REVIEWER IN INTELLECUTAL PROPERTY CODE PREPARED BY RIZADA,RESCI ANGELLI

Reviewer in Intellectual Property Code INTELLECTUAL PROPERY -those property rights which results from the physical manifestation of an original thought. STATE POLICY IN RESPECT OF INTELLECTUAL PROPERTY RIGHTS (IPR) -There is a declaration of State Policy that, among others, 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, hence it shall protect and secure exclusive rights of scientists, inventors, artists, and other gifted citizens to their intellectual property and creations. (Sec. 2) INTERNATIONAL CONVENTION AND RECIPROTICY Any person who is a national or who is domiciled or has a real and effective industrial establishment in a country which 1) is a party to any convention, treaty, or agreement relating to intellectual property rights or the repression of unfair competition to which the Philippines is also a party, or 2) extends reciprocal rights to nationals of the Philippines by law, shall be entitled to benefits to the extent necessary to give effect to any provision of such convention, treaty, or reciprocal law, in addition to the rights to which any owner of an intellectual property rights is otherwise provided by law. (Sec. 3) REVERSE RECIPROCITY OF FOREIGN LAWS Section 231 making enforceable on nationals of a foreign state all conditions, restrictions, limitations, diminutions, requirements or penalties that may be imposed by such foreign state on a Filipino national seeking intellectual property protection. v Reciprocal application is not automatic Rather, the Phils. may apply to the foreign national those restrictions that his country imposes on Filipino applicants What are TECHNOLOGY TRANSFER ARRANGEMENTS? -contracts or agreements involving the transfer of systematic knowledge for the manufacture of a product, the application of a process, or rendering of a service including management contracts; and the transfer, assignment or licensing of all forms of intellectual property rights, including licensing of computer software except computer software developed for mass market. (Sec. 4) COVERAGE Section 4. Definitions. - 4.1. The term "intellectual property rights" consists of: a) Copyright and Related Rights;- this one is not in the jurisdiction of IPO, this is retained by the national office/national Library b) Trademarks and Service Marks; c) Geographic Indications;--names the place d) Industrial Designs; Sec. 112.1 An Industrial Design is 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; - also called as PATTERNS e) Patents; f) Layout-Designs (Topographies) of Integrated Circuits; and g) Protection of Undisclosed Information (n, TRIPS). - formula of Coca-Cola softdrinks

FINAL EXAM

4.2. The term "technology transfer arrangements" refers to contracts or agreements involving the transfer of systematic knowledge for the manufacture of a product, the application of a process, or rendering of a service including management contracts; and the transfer, assignment or licensing of all forms of intellectual property rights, including licensing of computer software except computer software developed for mass market. 4.3. The term "Office" refers to the Intellectual Property Office created by this Act. 4.4. The term "IPO Gazette" refers to the gazette published by the Office under this Act. (n) Section 5. Functions of the Intellectual Property Office (IPO). - 5.1. To administer and implement the State policies declared in this Act, there is hereby created the Intellectual Property Office (IPO) which shall have the following functions: a) Examine applications for grant of letters patent for inventions and register utility models and industrial designs; b) Examine applications for the registration of marks, geographic indication, integrated circuits; c) Register technology transfer arrangements and settle disputes involving technology transfer payments covered by the provisions of Part II, Chapter IX on Voluntary Licensing and develop and implement strategies to promote and facilitate technology transfer; d) Promote the use of patent information as a tool for technology development; e) Publish regularly in its own publication the patents, marks, utility models and industrial designs, issued and approved, and the technology transfer arrangements registered; f) Administratively adjudicate contested proceedings affecting intellectual property rights; and g) Coordinate with other government agencies and the private sector efforts to formulate and implement plans and policies to strengthen the protection of intellectual property rights in the country. 5.2. The Office shall have custody of all records, books, drawings, specifications, documents, and other papers and things relating to intellectual property rights applications filed with the Office. (n) Section 6. The Organizational Structure of the IPO. 6.1. The Office shall be headed by a Director General who shall be assisted by two (2) Deputies Director General. 6.2. The Office shall be divided into six (6) Bureaus, each of which shall be headed by a Director and assisted by an Assistant Director. These Bureaus are: a) The Bureau of Patents; b) The Bureau of Trademarks; c) The Bureau of Legal Affairs; d) The Documentation, Information and Technology Transfer Bureau; e) The Management Information System and EDP Bureau; and f) The Administrative, Financial and Personnel Services Bureau. 6.3. The Director General, Deputies Director General, Directors and Assistant Directors shall be appointed by the President, and the other officers and employees of the Office by the Secretary of Trade and Industry, conformably with and under the Civil Service Law. (n)

