REPUBLIC OF THE PHILIPPINES
CONGRESS OF THE PHILIPPINES S. No. 1719
Second Regular Session } H. No. 8098
REPUBLIC ACT NO. 8293
AN ACT PRESCRIBING THE INTELLECTUAL PROPERTY
CODE AND ESTABLISHING THE INTELLECTUAL
PROPERTY OFFICE, PROVIDING FOR ITS POWERS AND
FUNCTIONS, AND FOR OTHER PURPOSES
Be it enacted by the Senate and House of Representatives of the
Philippines in Congress assembled:
PART I
THE INTELLECTUAL PROPERTY OFFICE
SECTION 1. Title. – This Act shall be known as the
"Intellectual Property Code of the Philippines."
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 people, for such periods as
provided in this Act.
The use of intellectual property bears a social function. To
this end, the State shall promote the diffusion of knowledge and
information for the promotion of national development and
progress and the common good.
It is also the policy of the State to streamline administrative
procedures of registering patents, trademarks and copyright, to
liberalize the registration on the transfer of technology, and to
enhance the enforcement of intellectual property rights in the
Philippines. (n)
551
SEC. 3. International Conventions and Reciprocity. – Any
person who is a national or who is domiciled or has a real and
effective industrial establishment in a country which is a party
to any convention, treaty or agreement relating to intellectual
property rights or the repression of unfair competition, to which
the Philippines is also a party, or extends reciprocal rights to
nationals of the Philippines by law, shall be entitled to benefits to
the extent necessary to give effect to any provision of such
convention, treaty or reciprocal law, in addition to the rights to
which any owner of an intellectual property right is otherwise
entitled by this Act. (n)
SEC. 4. Definitions. – 4.1. The term "intellectual property
rights" consists of:
(a) Copyright and Related Rights;
(b) Trademarks and Service Marks;
(c) Geographic Indications;
(d) Industrial Designs;
(e) Patents;
(f) Layout-Designs (Topographies) of Integrated Circuits;
and
(g) Protection of Undisclosed Information (n, TRIPS).
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)
SEC. 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)
SEC. 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)
SEC. 7. The Director General and Deputies Director
General. – 7.1. Functions. – The Director General shall exercise
the following powers and functions:
(a) Manage and direct all functions and activities of the
Office, including the promulgation of rules and regulations to
implement the objectives, policies, plans, programs and projects
of the Office: Provided, That in the exercise of the authority to
propose policies and standards in relation to the following: (1) the
effective, efficient, and economical operations of the Office
requiring statutory enactment; (2) coordination with other
agencies of government in relation to the enforcement of
intellectual property rights; (3) the recognition of attorneys,
agents, or other persons representing applicants or other parties
before the Office; and (4) the establishment of fees for the filing
and processing of an application for a patent, utility model or
industrial design or mark or a collective mark, geographic
indication and other marks of ownership, and for all other services
performed and materials furnished by the Office, the Director
General shall be subject to the supervision of the Secretary of
Trade and Industry;
(b) Exercise exclusive appellate jurisdiction over all
decisions rendered by the Director of Legal Affairs, the Director
of Patents, the Director of Trademarks, and the Director of the
Documentation, Information and Technology Transfer Bureau.
The decisions of the Director General in the exercise of his appellate
jurisdiction in respect of the decisions of the Director of Patents,
and the Director of Trademarks shall be appealable to the Court
of Appeals in accordance with the Rules of Court; and those in
respect of the decisions of the Director of Documentation,
Information and Technology Transfer Bureau shall be appealable
to the Secretary of Trade and Industry; and
(c) Exercise original jurisdiction to resolve disputes relating
to the terms of a license involving the author's right to public
performance or other communication of his work. The decisions
of the Director General in these cases shall be appealable to the
Secretary of Trade and Industry.
7.2. Qualifications. – The Director General and the
Deputies Director General must be natural born citizens of the
Philippines, at least thirty-five (35) years of age on the day of
their appointment, holders of a college degree, and of proven
competence, integrity, probity and independence: Provided, That
the Director General and at least one (1) Deputy Director General
shall be members of the Philippine Bar who have engaged in the
practice of law for at least ten (10) years: Provided, further,
That in the selection of the Director General and the Deputies
Director General, consideration shall be given to such
qualifications as would result, as far as practicable, in the balanced
representation in the Directorate General of the various fields of
intellectual property.
7.3. Term of Office. – The Director General and the
Deputies Director General shall be appointed by the President for
a term of five (5) years and shall be eligible for reappointment
only once: Provided, That the first Director General shall have
a first term of seven (7) years. Appointment to any vacancy shall
be only for the unexpired term of the predecessor.
7.4. The Office of the Director General. – The Office of the
Director General shall consist of the Director General and the
Deputies Director General, their immediate staff and such Offices
and Services that the Director General will set up to support
directly the Office of the Director General. (n)
SEC. 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)
SEC. 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)
SEC. 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 (1) or more of the following:
(1) An assurance to comply with the provisions of the
intellectual property law violated;
(2) An assurance to refrain from engaging in unlawful
and unfair acts and practices subject of the formal
investigation;
(3) An assurance to recall, replace, repair, or refund
the money value of defective goods distributed in
commerce; and
(4) An assurance to reimburse the complainant the
expenses and costs incurred in prosecuting the case
in the Bureau of Legal Affairs.
The Director of Legal Affairs may also require the
respondent to submit periodic compliance reports and file a bond
to guarantee compliance of his undertaking;
(iii) The condemnation or seizure of products which are
subject of the offense. The goods seized hereunder shall
be disposed of in such manner as may be deemed
appropriate by the Director of Legal Affairs, such as by
sale, donation to distressed local governments or to
charitable or relief institutions, exportation, recycling
into other goods, or any combination thereof, under such
guidelines as he may provide;
(iv) The forfeiture of paraphernalia and all real and
personal properties which have been used in the
commission of the offense;
(v) The imposition of administrative fines in such amount
as deemed reasonable by the Director of Legal Affairs,
which shall in no case be less than Five thousand pesos
(P5,000) nor more than One hundred fifty thousand pesos
(P150,000). In addition, an additional fine of not more
than One thousand pesos (P1,000) shall be imposed for
each day of continuing violation;
(vi) The cancellation of any permit, license, authority, or
registration which may have been granted by the Office,
or the suspension of the validity thereof for such period
of time as the Director of Legal Affairs may deem
reasonable which shall not exceed one (1) year;
(vii) The withholding of any permit, license, authority, or
registration which is being secured by the respondent
from the Office;
(viii) The assessment of damages;
(ix) Censure; and
(x) Other analogous penalties or sanctions. (Sec. 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)
SEC. 11. The Documentation, Information and Technology
Transfer Bureau. – The Documentation, Information and
Technology Transfer Bureau shall have the following functions:
11.1. Support the search and examination activities of
the Office through the following activities:
(a) Maintain and upkeep classification systems whether
they be national or international such as the International Patent
Classification (IPC) system;
(b) Provide advisory services for the determination of
search patterns;
(c) Maintain search files and search rooms and reference
libraries; and
(d) Adapt and package industrial property information.
11.2. Establish networks or intermediaries or regional
representatives;
11.3. Educate the public and build awareness on
intellectual property through the conduct of seminars and lectures,
and other similar activities;
11.4. Establish working relations with research and
development institutions as well as with local and international
intellectual property professional groups and the like;
11.5. Perform state-of-the-art searches;
11.6. Promote the use of patent information as an
effective tool to facilitate the development of technology in the
country;
11.7. Provide technical, advisory, and other services
relating to the licensing and promotion of technology, and carry
out an efficient and effective program for technology transfer;
and
11.8. Register technology transfer arrangements, and
settle disputes involving technology transfer payments. (n)
SEC. 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)
SEC. 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)
SEC. 14. Use of Intellectual Property Rights Fees by the
IPO. – 14.1. For a more effective and expeditious implementation
of this Act, the Director General shall be authorized to retain,
without need of a separate approval from any government agency,
and subject only to the existing accounting and auditing rules
and regulations, all the fees, fines, royalties and other charges,
collected by the Office under this Act and the other laws that the
Office will be mandated to administer, for use in its operations,
like upgrading of its facilities, equipment outlay, human resource
development, and the acquisition of the appropriate office space,
among others, to improve the delivery of its services to the public.
This amount, which shall be in addition to the Office's annual
budget, shall be deposited and maintained in a separate account
or fund, which may be used or disbursed directly by the Director
General.
