IP LECTURE NOTES people, for such periods as provided in this Act.
I. Basic Intellectual Property
Information
What is IP? (WIPO Definition)
IP refers to creations of the mind:
inventions, literary and artistic works ,
and symbols, names, images and
designs used in commerce.
Pertinent Constitutional Provisions
a) Article XIV, Sec. 13 The Benefit to
the People Proviso
The state shall protect and secure the
exclusive right 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) Art. XIV- Secs 10 and 12
ARTICLE XIV
SCIENCE AND TECHNOLOGY
Section 10. Science and technology are essential
for national development and progress. The State
shall give priority to research and development,
invention, innovation, and their utilization; and to
science and technology education, training, and
services. It shall support indigenous, appropriate,
and self-reliant scientific and technological
capabilities, and their application to the country's
productive systems and national life.
Section 12. The State shall regulate the transfer
and promote the adaptation of technology from all
sources for the national benefit. It shall encourage
the widest participation of private groups, local
governments, and community-based organizations
in the generation and utilization of science and
technology.
c) Art. XII, Sec 6 vis a vis Sec. 2 of the IP
Code
ARTICLE XII
NATIONAL ECONOMY AND PATRIMONY
Section 6. The use of property bears a social function,
and all economic agents shall contribute to the
common good. xxxxx
IP Code
Sec. 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
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. (n)
d) Art XII, Secs. 14 and 19
Section 14. The sustained development of a
reservoir of national talents consisting of Filipino
scientists, entrepreneurs, professionals, managers,
high-level technical manpower and skilled workers
and craftsmen in all fields shall be promoted by the
State. The State shall encourage appropriate
technology and regulate its transfer for the national
benefit.
Section 19. The State shall regulate or prohibit
monopolies when the public interest so requires.
No combinations in restraint of trade or unfair
competition shall be allowed.
Civil Law Basis Articles 712; 721;722;
724
Art. 721 of the Civil Code
By intellectual creations, the following
persons acquire ownership
(ACPS) :
a) the AUTHOR , with regard to his
literary,dramatic, historical, legal,
philosophical, scientific or other
work;
b) the COMPOSER, as to his musical
composition;
c) the PAINTER, SCULPTOR or other
ARTIST, with respect to product of
his art ;
d) the SCIENTIST or
TECHNOLOGIST or any other
person with regard to his discovery
or invention
Historical Background Mirpuri v. C.A
(G.R No. 114508, 19 Nov. 1999 ;
Taada vs. Angara [G.R. No. 118295.
May 2, 1997.] EN BANC
Devt of IP in the world
PATENTS
o precursors of modern patent
system began in England in the
12th century
o person who introduced a
technology imported abroad was
granted an incentive (LETTERS
PATENT) which means an open
letter =gives him monopoly
powers or sole right to use it for
a period enough to establish a
new industry to shield him from

competition during the formative
years of new undertaking
o based on such rationale, ist
modern patent law was enacted
in the Republic of Venice 1474
o 1628 Statute of Monopolies
(England) 14 yrs protection from
grant
o 1790 - USA
o 1815 - France
o 1826 - Spain
o 1864 Italy
o 1885 - Japan
COPYRIGHT (territorial in nature)
o 1709 Statute of Anne
(England) first copyright law in
the world that can be traced to
the invention of printing
o 1741 (Denmark) copyright law
o 1790 U.S.A (copyright law and
patent law)
o 1791 & 1793 (Copyright law in
France)
o 1834 Chile
o 1849 Peru
o 1869 - Argentina
o 1871 Mexico
o 1886 , September BERNE
Convention for the protection of
literary and artistic works is the
first international agreement for
the protection of the rights of
authors held in Berne,
Switzerland due to the need for a
uniform system of protection.
o In view of fundamental changes
in the means of creation, use
and dissemination of literary and
artistic works the following
revisions cropped up:
Berlin -1908
Rome 1928
Brussels -1948
Stockholm -1967
Paris -1971
TRADEMARKS
o In ancient cultures, trademarks
were used by the makers of
bricks, leather goods, books,
weapons and other products to
indicate their origins
o Purpose of trademark is to
establish a connection between
a particular craftsman and his
work in the mind of the
consumer.
o Middle of 19th century, common
law in England provided
protection for trademarks
o 1857 France enacted a law in
TM
o 1870 US, Trademark law was
declared unconstitutional . o
reason : covers also
registration of trademarks
used in connection with goods
traded interstate instead of
limiting it to intrastate
commerce
2
o 1905- US New Trademark Law
*** Due to international trade it became
desirable to obtain protection
for trademarks and inventions in several
countries. The only problem is the principle of
independence of industrial property meaning laws
on trademark or patents differ from one country
to another.