REVIEWER IN INTELLECUTAL PROPERTY CODE PREPARED BY RIZADA,RESCI ANGELLI

Section 8. The Bureau of Patents. - The Bureau of Patents shall have the following functions: 8.1. Search and examination of patent applications and the grant of patents; 8.2. Registration of utility models, industrial designs, and integrated circuits; and 8.3. Conduct studies and researches in the field of patents in order to assist the Director General in formulating policies on the administration and examination of patents. (n) Section 9. The Bureau of Trademarks. - The Bureau of Trademarks shall have the following functions: 9.1. Search and examination of the applications for the registration of marks, geographic indications and other marks of ownership and the issuance of the certificates of registration; and 9.2. Conduct studies and researches in the field of trademarks in order to assist the Director General in formulating policies on the administration and examination of trademarks. (n) Section 10. The Bureau of Legal Affairs. - The Bureau of Legal Affairs shall have the following functions: 10.1. Hear and decide opposition to the application for registration of marks; cancellation of trademarks; subject to the provisions of Section 64, cancellation of patents, utility models, and industrial designs; and petitions for compulsory licensing of patents; 10.2. (a) Exercise original jurisdiction in administrative complaints for violations of laws involving intellectual property rights: Provided, That its jurisdiction is limited to complaints where the total damages claimed are not less than Two hundred thousand pesos (P200,000): Provided further, That availment of the provisional remedies may be granted in accordance with the Rules of Court. The Director of Legal Affairs shall have the power to hold and punish for contempt all those who disregard orders or writs issued in the course of the proceedings. (n) (b) After formal investigation, the Director for Legal Affairs may impose one (1) or more of the following administrative penalties: (i) The issuance of a cease and desist order which shall specify the acts that the respondent shall cease and desist from and shall require him to submit a compliance report within a reasonable time which shall be fixed in the order; (ii) The acceptance of a voluntary assurance of compliance or discontinuance as may be imposed. Such voluntary assurance may include one or more of the following: (1) An assurance to comply with the provisions of the intellectual property law violated; (2) An assurance to refrain from engaging in unlawful and unfair acts and practices subject of the formal investigation; (3) An assurance to recall, replace, repair, or refund the money value of defective goods distributed in commerce; and (4) An assurance to reimburse the complainant the expenses and costs incurred in prosecuting the case in the Bureau of Legal Affairs.

FINAL EXAM

The Director of Legal Affairs may also require the respondent to submit periodic compliance reports and file a bond to guarantee compliance of his undertaking; (iii) The condemnation or seizure of products which are subject of the offense. The goods seized hereunder shall be disposed of in such manner as may be deemed appropriate by the Director of Legal Affairs, such as by sale, donation to distressed local governments or to charitable or relief institutions, exportation, recycling into other goods, or any combination thereof, under such guidelines as he may provide; (iv) The forfeiture of paraphernalia and all real and personal properties which have been used in the commission of the offense; (v) The imposition of administrative fines in such amount as deemed reasonable by the Director of Legal Affairs, which shall in no case be less than Five thousand pesos (P5,000) nor more than One hundred fifty thousand pesos (P150,000). In addition, an additional fine of not more than One thousand pesos (P1,000) shall be imposed for each day of continuing violation; (vi) The cancellation of any permit, license, authority, or registration which may have been granted by the Office, or the suspension of the validity thereof for such period of time as the Director of Legal Affairs may deem reasonable which shall not exceed one (1) year; (vii) The withholding of any permit, license, authority, or registration which is being secured by the respondent from the Office; (viii) The assessment of damages; (ix) Censure; and (x) Other analogous penalties or sanctions. (Secs. 6, 7, 8, and 9, Executive Order No. 913 [1983]a) 10.3. The Director General may by Regulations establish the procedure to govern the implementation of this Section. (n) Section 11. The Documentation, Information and Technology Transfer Bureau. - The Documentation, Information and Technology Transfer Bureau shall have the following functions: 11.1. Support the search and examination activities of the Office through the following activities: (a) Maintain and upkeep classification systems whether they be national or international such as the International Patent Classification (IPC) system; (b) Provide advisory services for the determination of search patterns; (c) Maintain search files and search rooms and reference libraries; and (d) Adapt and package industrial property information. 11.2. Establish networks or intermediaries or regional representatives; 11.3. Educate the public and build awareness on intellectual property through the conduct of seminars and lectures, and other similar activities; 11.4. Establish working relations with research and development institutions as well as with local and international intellectual property professional groups and the like; 11.5. Perform state-of-the-art searches;