14.2. After five (5) years from the coming into force of
this Act, the Director General shall, subject to the approval of the
Secretary of Trade and Industry, determine if the fees and charges
mentioned in Subsection 14.1 hereof that the Office shall collect
are sufficient to meet its budgetary requirements. If so, it shall
retain all the fees and charges it shall collect under the same
conditions indicated in said Subsection 14.1 but shall forthwith,
cease to receive any funds from the annual budget of the National
Government; if not, the provisions of said Subsection 14.1 shall
continue to apply until such time when the Director General,
subject to the approval of the Secretary of Trade and Industry,
certifies that the above-stated fees and charges the Office shall
collect are enough to fund its operations. (n)
SEC. 15. Special Technical and Scientific Assistance. –
The Director General is empowered to obtain the assistance
of technical, scientific or other qualified officers and employees
of other departments, bureaus, offices, agencies and
instrumentalities of the Government, including corporations
owned, controlled or operated by the Government, when deemed
necessary in the consideration of any matter submitted to the
Office relative to the enforcement of the provisions of this Act.
(Sec. 3, R.A. No. 165a)
SEC. 16. Seal of Office. – The Office shall have a seal, the
form and design of which shall be approved by the Director General.
(Sec. 4, R.A. No. 165a)
SEC. 17. Publication of Laws and Regulations. – The
Director General shall cause to be printed and make available for
distribution, pamphlet copies of this Act, other pertinent laws,
executive orders and information circulars relating to matters
within the jurisdiction of the Office. (Sec. 5, R.A. No. 165a)
SEC. 18. The IPO Gazette. – All matters required to be
published under this Act shall be published in the Office's own
publication to be known as the IPO Gazette. (n)
SEC. 19. Disqualification of Officers and Employees of the
Office. – All officers and employees of the Office shall not apply or
act as an attorney or patent agent of an application for a grant of
patent, for the registration of a utility model, industrial design or
mark nor acquire, except by hereditary succession, any patent or
utility model, design registration, or mark or any right, title or
interest therein during their employment and for one (1) year
thereafter. (Sec. 77, R.A. No. 165a)
PART II
THE LAW ON PATENTS
CHAPTER I
GENERAL PROVISIONS
SEC. 20. Definition of Terms Used in Part II, The Law on
Patents. – As used in Part II, the following terms shall have the
following meanings:
20.1. "Bureau" means the Bureau of Patents;
20.2. "Director" means the Director of Patents;
20.3. "Regulation" means the Rules of Practice in Patent
Cases formulated by the Director of Patents and promulgated by
the Director General;
20.4. "Examiner" means the patent examiner;
20.5. "Patent application" or "application" means an
application for a patent for an invention except in Chapters XII
and XIII, where "application" means an application for a utility
model and an industrial design, respectively; and
20.6. "Priority date" means the date of filing of the foreign
application for the same invention referred to in Section 31 of this
Act. (n)
CHAPTER II
PATENTABILITY
SEC. 21. 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.
It may be, or may relate to, a product, or process, or an
improvement of any of the foregoing. (Sec. 7, R.A. No. 165a)
SEC. 22. Non-Patentable Inventions. – The following shall
be excluded from patent protection:
22.1. Discoveries, scientific theories and mathematical
methods;
22.2. Schemes, rules and methods of performing mental
acts, playing games or doing business, and programs for
computers;
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;
22.4. Plant varieties or animal breeds or essentially
biological process for the production of plants or animals. This
provision shall not apply to micro-organisms 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;
22.5. Aesthetic creations; and
22.6. Anything which is contrary to public order or
morality. (Sec. 8, R.A. No. 165a)
SEC. 23. Novelty. – An invention shall not be considered
new if it forms part of a prior art. (Sec. 9, R.A. No. 165a)
SEC. 24. Prior Art. – Prior art shall consist of:
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 invention; and
24.2. The whole contents of an application for a patent,
utility model, or industrial design registration, published in
accordance with this Act, filed or effective in the Philippines,
with a filing or priority date that is earlier than the filing or
priority date of the application: Provided, That the application
which has validly claimed the filing date of an earlier application
under Section 31 of this Act, shall be prior art with effect as of the
filing date of such earlier application: Provided, further, That
the applicant or the inventor identified in both applications are
not one and the same. (Sec. 9, R.A. No. 165a)
SEC. 25. Non-Prejudicial Disclosure. – 25.1. The
disclosure of information contained in the application during the
twelve (12) months preceding the filing date or the priority date
of the application shall not prejudice the applicant on the ground
of lack of novelty if such disclosure was made by:
(a) The inventor;
(b) A patent office and the information was contained (a)
in another application filed by the inventor and should not have
been disclosed by the office, or (b) in an application filed without
the knowledge or consent of the inventor by a third party which
obtained the information directly or indirectly from the inventor;
or
(c) A third party which obtained the information directly
or indirectly from the inventor.
25.2. For the purposes of Subsection 25.1, "inventor" also
means any person who, at the filing date of application, had the
right to the patent. (n)
SEC. 26. 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. (n)
SEC. 27. Industrial Applicability. – An invention that can
be produced and used in any industry shall be industrially
applicable. (n)
CHAPTER III
RIGHT TO A PATENT
SEC. 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)
SEC. 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 (2) 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)
SEC. 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; and
(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)
SEC. 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)
CHAPTER IV
PATENT APPLICATION
SEC. 32. The Application. – 32.1. The patent application
shall be in Filipino or English and shall contain the following:
(a) A request for the grant of a patent;
(b) A description of the invention;
(c) Drawings necessary for the understanding of the
invention;
(d) One or more claims; and
(e) An abstract.
32.2. No patent may be granted unless the application
identifies the inventor. If the applicant is not the inventor, the
Office may require him to submit said authority. (Sec. 13, R. A.
No. 165a)
SEC. 33. Appointment of Agent or Representative. – An
applicant who is not a resident of the Philippines must appoint
and maintain a resident agent or representative in the Philippines
upon whom notice or process for judicial or administrative
procedure relating to the application for patent or the patent may
be served. (Sec. 11, R.A. No. 165a)
SEC. 34. The Request. – The request shall contain a
petition for the grant of the patent, the name and other data of
the applicant, the inventor and the agent and the title of the
invention. (n)
SEC. 35. Disclosure and Description of the Invention. –
35.1. Disclosure. – The application shall disclose the invention in
a manner sufficiently clear and complete for it to be carried out
by a person skilled in the art. Where the application concerns a
microbiological process or the product thereof and involves the
use of a micro-organism which cannot be sufficiently disclosed in
the application in such a way as to enable the invention to be
carried out by a person skilled in the art, and such material is
not available to the public, the application shall be supplemented
by a deposit of such material with an international depository
institution.
35.2. Description. – The Regulations shall prescribe the
contents of the description and the order of presentation. (Sec. 14,
R.A. No. 165a)
SEC. 36. The Claims. – 36.1. The application shall contain
one (1) or more claims which shall define the matter for which
protection is sought. Each claim shall be clear and concise, and
shall be supported by the description.
36.2. The Regulations shall prescribe the manner of the
presentation of claims. (n)
SEC. 37. The Abstract. – The abstract shall consist of a
concise summary of the disclosure of the invention as contained
in the description, claims and drawings in preferably not more
than one hundred fifty (150) words. It must be drafted in a way
which allows the clear understanding of the technical problem,
the gist of the solution of that problem through the invention,
and the principal use or uses of the invention. The abstract shall
merely serve for technical information. (n)
SEC. 38. Unity of Invention. – 38.1. The application shall
relate to one (1) invention only or to a group of inventions forming
a single general inventive concept.
38.2. If several independent inventions which do not form
a single general inventive concept are claimed in one application,
the Director may require that the application be restricted to a
single invention. A later application filed for an invention divided
out shall be considered as having been filed on the same day as
the first application: Provided, That the later application is filed
within four (4) months after the requirement to divide becomes
final, or within such additional time, not exceeding four (4)
months, as may be granted: Provided, further, That each
divisional application shall not go beyond the disclosure in the
initial application.
38.3. The fact that a patent has been granted on an
application that did not comply with the requirement of unity of
invention shall not be a ground to cancel the patent. (Sec. 17,
R.A. No. 165a)
SEC. 39. Information Concerning Corresponding Foreign
Application for Patents. – The applicant shall, at the request of
the Director, furnish him with the date and number of any
application for a patent filed by him abroad, hereafter referred to
as the "foreign application," relating to the same or essentially
the same invention as that claimed in the application filed with
the Office and other documents relating to the foreign application.