*** The fate of an application for the
registration of a trademark or an invention in
a particular country has no influence
whatsoever on the fate of an application for
registration of the same trademark or
invention in another country.
*** Applications have to be made roughly at
the same time in all countries where he
wants protection.
o Birth of the PARIS
CONVENTION for the
protection of industrial property
in Paris in 1883.
o Revisions
Rome 1886
Madrid 1890 & 1891
Brussels 1897 & 1900
Washington 1911
The Hague 1925
London 1934
Lisbon - 1958
Stockholm - 1967
Devt of IP in Southeast Asia
o IP in SE Asia has not kept
pace with its economic
growth due to 2 factors :
a) not all SE Asian
countries are parties
to the Berne
Convention (only
Malaysia, Phils and
Thailand) are
members; for the
Paris Convention
(only Malaysia,
Philippines,
Indonesia, Singapore
and Vietnam are
members of the
convention
b) limited use of
industrial property
in 1993 patent
applications in
ASEAN was less
than 5 % of patents
in Japan and 8 % of
that in US; over 4%
of that in Western
Europe
due to AFTA , the
development of IP in
Southeast Asia is likely to
be rapid in the near future
Devt of IP in the Philippines

IP system followed those of Spain and
US
History of Copyright Laws
1. Law on Intellectual Property on January 10,
1879 published in the Gaceta de Madrid on
Jan. 12, 1879.
2. Spanish Copyright Law came to the Phil by way
of the Royal Decree of May 5, 1887.
3. US Copyright Law under the Treaty of Paris of
10th December 1898.
4. Act No. 3134 by the Philippine Legislature on
March 6, 1924. 1st intellectual property law
patterned after the US Copyright Law.
5. Republic Act No. 167, An Act to Provide the
Transfer of Powers, Duties and Functions
Relating to the Registration and Protection of
Copyrights From the National Library to the
Patent Office. June 20, 1947.
6. Civil Code (1949), Art. 721-724 of Rep. Act No.
386 (of. Provisions are on Intellectual
Creations.
7. Presidential Decree No. 49, Decree onTREATY OF PARIS (Dec. 10 1898)
Intellectual Property. passed during Martial
Law on December 15, 1972.
8. Presidential Decree No. 285, Authorizing the
Compulsory Licensing or Reprinting of
Educational Scientific or Cultural Books and
Materials as a Temporary or Emergency AMERICAN REGIME
Measure Whenever the Prices Thereof
Become So Exorbitant as to be Detrimental to o
the National Interest. September 3, 1973
9. Presidential Decree No. 400, Amending o
Presidential Decree No. 285. March 1, 1974.
10. Civil Code (1949), Art. 721-724 of Rep. Act No.
386 (of. Provisions are on Intellectual
Creations)
11. Presidential Decree No. 1203, Further
Amending Presidential Decree 285, as After Philippine Independence
Amended by Presidential Decree No. 400.
September 27, 1977
12. Republic Act No. 8792, An Act Providing for
the Recognition and Use of Electronic
Commercial and, Non-Commercial
Transactions, Penalties for Unlawful Use
Thereof, and Other Purpose, popularly known
as the E-Commerce Law, signed into law on
June 14, 2000, Implementing Rules and
Regulations of the Electronic Commerce Act
one month after the approval of the law, 13th
July 2000.
13. Republic Act No. 8293, An Act Prescribing the
Intellectual Property Code and Establishing the
Intellectual Property Office, passed June 6
1997 and took effect January 1, 1998.
Incorporated provisions of
international agreements wherein
the Phil. is a signatory such as the
Berne Convention for the Protection
of Literary and Artistic Works
3
( August 1, 1951), Exchange of
Notes with the United States for the
protection and enforcement of
intellectual property rights on April
6, 1993, WTO TRIPS Agreement
(Agreement on Trade Related
Aspects in Intellectual Property
Rights) on Dec. 15, 1994 and the
Dec. 1996 World Intellectual
Property Organization (WIPO)
Geneva Protocol which covered the
protection of digital technology.