REVIEWER IN INTELLECUTAL PROPERTY CODE PREPARED BY RIZADA,RESCI ANGELLI

11.6. Promote the use of patent information as an effective tool to facilitate the development of technology in the country; 11.7. Provide technical, advisory, and other services relating to the licensing and promotion of technology, and carry out an efficient and effective program for technology transfer; and 11.8. Register technology transfer arrangements, and settle disputes involving technology transfer payments. (n) Section 12. The Management Information Services and EDP Bureau. - The Management Information Services and EDP Bureau shall: 12.1. Conduct automation planning, research and development, testing of systems, contracts with firms, contracting, purchase and maintenance of equipment, design and maintenance of systems, user consultation, and the like; and 12.2. Provide management information support and service to the Office. (n) Section 13. The Administrative, Financial and Human Resource Development Service Bureau. - 13.1. The Administrative Service shall: (a) Provide services relative to procurement and allocation of supplies and equipment, transportation, messengerial work, cashiering, payment of salaries and other Office's obligations, office maintenance, proper safety and security, and other utility services; and comply with government regulatory requirements in the areas of performance appraisal, compensation and benefits, employment records and reports; (b) Receive all applications filed with the Office and collect fees therefor, and (c) Publish patent applications and grants, trademark applications, and registration of marks, industrial designs, utility models, geographic indication, and lay-out-designs of integrated circuits registrations. 13.2. The Patent and Trademark Administration Services shall perform the following functions among others: (a) Maintain registers of assignments, mergings, licenses, and bibliographic on patents and trademarks; (b) Collect maintenance fees, issue certified copies of documents in its custody and perform similar other activities; and (c) Hold in custody all the applications filed with the office, and all patent grants, certificate of registrations issued by the office, and the like. 13.3. The Financial Service shall formulate and manage a financial program to ensure availability and proper utilization of funds; provide for an effective monitoring system of the financial operations of the Office; and 13.4. The Human Resource Development Service shall design and implement human resource development plans and programs for the personnel of the Office; provide for present and future manpower needs of the organization; maintain high morale and favorable employee attitudes towards the organization through the continuing design and implementation of employee development programs. (n) (FORGET ABOUT THE LAST 3..hehe) PRESCRIPTIVE PERIOD OF ACTIONS FOR DAMAGES UNDER THE IPC -No damages may be recovered after four (4) years from the time the cause of action arose (Sec. 226) JURISDICTION OVER DISPUTES UNDER IPC A. Original Jurisdiction

FINAL EXAM

1) Director General (IPO) -has original jurisdiction to resolve disputes relating to the terms of a license involving the authors right to public performance or other communication of his work. 2) Bureau of Legal Affairs -has jurisdiction over the ff: i. Opposition to applications for registration of marks; ii. Cancellation of trademarks; iii. Cancellation of patents, utility models and industrial designs; iv. Petition for compulsory licensing of patents; v. Administrative Complaints for violations of laws involving IPR where the total damages claimed is not less than P200,000.00 3) Documentation, Information and Technology Transfer Bureau -has jurisdiction to settle disputes involving technology transfer payments B. Appellate Jurisdiction 1) Director General -over all decisions rendered by the ff: Dir. of Legal Affairs Dir. of Patents Dir. of Trademarks Dir. of the Documentation, Information and Technology Transfer 2) Court of Appeals -over decisions of the Director General in the exercise of his appellate jurisdiction over the decisions of the: Dir. of Legal Affairs Dir. of Patents Dir. of Trademarks 3) Secretary of Trade and Industry -over decisions of the Director General on the exercise of his appellate jurisdiction of the Director of Documentation, Information and Technology Transfer; AND -over decisions of the Director General in the exercise of his original jurisdiction relating to the terms of license involving the authors right. ADMINISTRATIVE PENALTIES IMPOSED FOR VIOLATIONS OF LAWS INVOLVING IPR -The Director for Legal Affairs may impose the ff: a) Issuance of a cease and desist order (CDO); b) Acceptance of voluntary assurance compliance (VAC) or voluntary assurance of discontinuance (VAD); c) Condemnation or seizure of products subject of the offense; d) Forfeiture of properties used in the commission of the offense; e) Imposition of administrative fines; f) Cancellation of permit, license, authority or registration; g) Withholding of permit, license, authority or registration; h) Assessment of damages; i) Censure; j) Analogous penalties or sanctions (Sec. 10.2 [b]) LAW ON PATENTS PATENT an exclusive right acquired over an invention, to sell, use, and make the same whether for commerce or industry.

REVIEWER IN INTELLECUTAL PROPERTY CODE PREPARED BY RIZADA,RESCI ANGELLI

PATENTABLE INVENTIONS -any technical solution of a problem in any field of human activity which is NEW, involves an INVENTIVE STEP and is INDUSTRIALLY APPLICABLE shall be patentable. The patentable invention may be, or may relate to, a product, or process, or an improvement of any of the foregoing. (Sec. 21) i.e. new and useful machine, manufactured product or substance when is a product considered new? When product is NOVEL. When is it useful? Requirements: 1) Technical solution of a problem in any field of human activity 2) Novelty that which does not form part of a prior art consists of: a) that which has been made available to the public anywhere in the world before the filing date or the priority date of the application b) that which forms part of an application whether for patent, utility or industrial design, effective in the Philippines, provided that: 1. the inventors or applicants are not the same 2. the contents of the application are published in accordance with the requirements of patent application rules. 3. the filing date of the prior art is earlier. 3) Inventiveness/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 of the time of the filing date or priority date of the application claiming the invention. (Sec. 26) 4) Industrial Applicability -an invention that can be produced and used in any industry. (Sec. 27) NON-PATENTABLE INVENTIONS Section 22. Non-Patentable Inventions. - The following shall be excluded from patent protection: 1. 22.1. Discoveries, scientific theories and mathematical methods; 2. 22.2. Schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers; 3. 22.3. 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; 4. 22.4. 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: 5. 22.5. Aesthetic creations; and 6. 2.6. Anything which is contrary to public order or morality. (Sec. 8, R.A. No. 165a)