(n)
CHAPTER V
PROCEDURE FOR GRANT OF PATENT
SEC. 40. Filing Date Requirements. – 40.1. The filing date
of a patent application shall be the date of receipt by the Office of
at least the following elements:
(a) An express or implicit indication that a Philippine patent
is sought;
(b) Information identifying the applicant; and
(c) Description of the invention and one (1) or more claims
in Filipino or English.
40.2. If any of these elements is not submitted within
the period set by the Regulations, the application shall be
considered withdrawn. (n)
SEC. 41. According a Filing Date. – The Office shall
examine whether the patent application satisfies the requirements
for the grant of date of filing as provided in Section 40 hereof. If
the date of filing cannot be accorded, the applicant shall be given
an opportunity to correct the deficiencies in accordance with the
implementing Regulations. If the application does not contain all
the elements indicated in Section 40, the filing date should be
that date when all the elements are received. If the deficiencies
are not remedied within the prescribed time limit, the application
shall be considered withdrawn. (n)
SEC. 42. Formality Examination. – 42.1. After the patent
application has been accorded a filing date and the required fees
have been paid on time in accordance with the Regulations, the
applicant shall comply with the formal requirements specified by
Section 32 and the Regulations within the prescribed period,
otherwise the application shall be considered withdrawn.
42.2. The Regulations shall determine the procedure for
the re-examination and revival of an application as well as the
appeal to the Director of Patents from any final action by the
examiner. (Sec. 16, R.A. No. 165a)
SEC. 43. Classification and Search. – An application that
has complied with the formal requirements shall be classified
and a search conducted to determine the prior art. (n)
SEC. 44. Publication of Patent Application. – 44.1. The
patent application shall be published in the IPO Gazette together
with a search document established by or on behalf of the Office
citing any documents that reflect prior art, after the expiration of
eighteen (18) months from the filing date or priority date.
44.2. After publication of a patent application, any
interested party may inspect the application documents filed with
the Office.
44.3. The Director General, subject to the approval of
the Secretary of Trade and Industry, may prohibit or restrict the
publication of an application, if in his opinion, to do so would be
prejudicial to the national security and interests of the Republic
of the Philippines. (n)
SEC. 45. Confidentiality Before Publication. – A patent
application, which has not yet been published, and all related
documents, shall not be made available for inspection without
the consent of the applicant. (n)
SEC. 46. Rights Conferred by a Patent Application After
Publication. – The applicant shall have all the rights of a patentee
under Section 76 against any person who, without his
authorization, exercised any of the rights conferred under Section
71 of this Act in relation to the invention claimed in the published
patent application, as if a patent had been granted for that
invention: Provided, That the said person had:
46.1. Actual knowledge that the invention that he was
using was the subject matter of a published application; or
46.2. Received written notice that the invention that he
was using was the subject matter of a published application being
identified in the said notice by its serial number: Provided, That
the action may not be filed until after the grant of a patent on the
published application and within four (4) years from the
commission of the acts complained of. (n)
SEC. 47. Observation by Third Parties. – Following the
publication of the patent application, any person may present
observations in writing concerning the patentability of the
invention. Such observations shall be communicated to the
applicant who may comment on them. The Office shall
acknowledge and put such observations and comment in the file
of the application to which it relates. (n)
SEC. 48. Request for Substantive Examination. – 48.1.
The application shall be deemed withdrawn unless within six (6)
months from the date of publication under Section 41, a written
request to determine whether a patent application meets the
requirements of Sections 21 to 27 and Sections 32 to 39 and the
fees have been paid on time.
48.2. Withdrawal of the request for examination shall
be irrevocable and shall not authorize the refund of any fee. (n)
SEC. 49. Amendment of Application. – An applicant may
amend the patent application during examination: Provided,
That such amendment shall not include new matter outside the
scope of the disclosure contained in the application as filed. (n)
SEC. 50. Grant of Patent. – 50.1. If the application meets
the requirements of this Act, the Office shall grant the patent:
Provided, That all the fees are paid on time.
50.2. If the required fees for grant and printing are not
paid in due time, the application shall be deemed to be withdrawn.
50.3. A patent shall take effect on the date of the
publication of the grant of the patent in the IPO Gazette. (Sec.
18, R.A. No. 165a)
SEC. 51. Refusal of the Application. – 51.1. The final order
of refusal of the examiner to grant the patent shall be appealable
to the Director in accordance with this Act.
51.2. The Regulations shall provide for the procedure by
which an appeal from the order of refusal from the Director shall
be undertaken. (n)
SEC. 52. Publication Upon Grant of Patent. – 52.1. The
grant of the patent together with other related information shall
be published in the IPO Gazette within the time prescribed by
the Regulations.
52.2. Any interested party may inspect the complete
description, claims, and drawings of the patent on file with the
Office. (Sec. 18, R.A. No. 165a)
SEC. 53. Contents of Patent. – The patent shall be issued
in the name of the Republic of the Philippines under the seal of
the Office and shall be signed by the Director, and registered
together with the description, claims, and drawings, if any, in
books and records of the Office. (Secs. 19 and 20, R.A. No. 165a)
SEC. 54. Term of Patent. – The term of a patent shall be
twenty (20) years from the filing date of the application. (Sec. 21,
R.A. No. 165a)
SEC. 55. Annual Fees. – 55.1. To maintain the patent
application or patent, an annual fee shall be paid upon the
expiration of four (4) years from the date the application was
published pursuant to Section 44 hereof, and on each subsequent
anniversary of such date. Payment may be made within three
(3) months before the due date. The obligation to pay the annual
fees shall terminate should the application be withdrawn, refused,
or cancelled.
55.2. If the annual fee is not paid, the patent application
shall be deemed withdrawn or the patent considered as lapsed
from the day following the expiration of the period within which
the annual fees were due. A notice that the application is deemed
withdrawn or the lapse of a patent for non-payment of any annual
fee shall be published in the IPO Gazette and the lapse shall be
recorded in the Register of the Office.
55.3. A grace period of six (6) months shall be granted
for the payment of the annual fee, upon payment of the prescribed
surcharge for delayed payment. (Sec. 22, R.A. No. 165a)
SEC. 56. Surrender of Patent. – 56.1. The owner of the
patent, with the consent of all persons having grants or licenses
or other right, title or interest in and to the patent and the
invention covered thereby, which have been recorded in the Office,
may surrender his patent or any claim or claims forming part
thereof to the Office for cancellation.
56.2. A person may give notice to the Office of his
opposition to the surrender of a patent under this section, and if
he does so, the Bureau shall notify the proprietor of the patent
and determine the question.
56.3. If the Office is satisfied that the patent may
properly be surrendered, he may accept the offer and, as from the
day when notice of his acceptance is published in the IPO Gazette,
the patent shall cease to have effect, but no action for infringement
shall lie and no right compensation shall accrue for any use of
the patented invention before that day for the services of the
government. (Sec. 24, R.A. No. 165a)
SEC. 57. Correction of Mistakes of the Office. – The
Director shall have the power to correct, without fee, any mistake
in a patent incurred through the fault of the Office when clearly
disclosed in the records thereof, to make the patent conform to
the records. (Sec. 25, R.A. No. 165)
SEC. 58. Correction of Mistake in the Application. – On
request of any interested person and payment of the prescribed
fee, the Director is authorized to correct any mistake in a patent
of a formal and clerical nature, not incurred through the fault of
the Office. (Sec. 26, R.A. No. 165a)
SEC. 59. Changes in Patents. – 59.1. The owner of a patent
shall have the right to request the Bureau to make the changes
in the patent in order to:
(a) Limit the extent of the protection conferred by it;
(b) Correct obvious mistakes or to correct clerical errors;
and
(c) Correct mistakes or errors, other than those referred
to in letter (b), made in good faith: Provided, That where the
change would result in a broadening of the extent of protection
conferred by the patent, no request may be made after the
expiration of two (2) years from the grant of a patent and the
change shall not affect the rights of any third party which has
relied on the patent, as published.
59.2. No change in the patent shall be permitted under
this section, where the change would result in the disclosure
contained in the patent going beyond the disclosure contained in
the application filed.