14. Republic Act 10372 An Act Amending Certain
Provisions of the IP Code (2012)
Trademarks and Patents
Trademark law governed by a Trademark Law
promulgated by Queen Ma. Cristina of Spain
on 26 Oct. 1888 ( a modified version version of
the Spanish TM law)
Patents unknown whether Spanish Patent
Law was enforced in the Philippines; records
show that Spanish authorities referred patent
matters to Spain
Art. 13 of TP provides that copyrights, trademarks
and patents that were granted by the Spanish
authorities continue to have legal effect in the
Philippines
1903 (Mar. 6) Act No. 666
Trademarks and Tradename Law of the Philippine
Islands
1909 (Mar. 6) Act No 3134
(Copyright law of the Philippine Islands)
o 1913 (Feb. 10) US Patent
Laws applicability in the Philippine island
Trademark system was under the Bureau of Forestry
Patent system under the Executive Bureau.
o 1947 Philippine Patent Office was established
RA 165 Phil Patent Law
RA 166 Trademark Law
o 1972 (Dec. 15) effectivity date of PD 49 on
Copyright
o 1951 (August 1) Philippines became contracting
party to Berne Convention for Protection of Literary
and Artistic works
o 1965(Sept. 27) Philippines became contracting
paty to Paris convention for protections of industrial
property
o 1980 Philippines became contracting party to
Convention(establishing the WIPO/accorded to
GATT)
o 1986- PPO was consolidated with the TTB to
become the BPTTT
o 1994 Phils is included in the signatories to
Uruguay Round Final Act, the Agreement
establishing the WTO.

o Phils ratified the agreement ( SC upheld the
constitutionality of senates ratification to the
agreement)
o January 1, 1998 effectivity of the IP Code
Intellectual Property and Economics
o Sec. 2 (RA 8293)
Declaration of State
Policy effective
industrial property and IP
system is vital to the
development of domestic
and creative activity. It
also :
a) facilitates transfer of
technology
b)attracts foreign
investment
c) ensures market
access for our
products
o IP encourages creativity
which promotes
economic development
o IP confers monopoly
rights to authors,
merchants and inventors.
It essentially protects info
which is costly to produce
but relatively inexpensive
to transmit or info is
difficult to appropriate
o Copyright ensures the
payment of adequate
royalties to authors of
literary and artistic
works as
compensation for
their efforts so they
can devote fully their
energies to the
production of such
works
o Trademarks promote
an open market &
ensure free
competition by
enabling consumer to
make informed
choices between
various goods
o Patents secure the
result of investment in
research and
innovation
Amendments to Republic Act No. 8293 or to the
Intellectual Property Code or RA 8293
1. Republic Act No. 9168, - June 7, 2002
(Philippine Plant Variety Protection Act of
2002)
Section 2. Statement of Policies.
a) The State recognizes that an effective
intellectual property system in general and
the development of new plant variety in
particular is vital in attaining food security
for the country. To this end, it shall protect
4
and secure the exclusive rights of breeders
with respect to their new plant variety
particularly when beneficial to the people for
such periods as provided for in this Act.
b) The use of intellectual property bears a
socioeconomic function. To this end, the
State shall promote the diffusion of
technology and information for the
promotion of national development and
progress for the common good
2. Republic Act No. 9239, Feb. 10, 2004 -
Regulating Optical Media, Reorganizing the
VIDEOGRAM REGULATORY BOARD
3. Republic Act No. 9502, June 6, 2008
Cheaper and Quality Medicines Act
4. Republic Act No. 10055, entitled "An Act
Providing the Framework and Support
System for the Ownership, Management,
Use, and Commercialization of Intellectual
Property Generated from Research and
Development Funded by Government and
for Other Purposes" also known as the
"Philippine Technology Transfer Act of
2009
II. Classes of Intellectual Property (2
Main Divisions)
o Copyright and related
rights
o Industrial property
1. distinctive signs
trademarks, service
marks and geographical
indications
2. IP relating to
technological advances
patent, industrial
designs, lay-out designs,
protection of undisclosed
information
III. IPR under the IP Code
1. Copyright and related
rights
2. Trademarks and Service
Marks
3. Geographical Indications
4. Industrial Designs
5. Patents
6. Lay-out Designs
(Topographies) of
Integrated Circuits (RA
9150)
7. Protection of Undisclosed
Information
IV. International Treaties/ Conventions to which
the Philippines is a Signatory
1) Convention creating the WIPO
2) Uruguay Round (creating the WTO)
3) Paris Convention
4) Berne Convention
5) Budapest Treaty
6) Patent Cooperation Treaty
7) WIPO Copyright Treaty
8) Madrid Protocol

WIPO and WTO
o Berne and Paris conventions had
separate international secretariats to
administer the 2 conventions. They were
later placed under the supervision of the
Swiss Federal government with their
headquarters in Berne.