FINAL EXAM

RIGHT TO A PATENT Section 28. Right to a 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. (Sec. 10, R.A. No. 165a) Section 29. First to File Rule. - If two (2) or more persons have made the invention separately and independently of each other, the right to the patent shall belong to the person who filed an application for such invention, or where two or more applications are filed for the same invention, to the applicant who has the earliest filing date or, the earliest priority date. (3rd sentence, Sec. 10, R.A. No. 165a.) Section 30. Inventions Created Pursuant to a Commission. 30.1. The person who commissions the work shall own the patent, unless otherwise provided in the contract. 30.2. In case the employee made the invention in the course of his employment contract, the patent shall belong to: (a) 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. (b) 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. (n) Section 31. Right of Priority. . - An application for patent filed by any person who has previously applied for the same invention in another country which by treaty, convention, or law affords similar privileges to Filipino citizens, shall be considered as filed as of the date of filing the foreign application: 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. (Sec. 15, R.A. No. 165a) RIGHTS ACQUIRED BY THE PATENTEE The patentee acquires the following rights under his patent a) Where the subject matter of a patent is a product, to restrain, prohibit and prevent any unauthorized person or entity from making, using, offering for sale, selling or importing that product; b) Where the subject matter of a patent is a process, to restrain, prevent or prohibit any unauthorized person or entity from using the process, and from manufacturing, dealing in, using or offering for sale, or importing any product obtained directly or indirectly from such process; c) to assign, or transfer by succession the patent, and to conclude licensing contracts for the same (Sec. 71) CONTENTS OF PATENT APPLICATION A patent application shall contain: 1) a request for the grant of patent; 2) a description of the invention; -the disclosure of the invention must be in a manner sufficiently clear and complete for it to be carried out by a skilled in the art. 3) Drawings necessary for the understanding of the invention; 4) One or more claims 5) An abstract (Sec. 32)

REVIEWER IN INTELLECUTAL PROPERTY CODE PREPARED BY RIZADA,RESCI ANGELLI

v must contain relevant information as to the identity of the person (no anonymous person) v if the applicant is not the inventor; he must show proof of authority to seek application for registration UNITY OF INVENTION -every application for patent registration must contain an application over a simple invention or several inventions but must form part of a single general inventive concept PROCEDURE FOR THE GRANT OF PARENT a) According a filing date to the application (Sec. 41); b) Examination of compliance by applicant with the formal requirements specified in Sec. 32, i.e., contents of application (Sec. 42); c) Classification of application and search for prior art (Sec. 43) d) Publication of patent application in the IPO Gazette (Sec. 44); e) Inspection of the application documents by any interested party and written observations by any third party concerning the patentability of the invention (Secs. 44.2 and 47); f) Written request by the applicant, within 6 months from the date of publication of his patent application, for the substantive examination by the IPO of his application. (Sec 48); g) Grant of the patent (Sec. 50), or refusal of the examiner to grant the patent (Sec. 51); in the latter case, the refusal may be appealed to the Director of the Bureau of Patents; h) Publication of the grant of patent in the IPO Gazette (Sec. 52) TERM OF A PATENT, UTILITY MODEL, INDUSTRIAL DESIGN a) Patent 20 yrs from the filing date of application, without renewal b) Utility model 7 yrs, w/out renewal c) Industrial design 5 yrs, renewable twice UTILITY MODELS -models of implement or tools of any industrial product even if not possessed of the quality of invention but which is of practical utility 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. CANCELLATION Who IPO OF may any motu PATENTS file? person proprio

FINAL EXAM

INFRINGEMENT -the making, using, offering for sale, selling or importing a patented product or a product obtained directly or indirectly from a patented process or the use of a patented process without the authorization of the patentee. (Sec. 76) TEST OF PATENT INFRINGEMENT 1) Literal Infringement resort is had to the words of the claim. 2) Doctrine of Equivalents if two devices do the same work in substantially the same way, the same result, and produce substantially the same result, they are the same even though they differ in name, form, or shape.

Section 72. Limitations of Patent Rights. - The owner of a patent has no right to prevent third parties from performing, without his authorization, the acts referred to in Section 71 hereof in the following circumstances: 72.1. Using a patented product which has been put on the market in the Philippines by the owner of the product, or with his express consent, insofar as such use is performed after that product has been so put on the said market; 72.2. Where the act is done privately and on a non-commercial scale or for a non-commercial purpose: Provided, That it does not significantly prejudice the economic interests of the owner of the patent; 72.3. Where the act consists of making or using exclusively for the purpose of experiments that relate to the subject matter of the patented invention; 72.4. Where the act consists of the preparation for individual cases, in a pharmacy or by a medical professional, of a medicine in accordance with a medical prescription or acts concerning the medicine so prepared; 72.5. Where the invention is used in any ship, vessel, aircraft, or land vehicle of any other country entering the territory of the Philippines temporarily or accidentally: Provided, That such invention is used exclusively for the needs of the ship, vessel, aircraft, or land vehicle and not used for the manufacturing of anything to be sold within the Philippines. (Secs. 38 and 39, R.A. No. 165a) Section 73. Prior User. - 73.1. Notwithstanding Section 72 hereof, any prior user, who, in good