59.3. If, and to the extent to which the Office changes
the patent according to this section, it shall publish the same. (n)
SEC. 60. Form and Publication of Amendment. – An
amendment or correction of a patent shall be accomplished by a
certificate of such amendment or correction, authenticated by
the seal of the Office and signed by the Director, which certificate
shall be attached to the patent. Notice of such amendment or
correction shall be published in the IPO Gazette and copies of the
patent kept or furnished by the Office shall include a copy of the
certificate of amendment or correction. (Sec. 27, R.A. 165)
CHAPTER VI
CANCELLATION OF PATENTS AND
SUBSTITUTION OF PATENTEE
SEC. 61. Cancellation of Patents. – 61.1. Any interested
person may, upon payment of the required fee, petition to cancel
the patent or any claim thereof, or parts of the claim, on any of
the following grounds:
(a) That what is claimed as the invention is not new or
patentable;
(b) 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
(c) That the patent is contrary to the public order or
morality.
61.2. Where the grounds for cancellation relate to some
of the claims or parts of the claim, cancellation may be effected to
such extent only. (Secs. 28 and 29, R.A. No. 165a)
SEC. 62. Requirement of the Petition. – The petition for
cancellation shall be in writing, verified by the petitioner or by
any person in his behalf who knows the facts, specify the grounds
upon which it is based, include a statement of the facts to be
relied upon, and filed with the Office. Copies of printed
publications or of patents of other countries, and other supporting
documents mentioned in the petition shall be attached thereto,
together with the translation thereof in English, if not in the
English language. (Sec. 30, R.A. No. 165)
SEC. 63. Notice of Hearing. – Upon filing of a petition for
cancellation, the Director of Legal Affairs shall forthwith serve
notice of the filing thereof upon the patentee and all persons having
grants or licenses, or any other right, title or interest in and to
the patent and the invention covered thereby, as appears of record
in the Office, and of notice of the date of hearing thereon on such
persons and the petitioner. Notice of the filing of the petition
shall be published in the IPO Gazette. (Sec. 31, R.A. No. 165a)
SEC. 64. Committee of Three. – In cases involving highly
technical issues, on motion of any party, the Director of Legal
Affairs may order that the petition be heard and decided by a
committee composed of the Director of Legal Affairs as chairman
and two (2) members who have the experience or expertise in the
field of technology to which the patent sought to be cancelled
relates. The decision of the committee shall be appealable to the
Director General. (n)
SEC. 65. Cancellation of the Patent. – 65.1. If the Committee
finds that a case for cancellation has been proved, it shall order the
patent or any specified claim or claims thereof cancelled.
65.2. If the Committee finds that, taking into
consideration the amendment made by the patentee during the
cancellation proceedings, the patent and the invention to which
it relates meet the requirement of this Act, it may decide to
maintain the patent as amended: Provided, That the fee for
printing of a new patent is paid within the time limit prescribed
in the Regulations.
65.3. If the fee for the printing of a new patent is not
paid in due time, the patent should be revoked.
65.4. If the patent is amended under Subsection 65.2
hereof, the Bureau shall, at the same time as it publishes the
mention of the cancellation decision, publish the abstract,
representative claims and drawings indicating clearly what the
amendments consist of. (n)
SEC. 66. Effect of Cancellation of Patent or Claim. – The
rights conferred by the patent or any specified claim or claims
cancelled shall terminate. Notice of the cancellation shall be
published in the IPO Gazette. Unless restrained by the Director
General, the decision or order to cancel by Director of Legal Affairs
shall be immediately executory even pending appeal. (Sec. 32,
R.A. No. 165a)
CHAPTER VII
REMEDIES OF A PERSON WITH
A RIGHT TO A PATENT
SEC. 67. Patent Application by Persons Not Having the
Right to a Patent. – 67.1. If a person referred to in Section 29
other than the applicant is declared by final court order or decision
as having the right to the patent, such person may, within three
(3) months after the decision has become final:
(a) Prosecute the application as his own application in place
of the applicant;
(b) File a new patent application in respect of the same
invention;
(c) Request that the application be refused; or
(d) Seek cancellation of the patent, if one has already been
issued.
67.2. The provisions of Subsection 38.2 shall apply
mutatis mutandis to a new application filed under Subsection
67.1(b). (n)
SEC. 68. Remedies of the True and Actual Inventor. – If a
person, who was deprived of the patent without his consent or
through fraud is declared by final court order or decision to be the
true and actual inventor, the court shall order for his substitution
as patentee, or at the option of the true inventor, cancel the patent,
and award actual and other damages in his favor if warranted by
the circumstances. (Sec. 33, R.A. No. 165a)
SEC. 69. Publication of the Court Order. – The court shall
furnish the Office a copy of the order or decision referred to in
Sections 67 and 68, which shall be published in the IPO Gazette
within three (3) months from the date such order or decision
became final and executory, and shall be recorded in the register
of the Office. (n)
SEC. 70. Time to File Action in Court. – The actions
indicated in Sections 67 and 68 shall be filed within one (1) year
from the date of publication made in accordance with Sections 44
and 51, respectively. (n)
CHAPTER VIII
RIGHTS OF PATENTEES AND
INFRINGEMENT OF PATENTS
SEC. 71. Rights Conferred by Patent. – 71.1. A patent
shall confer on its owner the following exclusive rights:
(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, selling or offering for sale, or importing any product obtained
directly or indirectly from such process.
71.2. Patent owners shall also have the right to assign,
or transfer by succession the patent, and to conclude licensing
contracts for the same. (Sec. 37, R.A. No. 165a)
SEC. 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 noncommercial
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)
SEC. 73. Prior User. – 73.1. Notwithstanding Section 72
hereof, any prior user, who, in good 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)
SEC. 74. Use of Invention by Government. – 74.1. A
Government agency or third person authorized by the Government
may exploit the invention even without agreement of the patent
owner where:
(a) The public interest, in particular, national security,
nutrition, health or the development of other sectors, as determined
by the appropriate agency of the government, so requires; or
(b) A judicial or administrative body has determined that
the manner of exploitation, by the owner of the patent or his
licensee, is anti-competitive.
74.2. The use by the Government, or third 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, R.A. No. 165a)
SEC. 75. Extent of Protection and Interpretation of
Claims. – 75.1. The extent of protection conferred by the patent
shall be determined by the claims, which are to be interpreted in
the light of the description and drawings.
75.2. For the purpose of determining the extent of
protection conferred by the patent, due account shall be taken of
elements which are equivalent to the elements expressed in the
claims, so that a claim shall be considered to cover not only all
the elements as expressed therein, but also equivalents. (n)
SEC. 76. Civil Action for Infringement. – 76.1. 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 constitutes patent infringement.
76.2. Any patentee, or anyone possessing any right, title
or interest in and to the patented invention, whose rights have
been infringed, may bring a civil action before a court of competent
jurisdiction, to recover from the infringer such damages sustained
thereby, plus attorney's fees and other expenses of litigation, and
to secure an injunction for the protection of his rights.
76.3. If the damages are inadequate or cannot be readily
ascertained with reasonable certainty, the court may award by
way of damages a sum equivalent to reasonable royalty.
76.4. The court may, according to the circumstances of
the case, award damages in a sum above the amount found as
actual damages sustained: Provided, That the award does not
exceed three (3) times the amount of such actual damages.
76.5. The court may, in its discretion, order that the
infringing goods, materials and implements predominantly used
in the infringement be disposed of outside the channels of
commerce or destroyed, without compensation.
76.6. Anyone who actively induces the infringement of a
patent or provides the infringer with a component of a patented
product or of a product produced because of a patented process
knowing it to be especially adopted for infringing the patented
invention and not suitable for substantial non-infringing use shall
be liable as a contributory infringer and shall be jointly and
severally liable with the infringer. (Sec. 42, R.A. No. 165a)
SEC. 77. Infringement Action by a Foreign National. –
Any foreign national or juridical entity who meets the requirements
of Section 3 and not engaged in business in the Philippines, to
which a patent has been granted or assigned under this Act, may
bring an action for infringement of patent, whether or not it is
licensed to do business in the Philippines under existing law.
(Sec. 41-A, R.A. No. 165a)
SEC. 78. Process Patents; Burden of Proof. – If the subject
matter of a patent is a process for obtaining a product, any identical
product shall be presumed to have been obtained through the use
of the patented process if the product is new or there is substantial
likelihood that the identical product was made by the process and
the owner of the patent has been unable despite reasonable efforts,
to determine the process actually used. In ordering the defendant
to prove that the process to obtain the identical product is different
from the patented process, the court shall adopt measures to
protect, as far as practicable, his manufacturing and business
secrets. (n)
SEC. 79. Limitation of Action for Damages. – No damages
can be recovered for acts of infringement committed more than
four (4) years before the institution of the action for infringement.