o 1893, the two secretariats united and after
undergoing several changes became the
United International Bureau for the
Protection of Intellectual Property (BIRPI,
the acronym for the French version of the
name)
o 1960 BIRPI moved its headquarters to
Geneva
o 1967 diplomatic conference on IP in
Stockholm (creation of WIPO) to succeed
BIRPI
o 1974 WIPO became a specialized agency
of the UN
Relationship between WIPO and WTO
o US believed that issues on
IP protection involves trade
o GATT (General Agreement
on Tariff and Trade) is the
main multilateral treaty on
the elimination of trade
barriers.
o US advocated that IP issues
be addressed under the
auspices of GATT because it
has dispute settlement
mechanism
o Developing countries
opposed this because of the
view that their interests
would be better protected
within the framework of
WIPO due to their numerical
number
o Developing countries urged
WIPO to draft its own treaty
for a dispute resolution
mechanism ( said proposals
not adopted for various
reasons
WTO
o 1993 Uruguay Round of the
multilateral trade negotiations
under the auspices of GATT was
concluded on Dec. 15, 1993
which involved discussions for
the first time on the protection of
intellectual property in relation to
international trade
o countries cant agree on the
most basic issues of the agenda
such as :
1. coverage of IP
2. minimum levels of
protection
3. adoption by member
countries of
procedures for the
enforcement of IPR
5
o discussions collapsed on 2
occasions but later paved the
way for the Agreement on Trade
Related Aspects of IPR (TRIPS
Agreement ) which took effect on
Jan. 1, 1995
o also led to the agreement
establishing the WTO, effective
Jan. 1, 1995
International Treaties Protecting Copyrights
1. Berne Convention for protection of literary
works, established in Aug. 1,
1951.
Core Principles:
a) national treatment treat foreigners the way
you protect nationals
b) principle of automatic protection no need
to register copyrights
c) principle of independence of protection
nationals from different states should have
protection of their own works
2. TRIPS Agreement Trade Related Aspects of
IP Rights, a sub-agreement of the GATT,
Core Principles:
a) Principle of independence of protection of
Intellectual property
b) National treatment of the IP owner
c) Most favored nation principle treat all
signatories similarly, no special treatment
should be given to any nation
Establishment of minimum standards of protection
as to enforcement of IPR transnationally is likewise
embodied in the TRIPS agreement as one of its
salient features
Notable Features of the TRIPS
Agreement
1. incorporates by reference most
of the standards of protection of
copyright/related rights under the
two conventions
2. explicit recognition of computer
software as proper subject of
copyright
3. explicit recognition of micro-
organisms and non-biological
processes for the production of
plants and animals as patentable
4. includes substantial number of
additional obligations on matters
where the Berne and Paris
Conventions were silent or
inadequate, eg :
a) adoption by member
countries of procedures
for enforcement of IP
b) provides a dispute
resolution mechanism for
member countries
TRIPS Compliance commitments
 6
o Jan. 1, 1996 all provisions
of TRIPS must be complied
by developed countries
o Jan. 1, 2000 for
developing countries
o Jan. 1, 2006 least
developed countries

***WTO and IPO has a mutually

supportive relationship. WTO
has a dispute resolution
mechanism, while WIPO
promotes
IP in developing countries.
The two concluded an
agreement which took effect on
Jan. 1, 1996 providing
cooperation in areas such as :
2. access
3. collection
4. translation of national laws
and regulation