Grounds: a) That the patent is invalid (Sec. 81); b) That what is claimed as the invention is not new or patentable; c) That the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by any person skilled in the art; or d) That the patent is contrary to public order or morality. (Sec. 61) e) failure to make payments of annual fees or dues Where BLA if in RTC to violation of IPC file? (administrative) otherwise

REVIEWER IN INTELLECUTAL PROPERTY CODE PREPARED BY RIZADA,RESCI ANGELLI

FINAL EXAM

faith was using the invention or has undertaken serious preparations to use the invention in his enterprise or business, before the filing date or priority date of the application on which a patent is granted, shall have the right to continue the use thereof as envisaged in such preparations within the territory where the patent produces its effect. 73.2. The right of the prior user may only be transferred or assigned together with his enterprise or business, or with that part of his enterprise or business in which the use or preparations for use have been made. (Sec. 40, R.A. No. 165a)
REMEDIES IN CASE OF INFRINGEMENT A) File civil case for the following purposes: 1) To recover from the infringer such damages as the court may award considering the circumstances of the case provided it shall not exceed 3 times the amount of the actual damages sustained plus attorneys fees and other expenses of litigation; 2) To secure an injunction for the protection of his rights; 3) To receive a reasonable royalty, if the damages are inadequate or cannot be readily ascertained with reasonable certainty; 4) To have the infringing goods, materials and implements predominantly used in the infringement disposed of outside the channels of commerce, or destroyed without compensation; 5) To hold the contributory infringer jointly and severally liable with the infringer. B) File criminal case within 3 years from date of commission of the crime for repetition of infringement (Sec. 84) LAW ON TRADEMARKS

HOW MARKS ARE ACQUIRED -Under RA 8293, the rights in a mark shall be acquired through registration made validly in accordance with its provisions. (Sec. 122) -This proposition of law, however, may not be converted for it is not true that where there is no registration, there is no protection. Acquisition through use -Whether or not a registered trademark is employed, when a person has identified in the mind of the public the goods he manufactures or deals in his business or services from those of others, such a person has a property right in the goodwill of said goods or services which will be protected in the same manner as other property rights (Sec. 168.1) RIGHTS CONFERRED -the owner of a registered mark shall have the exclusive right to prevent all third parties not having the owners consent from using in the course of trade identical or similar signs or containers for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. (Sec. 147) DURATION -the certificate of registration of a trademark shall be ten (10) years from the filing date of application provided the registrant shall file a declaration of actual use within a year from the 5th anniversary of registration date (Sec. 145) -renewable for another 10 yrs. (Sec. 146) NON-REGISTRABLE SERVICE TRADEMARKS, TRADE NAMES AND MARK

TRADEMARK anything which is adopted and used to identify the source of origin of goods, and which is capable of distinguishing them from goods emanating from a competitor SERVICE MARK distinguishes the services of an enterprise from the service of other enterprises. It performs for services what a trademark does for goods. 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 and services of different enterprises which use the sign under the control of the registered owner of the collective mark (Sec. 121.2) TRADE NAMES the person (whether natural or juridical) who does business and produces the goods or the services is designated by a trade name. -Under the law, there is no need to register trade names in order to secure protection for them. TRADE DRESS involves the total image of a product, including such features as size, shape, color or color combinations, texture, and/or graphics.

A mark cannot be registered if it: a) 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; b) 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; c) 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 window; d) 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 gods 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; e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here, as being already the mark of a person other than the applicant for registration, and used for identical or similar goods or services: provided, that in determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark; f) 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

REVIEWER IN INTELLECUTAL PROPERTY CODE PREPARED BY RIZADA,RESCI ANGELLI

or services would indicate a connection between those goods or services, and the owner of the registered trademark: Provided further that the interests of the owner of the registered mark are likely to be damaged by such use; g) Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the goods or services; h) Consists exclusively of signs that are generic for the goods or services that they seek to identify; i) Consists exclusively of signs or of indications that have become customary or usual to designate the goods or services in everyday language or in a bonafide and established trade practice; j) Consists exclusively of signs or indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time or production of the goods or rendering of the services, or other characteristics of the goods or services; k) 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; l) Consists of color alone, unless defined by a given form; or m) Is contrary to public order or morality (Sec. 123) FILING DATE OF AN APPLICATION -The filing date of an application shall be the date on which the office received the following indications and elements in English or Filipino: a) An express or implicit indication that the registration of a mark is sought; b) Indications sufficient to contact the applicant or his representative, if any; c) Indications sufficient to contact the applicant or his representative, if any; d) A reproduction of the mark where registration is sought; and e) The list of the goods or services for which the registration is sought. (Sec. 127.1) v NO filing date shall be accorded until the required fee is paid (Sec. 127.2) PROCEDURE FOR REGISTRATION a) Examination to determine whether the application satisfies the requirements for the grant of a filing date. b) Examination to determine whether the application meets the requirements of Sec. 124 and the mark is registrable under Sec. 123. c) Denial of the application or amendment thereof or publication of the application; d) Opposition to the application; notice; hearing; decision by examiner; appeal to the Director of Bureau of Trademarks; appeal to the IPO Director General; appeal to the CA; e) Issuance of Certificate of registration f) Publication in the IPO Gazette of the fact of registration CANCELLATION OF TRADEMARK OR TRADENAME Who may file? any person who believes that he is and will be damaged by the registration of a mark Where to file? BLA Grounds: a) Mark becomes generic for goods for which it is registered; b) Abandonment of the mark; c) Registration obtained fraudulently or contrary to provisions of RA 8293; d) Mark used by, or with permission, or, registrant; e) Failure to use the mark within the Philippines for 3 uninterrupted years or longer.