(Sec. 43, R.A. No. 165)
SEC. 80. Damages; Requirement of Notice. – Damages
cannot be recovered for acts of infringement committed before
the infringer had known, or had reasonable grounds to know of
the patent. It is presumed that the infringer had known of the
patent if on the patented product, or on the container or package
in which the article is supplied to the public, or on the advertising
material relating to the patented product or process, are placed
the words "Philippine Patent" with the number of the patent.
(Sec. 44, R.A. No. 165a)
SEC. 81. Defenses in Action for Infringement. – In an
action for infringement, the defendant, in addition to other defenses
available to him, may show the invalidity of the patent, or any
claim thereof, on any of the grounds on which a petition of
cancellation can be brought under Section 61 hereof. (Sec. 45,
R.A. No. 165)
SEC. 82. Patent Found Invalid May be Cancelled. – In an
action for infringement, if the court shall find the patent or any
claim to be invalid, it shall cancel the same, and the Director of
Legal Affairs upon receipt of the final judgment of cancellation by
the court, shall record that fact in the register of the Office and
shall publish a notice to that effect in the IPO Gazette. (Sec. 46,
R.A. No. 165a)
SEC. 83. Assessor in Infringement Action. – 83.1. Two (2)
or more assessors may be appointed by the court. The assessors
shall be possessed of the necessary scientific and technical
knowledge required by the subject matter in litigation. Either
party may challenge the fitness of any assessor proposed for
appointment.
83.2. Each assessor shall receive a compensation in an
amount to be fixed by the court and advanced by the complaining
party, which shall be awarded as part of his costs should he prevail
in the action. (Sec. 47, R.A. No. 165a)
SEC. 84. Criminal Action for Repetition of Infringement.
– If infringement is repeated by the infringer or by anyone in
connivance with him after finality of the judgment of the court
against the infringer, the offenders shall, without prejudice to
the institution of a civil action for damages, be criminally liable
therefor and, upon conviction, shall suffer imprisonment for the
period of not less than six (6) months but not more than three (3)
years and/or a fine of not less than One hundred thousand pesos
(P100,000) but not more than Three hundred thousand pesos
(P300,000), at the discretion of the court. The criminal action
herein provided shall prescribe in three (3) years from the date of
the commission of the crime. (Sec. 48, R.A. No. 165a)
CHAPTER IX
VOLUNTARY LICENSING
SEC. 85. Voluntary License Contract. – To encourage the
transfer and dissemination of technology, prevent or control
practices and conditions that may in particular cases constitute
an abuse of intellectual property rights having an adverse effect
on competition and trade, all technology transfer arrangements
shall comply with the provisions of this Chapter. (n)
SEC. 86. Jurisdiction to Settle Disputes on Royalties. –
The Director of the Documentation, Information and Technology
Transfer Bureau shall exercise quasi-judicial jurisdiction in the
settlement of disputes between parties to a technology transfer
arrangement arising from technology transfer payments,
including the fixing of appropriate amount or rate of royalty. (n)
SEC. 87. Prohibited Clauses. – Except in cases under
Section 91, the following provisions shall be deemed prima facie
to have an adverse effect on competition and trade:
87.1. Those which impose upon the licensee the obligation
to acquire from a specific source capital goods, intermediate
products, raw materials, and other technologies, or of permanently
employing personnel indicated by the licensor;
87.2. Those pursuant to which the licensor reserves the
right to fix the sale or resale prices of the products manufactured
on the basis of the license;
87.3. Those that contain restrictions regarding the
volume and structure of production;
87.4. Those that prohibit the use of competitive
technologies in a non-exclusive technology transfer agreement;
87.5. Those that establish a full or partial purchase
option in favor of the licensor;
87.6. Those that obligate the licensee to transfer for free
to the licensor the inventions or improvements that may be
obtained through the use of the licensed technology;
87.7. Those that require payment of royalties to the
owners of patents for patents which are not used;
87.8. Those that prohibit the licensee to export the
licensed product unless justified for the protection of the legitimate
interest of the licensor such as exports to countries where exclusive
licenses to manufacture and/or distribute the licensed product(s)
have already been granted;
87.9. Those which restrict the use of the technology
supplied after the expiration of the technology transfer
arrangement, except in cases of early termination of the
technology transfer arrangement due to reason(s) attributable to
the licensee;
87.10. Those which require payments for patents and
other industrial property rights after their expiration, termination
arrangement;
87.11. Those which require that the technology recipient
shall not contest the validity of any of the patents of the technology
supplier;
87.12. Those which restrict the research and development
activities of the licensee designed to absorb and adapt the
transferred technology to local conditions or to initiate research
and development programs in connection with new products,
processes or equipment;
87.13. Those which prevent the licensee from adapting
the imported technology to local conditions, or introducing
innovation to it, as long as it does not impair the quality standards
prescribed by the licensor;
87.14. Those which exempt the licensor for liability for
non-fulfillment of his responsibilities under the technology transfer
arrangement and/or liability arising from third party suits brought
about by the use of the licensed product or the licensed technology;
and
87.15. Other clauses with equivalent effects. (Sec. 33-C
(2), R.A. 165a)
SEC. 88. Mandatory Provisions. – The following provisions
shall be included in voluntary license contracts:
88.1. That the laws of the Philippines shall govern the
interpretation of the same and in the event of litigation, the venue
shall be the proper court in the place where the licensee has its
principal office;
36
88.2. Continued access to improvements in techniques
and processes related to the technology shall be made available
during the period of the technology transfer arrangement;
88.3. In the event the technology transfer arrangement
shall provide for arbitration, the Procedure of Arbitration of the
Arbitration Law of the Philippines or the Arbitration Rules of the
United Nations Commission on International Trade Law
(UNCITRAL) or the Rules of Conciliation and Arbitration of the
International Chamber of Commerce (ICC) shall apply and the
venue of arbitration shall be the Philippines or any neutral country;
and
88.4. The Philippine taxes on all payments relating to
the technology transfer arrangement shall be borne by the licensor.
(n)
SEC. 89. Rights of Licensor. – In the absence of any
provision to the contrary in the technology transfer arrangement,
the grant of a license shall not prevent the licensor from granting
further licenses to third person nor from exploiting the subject
matter of the technology transfer arrangement himself. (Sec. 33-
B, R.A. 165a)
SEC. 90. Rights of Licensee. – The licensee shall be entitled
to exploit the subject matter of the technology transfer
arrangement during the whole term of the technology transfer
arrangement. (Sec. 33-C (1), R.A. 165a)
SEC. 91. Exceptional Cases. – In exceptional or meritorious
cases where substantial benefits will accrue to the economy, such
as high technology content, increase in foreign exchange earnings,
employment generation, regional dispersal of industries and/or
substitution with or use of local raw materials, or in the case of
Board of Investments, registered companies with pioneer status,
exemption from any of the above requirements may be allowed by
the Documentation, Information and Technology Transfer Bureau
after evaluation thereof on a case by case basis. (n)
SEC. 92. Non-Registration with the Documentation,
Information and Technology Transfer Bureau. – Technology
transfer arrangements that conform with the provisions of Sections
86 and 87 need not be registered with the Documentation,
Information and Technology Transfer Bureau. Non-conformance
with any of the provisions of Sections 87 and 88, however, shall
automatically render the technology transfer arrangement
unenforceable, unless said technology transfer arrangement is
approved and registered with the Documentation, Information
and Technology Transfer Bureau under the provisions of Section
91 on exceptional cases. (n)
CHAPTER X
COMPULSORY LICENSING
SEC. 93. Grounds for Compulsory Licensing. – The
Director of Legal Affairs may grant a license to exploit a patented
invention, even without the agreement of the patent owner, in
favor of any person who has shown his capability to exploit the
invention, under any of the following circumstances:
93.1. National emergency or other circumstances of
extreme urgency;
93.2. Where the public interest, in particular, national
security, nutrition, health or the development of other vital sectors
of the national economy as determined by the appropriate agency
of the Government, so requires; or
93.3. Where a judicial or administrative body has
determined that the manner of exploitation by the owner of the
patent or his licensee is anti-competitive; or
93.4. In case of public non-commercial use of the patent
by the patentee, without satisfactory reason;
93.5. If the patented invention is not being worked in
the Philippines on a commercial scale, although capable of being
worked, without satisfactory reason: Provided, That the
importation of the patented article shall constitute working or
using the patent. (Secs. 34, 34-A, 34-B, R.A. No. 165a)
SEC. 94. Period for Filing a Petition for a Compulsory
License. – 94.1. A compulsory license may not be applied for on
the ground stated in Subsection 93.5 before the expiration of a
period of four (4) years from the date of filing of the application or
three (3) years from the date of the patent whichever period expires
last.
