The question is whether the use of the marks is likely to cause confusion or deceive purchasers.
• Holistic Test


  The focus is not only on the predominant words but also on the other features appearing on the labels.
• Color alone


  Unless defined by a given form, is contrary to public order or morality
• Term of Trademark and Service Mark

  10 years, but subject to unlimited times of renewal, therefore has indefinite life
• Trademark Infringement


  Unauthorized use of a trademark or service mark on or in connection with goods/services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services
• Tests of Trademark Infringement

  1. Dominancy Test - focuses on similarity of main, prevalent or essential features that might cause confusion

  2. Holistic Test - focuses on predominant words and other features appearing on the labels
• Trademark Infringement means any person who shall use, without the consent of the registrant, any reproduction, counterfeit, copy or colorable imitation of any registered mark or trade-name in connection with the sale, offering for sale, or advertising of any goods, business or services on or in connection with which such use is likely to cause confusion or mistake or to deceive purchasers or others as to the source or origin of such goods or services, or identity of such business; or reproduce, counterfeit, copy or colorably imitate any such mark or tradename and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used upon or in connection with such goods, business or services
• To establish trademark infringement, the following elements must be proven: (1) The validity of plaintiffs mark; (2) the plaintiffs ownership of the mark; and (3) the use of the mark or its colorable imitation by the alleged infringer results in likelihood of confusion
• Unfair competition


  Passing off (or palming off) or attempting to pass off upon the pubic of the goods or business of one person as the goods or business of another with the end and probable effect of deceiving the public
• Essential elements of unfair competition

  • Confusing similarity in the general appearance of the goods
  • Intent to deceive the public and defraud a competitor
• The true test of unfair competition is whether the acts of the defendant have the intent of deceiving or are calculated to deceive the ordinary buyer making his purchases under the ordinary conditions of the particular trade to which the controversy relates. One of the essential requisites in an action to restrain unfair competition is proof of fraud; the intent to deceive, actual or probable must be shown before the right to recover can exist
• There can be trademark infringement without unfair competition such as when the infringer discloses on the labels containing the mark that he manufactures the goods, thus presenting the public from being deceived that the goods originate from the trademark owner. In this case, no issue of confusion arises because the same manufactured products are sold; only the ownership of the trademarks is at issue
• Distinction between trademark infringement and unfair competition

  • Infringement of Trademark is the unauthorized use of a trademark, whereas unfair competition is the passing off of one's goods as those of another
  • In infringement of trademark, fraudulent intent is unnecessary whereas in unfair competition fraudulent intent is essential
  • In infringement of trademark, the prior registration of the trademark is a prerequisite to the action, whereas in unfair competition registration is not necessary
• Copyright


  The legal protection extended to the owner of the rights in an original work
• Original Work


  Every production in the literary, scientific and artistic domain, including books and other writings, musical works, films, paintings and other works, and computer programs
• Model of creation of right


  Works are protected by the sole fact of their creation, irrespective of their mode or form of expression, as well as their content, quality and purpose. It does not matter if a work has little artistic value, as long as it has been independently created and has a minimum creativity, it enjoys copyright protection (from the moment of creation without a need for registration)
• Term of copyright

  In general, the term of protection of copyright for original and derivative works is the life of the author plus fifty (50) years after his death. The Code specifies the terms of protection for the different types of works
• Ownership of copyright

  • Natural person who created the literary and artistic work
  • Employee - if the work is not part of his regular duties, even if he used the time, facilities, and materials of the employer
  • Employer - if the work is the result of the performance of his regularly assigned duties, unless there is an express or implied agreement to the contrary
  • Person who commissioned the work - the copyright remains with the creator, unless there is a written agreement to the contrary
  • For audiovisual works: The producer, the author of the scenario, the composer of the music, the film director, and the author of the work so adapted