FINAL EXAM

EFFECTS OF NON-USE may be excused if caused by circumstances arising independently of the will of the trademark owner, such as military coup, or political changes that impede commerce Registration is an administrative act declaratory of a preexisting right that does not, of itself, perfect a trademark, for what does is actual use Non-use is a ground for removing a mark from the register DOCTRINE OF SECONDARY MEANING -While a generic, indicative or descriptive mark will, as a general rule, be denied registration, there is a circumstance that will allow it to be registered. Under the doctrine of secondary meaning, when a mark has become distinctive of the applicants gods in commerce and, in the mind of the public, indicates a single source of consumers, it may be registered. WHAT CONSTITUTES AN INFRINGEMENT -Under RA 8293, any person shall, without the consent of the owner of the registered mark: 1) Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark or the same container or a dominant feature thereof in connection with the sale, offering for sale, distribution, advertising any goods or services including other preparatory steps necessary to carry out the sale of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or 2) Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature thereof and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on, or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, shall be liable for infringement. (Sec. 155) TEST OF TRADEMARK INFRINGEMENT 1) Dominancy Test consists in seeking out the main, essential or dominant features of a mark. 2) Holistic Test takes stock of the other features of a mark, taking into consideration the entirety of the marks. DIFFERENTIATED FROM UNFAIR COMPETITION 1) Cause of action: in infringement, the cause of action is the unauthorized use of a registered trademark; in unfair competition, it is the passing off of ones goods as those of another merchant. 2) Fraudulent intent is not necessary in infringement, but necessary in UC. 3) Registration of trademarks: in infringement, it is a prerequisite; in UC, it is not required. 4) Class of goods involved: in infringement, the goods must be of similar class; in UC, the goods need not be of the same class. v infringement is a form of unfair competition

REMEDIES AVAILABLE IN CASE OF INFRINGEMENT OF A REGISTERED MARK a) Sue for damages (Sec. 156.1); b) Have the infringing goods impounded (Sec. 156.2); c) Ask for double damages (Sec. 156.3) d) Ask for injunction (156.4) e) Have the infringing goods disposed of outside the channels of commerce (Sec. 157.1)

REVIEWER IN INTELLECUTAL PROPERTY CODE PREPARED BY RIZADA,RESCI ANGELLI

f) Have the g) File h) infringing goods destroyed (Sec. 157.1) criminal action (Sec. 170); Administrative Sanctions

FINAL EXAM

UNFAIR COMPETITION -any person who shall employ deception or any other means contrary to good faith by which he shall pass off the goods manufactured by him or in which he deals, or his business, or services for those of the one having established such goodwill, or who shall commit any acts calculated to produce said result, shall be guilty of unfair competition. How Committed a) Making ones goods appear as the goods of another; b) Use of artifice or device to induce the false belief that ones goods are those of another; c) False statements in the course of trade; or d) Any act contrary to good faith calculated to discredit anothers goods TEST OF UNFAIR COMPETITION -The test is whether certain goods have been clothed with an appearance likely to deceive the ordinary purchaser exercising ordinary care. REMEDIES AGAINST UNFAIR COMPETITION a) Damages which may either be: reasonable profit which would have realized, or actual profits collected by the defendant, or a certain percentage over the gross sales of defendant in case of the measure of damages cannot be readily ascertained; b) Damages may be doubled in cases where actual intent to mislead the public or to defraud the complaint is shown; c) Impounding of sales invoices and other documents evidencing sales; d) Injunction e) Destruction of goods found to be infringing, and all paraphernalia.