94.2. A compulsory license which is applied for on any of
the grounds stated in Subsections 93.2, 93.3, and 93.4 and Section
97 may be applied for at any time after the grant of the patent.
(Sec. 34(1), R.A. No. 165)
SEC. 95. Requirement to Obtain a License on Reasonable
Commercial Terms. – 95.1. The license will only be granted after
the petitioner has made efforts to obtain authorization from the
patent owner on reasonable commercial terms and conditions but
such efforts have not been successful within a reasonable period
of time.
95.2. The requirement under Subsection 95.1 shall not
apply in the following cases:
(a) Where the petition for compulsory license seeks to
remedy a practice determined after judicial or administrative
process to be anti-competitive;
(b) In situations of national emergency or other
circumstances of extreme urgency; and
(c) In cases of public non-commercial use.
95.3. In situations of national emergency or other
circumstances of extreme urgency, the right holder shall be notified
as soon as reasonably practicable.
95.4. In the case of public non-commercial use, where
the government or contractor, without making a patent search,
knows or has demonstrable grounds to know that a valid patent
is or will be used by or for the government, the right holder shall
be informed promptly. (n)
SEC. 96. Compulsory Licensing of Patents Involving Semi-
Conductor Technology. – In the case of compulsory licensing of
patents involving semi-conductor technology, the license may only
be granted in case of public non-commercial use or to remedy a
practice determined after judicial or administrative process to be
anti-competitive. (n)
SEC. 97. Compulsory License Based on Interdependence
of Patents. – If the invention protected by a patent, hereafter
referred to as the "second patent," within the country cannot be
worked without infringing another patent, hereafter referred to
as the "first patent," granted on a prior application or benefiting
from an earlier priority, a compulsory license may be granted to
the owner of the second patent to the extent necessary for the
working of his invention, subject to the following conditions:
97.1. The invention claimed in the second patent involves
an important technical advance of considerable economic
significance in relation to the first patent;
97.2. The owner of the first patent shall be entitled to a
cross-license on reasonable terms to use the invention claimed in
the second patent;
97.3. The use authorized in respect of the first patent
shall be non-assignable except with the assignment of the second
patent; and
97.4. The terms and conditions of Sections 95, 96 and 98
to 100 of this Act. (Sec. 34-C, R.A. No. 165a)
SEC. 98. Form and Contents of Petition. – The petition
for compulsory licensing must be in writing, verified by the
petitioner and accompanied by payment of the required filing fee.
It shall contain the name and address of the petitioner as well as
those of the respondents, the number and date of issue of the
patent in connection with which compulsory license is sought,
the name of the patentee, the title of the invention, the statutory
grounds upon which compulsory license is sought, the ultimate
facts constituting the petitioner's cause of action, and the relief
prayed for. (Sec. 34-D, R.A. No. 165)
SEC. 99. Notice of Hearing. – 99.1. Upon filing of a
petition, the Director of Legal Affairs shall forthwith serve notice
of the filing thereof upon the patent owner and all persons having
grants or licenses, or any other right, title or interest in and to
the patent and invention covered thereby as appears of record in
the Office, and of notice of the date of hearing thereon, on such
persons and petitioner. The resident agent or representative
appointed in accordance with Section 33 hereof, shall be bound to
accept service of notice of the filing of the petition within the
meaning of this Section.
99.2. In every case, the notice shall be published by the
said Office in a newspaper of general circulation, once a week for
three (3) consecutive weeks and once in the IPO Gazette at
applicant's expense. (Sec. 34-E, R.A. No. 165)
SEC. 100. Terms and Conditions of Compulsory License.
– The basic terms and conditions including the rate of royalties of
a compulsory license shall be fixed by the Director of Legal Affairs
subject to the following conditions:
100.1. The scope and duration of such license shall be
limited to the purpose for which it was authorized;
100.2. The license shall be non-exclusive;
100.3. The license shall be non-assignable, except with
that part of the enterprise or business with which the invention
is being exploited;
100.4. Use of the subject matter of the license shall be
devoted predominantly for the supply of the Philippine market:
Provided, That this limitation shall not apply where the grant of
the license is based on the ground that the patentee's manner of
exploiting the patent is determined by judicial or administrative
process, to be anti-competitive.
100.5. The license may be determined upon proper showing
that circumstances which led to its grant have ceased to exist
and are unlikely to recur: Provided, That adequate protection
shall be afforded to the legitimate interest of the licensee; and
100.6. The patentee shall be paid adequate remuneration
taking into account the economic value of the grant or
authorization, except that in cases where the license was granted
to remedy a practice which was determined after judicial or
administrative process, to be anti-competitive, the need to correct
the anti-competitive practice may be taken into account in fixing
the amount of remuneration. (Sec. 35-B, R.A.No. 165a)
SEC. 101. Amendment, Cancellation, Surrender of
Compulsory License. – 101.1. Upon the request of the patentee
or the licensee, the Director of Legal Affairs may amend the
decision granting the compulsory license, upon proper showing of
new facts or circumstances justifying such amendment.
101.2. Upon the request of the patentee, the said Director
may cancel the compulsory license:
(a) If the ground for the grant of the compulsory license no
longer exists and is unlikely to recur;
(b) If the licensee has neither begun to supply the domestic
market nor made serious preparation therefor;
(c) If the licensee has not complied with the prescribed
terms of the license.
101.3. The licensee may surrender the license by a written
declaration submitted to the Office.
101.4. The said Director shall cause the amendment,
surrender, or cancellation in the Register, notify the patentee,
and/or the licensee, and cause notice thereof to be published in
the IPO Gazette. (Sec. 35-D, R.A. No. 165a)
SEC. 102. Licensee's Exemption from Liability. – Any
person who works a patented product, substance and/or process
under a license granted under this Chapter, shall be free from
any liability for infringement: Provided, however, That in the
case of voluntary licensing, no collusion with the licensor is proven.
This is without prejudice to the right of the rightful owner of the
patent to recover from the licensor whatever he may have received
as royalties under the license. (Sec. 35-E, R.A. No. 165a)
CHAPTER XI
ASSIGNMENT AND TRANSMISSION OF RIGHTS
SEC. 103. Transmission of Rights. – 103.1. Patents or
applications for patents and invention to which they relate, shall
be protected in the same way as the rights of other property under
the Civil Code.
103.2. Inventions and any right, title or interest in and
to patents and inventions covered thereby, may be assigned or
transmitted by inheritance or bequest or may be the subject of a
license contract. (Sec. 50, R.A. No. 165a)
SEC. 104. Assignment of Inventions. – An assignment
may be of the entire right, title or interest in and to the patent
and the invention covered thereby, or of an undivided share of the
entire patent and invention, in which event the parties become
joint owners thereof. An assignment may be limited to a specified
territory. (Sec. 51, R.A. No. 165)
SEC. 105. Form of Assignment. – The assignment must
be in writing, acknowledged before a notary public or other officer
authorized to administer oath or perform notarial acts, and
certified under the hand and official seal of the notary or such
other officer. (Sec. 52, R.A. No. 165)
SEC. 106. Recording. – 106.1. The Office shall record
assignments, licenses and other instruments relating to the
transmission of any right, title or interest in and to inventions,
and patents or application for patents or inventions to which they
relate, which are presented in due form to the Office for
registration, in books and records kept for the purpose. The
original documents together with a signed duplicate thereof shall
be filed, and the contents thereof should be kept confidential. If
the original is not available, an authenticated copy thereof in
duplicate may be filed. Upon recording, the Office shall retain
the duplicate, return the original or the authenticated copy to the
party who filed the same and notice of the recording shall be
published in the IPO Gazette.
106.2. Such instruments shall be void as against any
subsequent purchaser or mortgagee for valuable consideration
and without notice, unless, it is so recorded in the Office, within
three (3) months from the date of said instrument, or prior to the
subsequent purchase or mortgage. (Sec. 53, R.A. No. 165a)
SEC. 107. Rights of Joint Owners. – If two (2) or more
persons jointly own a patent and the invention covered thereby,
either by the issuance of the patent in their joint favor or by
reason of the assignment of an undivided share in the patent and
invention or by reason of the succession in title to such share,
each of the joint owners shall be entitled to personally make, use,
sell, or import the invention for his own profit: Provided, however,
That neither of the joint owners shall be entitled to grant licenses
or to assign his right, title or interest or part thereof without the
consent of the other owner or owners, or without proportionally
dividing the proceeds with such other owner or owners. (Sec. 54,
R.A. No. 165)
CHAPTER XII
REGISTRATION OF UTILITY MODELS
SEC. 108. Applicability of Provisions Relating to Patents.
– 108.1. Subject to Section 109, the provisions governing patents
shall apply, mutatis mutandis, to the registration of utility models.
108.2. Where the right to a patent conflicts with the
right to a utility model registration in the case referred to in
Section 29, the said provision shall apply as if the word "patent"
were replaced by the words "patent or utility model registration."
(Sec. 55, R.A. No. 165a)
SEC. 109. Special Provisions Relating to Utility Models.
– 109.1. (a) An invention qualifies for registration as a utility
model if it is new and industrially applicable.
(b) Section 21, "Patentable Inventions," shall apply except
the reference to inventive step as a condition of protection.
109.2. Sections 43 to 49 shall not apply in the case of
applications for registration of a utility model.
109.3. A utility model registration shall expire, without
any possibility of renewal, at the end of the seventh year after the
date of the filing of the application.
109.4. In proceedings under Sections 61 to 64, the utility
model registration shall be cancelled on the following grounds:
(a) That the claimed invention does not qualify for
registration as a utility model and does not meet the requirements
of registrability, in particular having regard to Subsection 109.1
and Sections 22, 23, 24 and 27;
(b) That the description and the claims do not comply with
the prescribed requirements;
(c) That any drawing which is necessary for the
understanding of the invention has not been furnished;
(d) That the owner of the utility model registration is not
the inventor or his successor in title. (Secs. 55, 56, and 57, R.A.
No. 165a)
SEC. 110. Conversion of Patent Applications or
Applications for Utility Model Registration. – 110.1. At any time
before the grant or refusal of a patent, an applicant for a patent
may, upon payment of the prescribed fee, convert his application
into an application for registration of a utility model, which shall
be accorded the filing date of the initial application. An application
may be converted only once.
110.2. At any time before the grant or refusal of a utility
model registration, an applicant for a utility model registration
may, upon payment of the prescribed fee, convert his application
into a patent application, which shall be accorded the filing date
of the initial application. (Sec. 58, R.A. No. 165a)
SEC. 111. Prohibition against Filing of Parallel
Applications. – An applicant may not file two (2) applications for
the same subject, one for utility model registration and the other
for the grant of a patent whether simultaneously or consecutively.
(Sec. 59, R.A. No. 165a)
CHAPTER XIII
INDUSTRIAL DESIGN
SEC. 112. Definition of Industrial Design. – An industrial
design is any composition of lines or colors or any threedimensional
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. (Sec. 55, R.A. No. 165a)
SEC. 113. Substantive Conditions for Protection. – 113.1.
Only industrial designs that are new or original shall benefit
from protection under this Act.
113.2. Industrial designs dictated essentially by technical
or functional considerations to obtain a technical result or those
that are contrary to public order, health or morals shall not be
protected. (n)
SEC. 114. Contents of the Application. – 114.1. Every
application for registration of an industrial design shall contain:
(a) A request for registration of the industrial design;
(b) Information identifying the applicant;
(c) An indication of the kind of article of manufacture or
handicraft to which the design shall be applied;
(d) A representation of the article of manufacture or
handicraft by way of drawings, photographs or other adequate
graphic representation of the design as applied to the article of
manufacture or handicraft which clearly and fully discloses those
features for which design protection is claimed; and
(e) The name and address of the creator, or where the
applicant is not the creator, a statement indicating the origin of
the right to the industrial design registration.
114.2. The application may be accompanied by a specimen
of the article embodying the industrial design and shall be subject
to the payment of the prescribed fee. (n)
SEC. 115. Several Industrial Designs in One Application.
– Two (2) or more industrial designs may be the subject of the
same application: Provided, That they relate to the same subclass
of the International Classification or to the same set or
composition of articles. (n)
SEC. 116. Examination. – 116.1. The Office shall accord
as the filing date the date of receipt of the application containing
indications allowing the identity of the applicant to be established
and a representation of the article embodying the industrial design
or a pictorial representation thereof.
116.2. If the application does not meet these requirements
the filing date should be that date when all the elements specified
in Section 105 are filed or the mistakes corrected. Otherwise, if
the requirements are not complied within the prescribed period,
the application shall be considered withdrawn.
116.3. After the application has been accorded a filing date
and the required fees paid on time, the applicant shall comply
with the requirements of Section 114 within the prescribed period,
otherwise the application shall be considered withdrawn.
116.4. The Office shall examine whether the industrial
design complies with requirements of Section 112 and Subsections
113.2 and 113.3. (n)
SEC. 117. Registration. – 117.1. Where the Office finds
that the conditions referred to in Section 113 are fulfilled, it shall
order that registration be effected in the industrial design register
and cause the issuance of an industrial design certificate of
registration, otherwise, it shall refuse the application.
117.2. The form and contents of an industrial design
certificate shall be established by the Regulations: Provided,
That the name and address of the creator shall be mentioned in
every case.
117.3 Registration shall be published in the form and
within the period fixed by the Regulations.
117.4. The Office shall record in the register any change
in the identity of the proprietor of the industrial design or his
representative, if proof thereof is furnished to it. A fee shall be
paid, with the request to record the change in the identity of the
proprietor. If the fee is not paid, the request shall be deemed not
to have been filed. In such case, the former proprietor and the
former representative shall remain subject to the rights and
obligations as provided in this Act.
117.5. Anyone may inspect the Register and the files of
registered industrial designs including the files of cancellation
proceedings. (n)
SEC. 118. The Term of Industrial Design Registration. –
118.1. The registration of an industrial design shall be for a period
of five (5) years from the filing date of the application.
118.2. The registration of an industrial design may be
renewed for not more than two (2) consecutive periods of five (5)
years each, by paying the renewal fee.
118.3. The renewal fee shall be paid within twelve (12)
months preceding the expiration of the period of registration.
However, a grace period of six (6) months shall be granted for
payment of the fees after such expiration, upon payment of a
surcharge.
118.4. The Regulations shall fix the amount of renewal
fee, the surcharge and other requirements regarding the recording
of renewals of registration.
SEC. 119. Application of Other Sections and Chapters. –
119.1. The following provisions relating to patents shall apply
mutatis mutandis to an industrial design registration:
Section 21- Novelty;
Section 24- Prior art: Provided, That the disclosure is
contained in printed documents or in any tangible form;
Section 25- Non-prejudicial Disclosure;
Section 27- Inventions Created Pursuant to a Commission;
Section 28- Right to a Patent;
Section 29- First to File Rule;
Section 31- Right of Priority: Provided, That the
application for industrial design shall be filed within
six (6) months from the earliest filing date of the
corresponding foreign application;
Section 33- Appointment of Agent or Representative;
Section 51- Refusal of the Application;
Sections 56 to 60- Surrender, Correction of and Changes
in Patent;
Chapter VII- Remedies of a Person with a Right to Patent;
Chapter VIII- Rights of Patentees and Infringement of
Patents; and
Chapter XI- Assignment and Transmission of Rights.
119.2. If the essential elements of an industrial design
which is the subject of an application have been obtained from
the creation of another person without his consent, protection
under this Chapter cannot be invoked against the injured party.
(n)
SEC. 120. Cancellation of Design Registration. – 120.1.
At any time during the term of the industrial design registration,
any person upon payment of the required fee, may petition the
Director of Legal Affairs to cancel the industrial design on any of
the following grounds:
(a) If the subject matter of the industrial design is not
registrable within the terms of Sections 112 and 113;
(b) If the subject matter is not new; or
(c) If the subject matter of the industrial design extends
beyond the content of the application as originally filed.