WORKS PROTECTED BY COPYRIGHT A. Original Work - Literary and artistic works are original intellectual creations in the literary and artistic domain protected from the moment of their creation, irrespective of their mode or form of expression, as well as of their content, quality and purpose, and shall include in particular: a) Books, pamphlets, articles and other writings b) Periodicals and newspapers c) Lectures, sermons, addresses, dissertations prepared for oral delivery, whether or not reduced in writing or other material form d) Letters e) Dramatic or dramatico-musical compositions; choreographic works or entertainment in dumb shows f) Musical compositions, with or without words g) Works of drawing, painting, architecture, sculpture, engraving, lithography or other works of art; models or designs for works of art h) Original ornamental designs or models for articles of manufacture, whether or not registrable as an industrial design, and other works of applied art. i) Illustrations, maps, plans, sketches, charts and threedimensional works relative to geography, topography, architecture or science j) Drawings or plastic works of a scientific or technical character k) Photographic works including works produced by a process analogous to photography; lantern slides l) Audiovisual works and cinematographic or any process for making audio-visual recordings m) Pictorial illustrations and advertisements n) Computer programs o) Other literary, scholarly, scientific and artistic works (Sec. 172) B. Derivative Works the following derivative works shall also be protected: a) Dramatizations, translations, adaptations, abridgments, arrangements, and other alterations of literary works b) Collections of literary, scholarly or artistic works, and compilations of data and other materials which are original by reason of the selection or coordination or arrangement of their contents. (Sec. 173) WORKS NOT PROTECTED -The following works are not protected: 1) Any idea, procedure, system, method or operation, concept, principle, discovery or mere data as such, even if expressed, explained, illustrated, or embodied in a work; 2) News of the day and other facts having the character of mere items of press information; 3) Any official text of a legislative, administrative or legal nature, as well as any official translation thereof. (Sec. 175) 4) Any work of the Government of the Philippines. (Sec. 176) -however, prior approval of the government agency or office wherein the work is created shall be necessary for exploitation of such work for profit. Such agency or office, may, among other things, impose as a condition the payment of royalties 5) Pleadings; 6) Decisions of courts and tribunals. -This pertains to the original decisions not to the SCRA published in volumes since these are protected under derivative works. RIGHTS OF AN AUTHOR (Author a natural person who has created the work.) A. 1) Economic Right Rights to (Sec. 177) reproduce;

LAW

ON

COPYRIGHT

COPYRIGHT system of legal protection an author enjoys in the form of expression of ideas BASIC PRINCIPLES Works are protected by the sole fact of their creation, irrespective of their mode or form of expression, as well as their content, quality or purpose (Sec. 172.2) Protection extends only to the expression of the idea, not to the idea itself or to any procedure, system, method or operation, concept or principle, discovery or mere data. CREATION OF A WORK A copyright work is created when the two(2) requirements are met: 1) Originality does not mean novelty or ingenuity, neither uniqueness nor creativity. It simply means that the work owes its origin to the author 2) Expression there must be fixation To be fixed, a work must be embodied in a medium sufficiently: permanent; or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration. -if it is not required that the medium be visible as long as there is a possibility of retrieval, then there is fixation -it is fixation that defines the time from when copyright subsists. Before fixation, there can be no infringement.

REVIEWER IN INTELLECUTAL PROPERTY CODE PREPARED BY RIZADA,RESCI ANGELLI

2) Right to create derivative works; 3) Right to first public distribution or first sale; 4) Right to rent out the original or a cop of an audiovisual or cinematographic work; 5) Right to public performance; 6) Right to other communication of the work to the public. B. Moral Rights (Sec. 193) 1) Right of attribution or paternity right; 2) Right of alteration or non-publication; 3) Right to preservation of integrity 4) Right not to be identified with work of others or with distorted work. Term of moral right -lifetime of the author and 50 years after his death Waiver of moral right 1) by a written instrument (Sec. 195) 2) by contribution to a collective work unless expressly reserved (Sec. 196) PRINCIPLE OF AUTOMATIC PROTECTION Under the Berne Convention, the enjoyment and exercise of copyright, including moral rights, shall not be the subject of any formality. OWNERSHIP OF COPYRIGHT 1. Single creator copyright belongs to the author of the work, his heirs or assigns. 2. Joint creation copyright belongs to the co-authors jointly as co-owners. But if the work consists of identifiable parts, the author of each part owns the part that he has created. 3. Employees creation copyright belongs to the employee if the creation is not part of his regular duties even if he uses the time, facilities and materials of the employer; otherwise it belongs to the employer 4. Commissioned work the work belongs to the person commissioning but the copyright remains with the creator unless there is a written stipulation to the contrary. 5. Cinematographic works the producer has copyright for purposes of exhibition; for all other purposes, the producer, the author of the scenario, the composer, the film director, the author of the work are the creators. 6. Anonymous and pseudonymous works the publishers shall be deemed the representative of the author unless: a. the contrary appears b. the pseudonyms or adopted name leaves no doubt as to the authors identity or c. if the author discloses his identity (Sec. 179). 7. Collective works the contributor is deemed to have waived his right unless he expressly reserves it. (Sec. 196) Collective work a work created by two or more persons at the initiative and under the direction of another with the understanding that it will be disclosed by the latter under his own name and that the contributions of natural persons will not be identified. (Sec. 171.2) 8. In case of transfers, the transferee shall own one or more or all the economic rights transferred provided: a. the assignment, if inter vivos, be in writing (Sec. 180.2) b. the assignment be filed with the National Library upon payment of the prescribed fee. (Sec. 182)

FINAL EXAM

their first publication. v Except where, before the expiration of said period, the author's identity is revealed or is no longer in doubt, the rule for single and joint creation shall apply Photographic works 50 years from the publication of the work, or from making the same term is given to audiovisual works produced by photography or analogous processes. Work of Applied Art 25 years from the date of making Newspaper Article lifetime of the author and 50 years after his death v A pure news report will no longer find protection under he new law, BUT a column or published comment will The work of performers not incorporated in RECORDING, PRODUCTS OF SOUND IMAGE RECORDINGS, and BROADCASTS, are protected for periods of 50 years, 50 years, and 20 years, respectively, counted from the end of the year of performance, recording, or broadcasts, respectively. The term of protection shall be counted from the first day of January of the year following the death or of last publication (Sec. 214) LIMITATIONS TO THE RIGHTS ON COPYRIGHT 1) Private performance, private and personal use applicable only when a work has been lawfully made accessible to the public. Personal Use -making a single reproduction, adaptation, arrangement or other transformation of anothers work exclusively for ones own individual use in such cases as personal research, learning or amusement Private Use -making a reproduction, adaptation or other transformation of it, in a single person as in the case of personal use but also for a common purpose by a specific circle of persons only. 2) Fair Use of a Copyrighted Work Fair Use - A privilege in persons other than the owner of the copyright to use the copyrighted material in a reasonable manner without its consent, notwithstanding the monopoly granted to the owner by the copyright. -the doctrine of fair use is meant to balance the monopolies enjoyed by the copyright owner with interests of the public and of society. CRITERIA TO DETERMINE WHETHER USE IS FAIR OR NOT: a) Purpose and the character of the use b) Nature of the copyrighted work c) Amount and substantially of the portions used d) Effect of the use upon the potential market of the copyrighted work (Sec. 185) THE FAIR-USES OF PROTECTED MATERIAL ARE: a) Criticizing, commenting, and news reporting; b) Using for instructional purposes including producing multiple copies of classroom use, for scholarship, research and similar purposes (Sec. 185) 3) WORKING OF ARCHITECTURE (Sec. 186) -include the right to control the erection of any building which reproduces the whole or a substantial part of the work either in its original or in any form recognizably derived from the original; Provided, that the copyright in any such work shall not include the right to control the reconstruction, or rehabilitation in the same style as the original of a building to which that copyright relates

DURATION OF COPYRIGHT Literary artistic works and derivative works of a SINGLE CREATOR - lifetime of the creator and for 50 years after his death Joint creation lifetime of last surviving co-creator and for 50 years after his death. Anonymous or a work under a pseudonym not identifiable with the true name of the creator 50 years after the date of

REVIEWER IN INTELLECUTAL PROPERTY CODE PREPARED BY RIZADA,RESCI ANGELLI

4) REPRODUCTION OF -exclusively for research PUBLISHED and private WORK study.

FINAL EXAM

5) REPROGRAPHIC REPRODUCTION BY LIBRARIES -any library or archive whose activities are not for profit may, without the authorization of the author of copyright owner, make a single copy of the work by reprographic reproduction. 6) REPRODUCTION OF COMPUTER PROGRAMS -allowed on the ff. conditions: a) only one copy is made; b) lawful owner made the copy; c) purpose of which the reproduction is made is legal like: use to which the program is made and for which it was purchased demand the reproduction of a copy; or the reproduction of a copy is necessary to guarantee against loss or destruction (Sec. 189.1) 7) IMPORTATION FOR PERSONAL PURPOSES -The importation of a copy of a work by an individual for his personal purposes shall be permitted without the authorization of the author of, or other owner of copyright in, the work under the following circumstances: a) Copies of the work are not available in the Philippines and: i. not more than one copy at one time is imported for strict individual use; ii. importation is by authority and for the use of Philippine Government; or iii. Religious, charitable, or educational society imported not more than 3 copies per title provided they are not for sale. b) Copies form part of libraries and personal baggage belonging to persons or families arriving from foreign countries and are not intended for sale: Provided, that such copies do not exceed three (3). (Sec. 190) REMEDIES IN CASE OF INFRINGEMENT: 1) Injunction to prevent infringement 2) Damages assessed on the basis of the proof alleged by the plaintiff of sales made by the defendant of the infringing work minus whatever costs the defendant may be able to prove and appreciated by the court. 3) Delivery under oath of all implements employed in the production of the infringing products themselves and the infringing items, for impounding or destruction as the court may order. 4) Payment of moral and exemplary damages in the discretion of court. 5) Criminal Action DIFFERENCE BETWEEN COPYRIGHT, PATENT AND TRADEMARK 1) Subject Matter of the Right: Copyright literary, scientific or artistic work; Patent new, useful, and industrially applicable inventions; Trademark goods manufactured or produced 2) Copyright Patent Where and Right National Trademark Registered: Library IPO

3) Duration of Right: Patent 20 years from filing or priority date Trademark 10 yearsCopyright Generally up to 50 years after the death of the author. . lifted from SLU Bar Ops Reviewer