120.2. Where the grounds for cancellation relate to a part
of the industrial design, cancellation may be effected to such extent
only. The restriction may be effected in the form of an alteration
of the effected features of the design. (n)
PART III
THE LAW ON TRADEMARKS, SERVICE MARKS
AND TRADE NAMES
SEC. 121. Definitions. – As used in Part III, the following
terms have the following meanings:
121.1. "Mark" means any visible sign capable of
distinguishing the goods (trademark) or services (service mark)
of an enterprise and shall include a stamped or marked container
of goods; (Sec. 38, R.A. No. 166a)
121.2. "Collective mark" means 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; (Sec. 40, R.A. No. 166a)
121.3. "Trade name" means the name or designation
identifying or distinguishing an enterprise; (Sec. 38, R.A. No.
166a)
121.4. "Bureau" means the Bureau of Trademarks;
121.5. "Director" means the Director of Trademarks;
121.6. "Regulations" mean the Rules of Practice in
Trademarks and Service Marks formulated by the Director of
Trademarks and approved by the Director General; and
121.7. "Examiner" means the trademark examiner. (Sec.
38, R.A. No. 166a)
SEC. 122. How Marks are Acquired. – The rights in a
mark shall be acquired through registration made validly in
accordance with the provisions of this law. (Sec. 2-A, R.A. No.
166a)
SEC. 123. Registrability. – 123.1. 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 widow;
(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 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;
(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 or services would indicate
a connection between those goods or services, and the owner of
the registered mark: 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 bona fide and established trade practice;
(j) Consists exclusively of signs or of 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.
123.2. As regards signs or devices mentioned in
paragraphs (j), (k), and (l), nothing shall prevent the registration
of any such sign or device which has become distinctive in relation
to the goods for which registration is requested as a result of the
use that have been made of it in commerce in the Philippines.
The Office may accept as prima facie evidence that the mark has
become distinctive, as used in connection with the applicant's
goods or services in commerce, proof of substantially exclusive
and continuous use thereof by the applicant in commerce in the
Philippines for five (5) years before the date on which the claim of
distinctiveness is made.
123.3. The nature of the goods to which the mark is applied
will not constitute an obstacle to registration. (Sec. 4, R.A. No.
166a)
SEC. 124. Requirements of Application. – 124.1. The
application for the registration of the mark shall be in Filipino or
in English and shall contain the following:
(a) A request for registration;
(b) The name and address of the applicant;
(c) The name of a State of which the applicant is a national
or where he has domicile; and the name of a State in which the
applicant has a real and effective industrial or commercial
establishment, if any;
(d) Where the applicant is a juridical entity, the law under
which it is organized and existing;
(e) The appointment of an agent or representative, if the
applicant is not domiciled in the Philippines;
(f) Where the applicant claims the priority of an earlier
application, an indication of:
i) The name of the State with whose national office the
earlier application was filed or if filed with an office other
than a national office, the name of that office,
ii) The date on which the earlier application was filed, and
iii) Where available, the application number of the earlier
application;
(g) Where the applicant claims color as a distinctive feature
of the mark, a statement to that effect as well as the name or
names of the color or colors claimed and an indication, in respect
of each color, of the principal parts of the mark which are in that
color;
(h) Where the mark is a three-dimensional mark, a
statement to that effect;
(i) One or more reproductions of the mark, as prescribed
in the Regulations;
(j) A transliteration or translation of the mark or of some
parts of the mark, as prescribed in the Regulations;
(k) The names of the goods or services for which the
registration is sought, grouped according to the classes of the
Nice Classification, together with the number of the class of the
said Classification to which each group of goods or services belongs;
and
(l) A signature by, or other self-identification of, the
applicant or his representative.
124.2. The applicant or the registrant shall file a
declaration of actual use of the mark with evidence to that effect,
as prescribed by the Regulations within three (3) years from the
filing date of the application. Otherwise, the application shall be
refused or the mark shall be removed from the Register by the
Director.
124.3. One (1) application may relate to several goods and/
or services, whether they belong to one (1) class or to several
classes of the Nice Classification.
124.4. If during the examination of the application, the
Office finds factual basis to reasonably doubt the veracity of any
indication or element in the application, it may require the
applicant to submit sufficient evidence to remove the doubt. (Sec.
5, R.A. No. 166a)
SEC. 125. Representation; Address for Service. – If the
applicant is not domiciled or has no real and effective commercial
establishment in the Philippines, he shall designate by a written
document filed in the Office, the name and address of a Philippine
resident who may be served notices or process in proceedings
affecting the mark. Such notices or services may be served upon
the person so designated by leaving a copy thereof at the address
specified in the last designation filed. If the person so designated
cannot be found at the address given in the last designation, such
notice or process may be served upon the Director. (Sec. 3, R.A.
No. 166a)
SEC. 126. Disclaimers. – The Office may allow or require
the applicant to disclaim an unregistrable component of an
otherwise registrable mark but such disclaimer shall not prejudice
or affect the applicant's or owner's rights then existing or thereafter
arising in the disclaimed matter, nor such shall disclaimer
prejudice or affect the applicant's or owner's right on another
application of later date if the disclaimed matter became distinctive
of the applicant's or owner's goods, business or services. (Sec. 13,
R.A. No. 166a)
SEC. 127. Filing Date. – 127.1. Requirements. – 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) The identity of the applicant;
(c) Indications sufficient to contact the applicant or his
representative, if any;
(d) A reproduction of the mark whose registration is sought;
and
(e) The list of the goods or services for which the registration
is sought.
127.2. No filing date shall be accorded until the required
fee is paid. (n)
SEC. 128. Single Registration for Goods and/or Services.
– Where goods and/or services belonging to several classes of the
Nice Classification have been included in one (1) application, such
an application shall result in one registration. (n)
SEC. 129. Division of Application. – Any application
referring to several goods or services, hereafter referred to as the
"initial application," may be divided by the applicant into two (2)
or more applications, hereafter referred to as the "divisional
applications," by distributing among the latter the goods or
services referred to in the initial application. The divisional
applications shall preserve the filing date of the initial application
or the benefit of the right of priority. (n)
SEC. 130. Signature and Other Means of Self-
Identification. – 130.1. Where a signature is required, the Office
shall accept:
(a) A hand-written signature; or
(b) The use of other forms of signature, such as a printed
or stamped signature, or the use of a seal, instead of a handwritten
signature: Provided, That where a seal is used, it should
be accompanied by an indication in letters of the name of the
signatory.
130.2. The Office shall accept communications to it by
telecopier, or by electronic means subject to the conditions or
requirements that will be prescribed by the Regulations. When
communications are made by telefacsimile, the reproduction of
the signature, or the reproduction of the seal together with, where
required, the indication in letters of the name of the natural person
whose seal is used, appears. The original communications must
be received by the Office within thirty (30) days from date of
receipt of the telefacsimile.
130.3. No attestation, notarization, authentication,
legalization or other certification of any signature or other means
of self-identification referred to in the preceding paragraphs, will
be required, except, where the signature concerns the surrender
of a registration. (n)
SEC. 131. Priority Right. – 131.1. An application for
registration of a mark filed in the Philippines by a person referred
to in Section 3, and who previously duly filed an application for
registration of the same mark in one of those countries, shall be
considered as filed as of the day the application was first filed in
the foreign country.
131.2. No registration of a mark in the Philippines by a
person described in this section shall be granted until such mark
has been registered in the country of origin of the applicant.
131.3. Nothing in this section shall entitle the owner of a
registration granted under this section to sue for acts committed
prior to the date on which his mark was registered in this country:
Provided, That, notwithstanding the foregoing, the owner of a wellknown
mark as defined in Section 123.1(e) of this Act, that is not
registered in the Philippines, may, against an identical or confusingly
similar mark, oppose its registration, or petition the cancellation of
its registration or sue for unfair competition, without prejudice to
availing himself of other remedies provided for under the law.
131.4. In like manner and subject to the same conditions
and requirements, the right provided in this section may be based
upon a subsequent regularly filed application in the same foreign
country: Provided, That any foreign application filed prior to
such subsequent application has been withdrawn, abandoned, or
otherwise disposed of, without having been laid open to public
inspection and without leaving any rights outstanding, and has
not served, nor thereafter shall serve, as a basis for claiming a
right of priority. (Sec. 37, R.A. No. 166a)
SEC. 132. Application Number and Filing Date. – 132.1.
The Office shall examine whether the application satisfies the
requirements for the grant of a filing date as provided in Section
127 and Regulations relating thereto. If the application does not
satisfy the filing requirements, the Office shall notify the applicant
who shall within a period fixed by the Regulations complete or
correct the application as required, otherwise, the application shall
be considered withdrawn.
132.2. Once an application meets the filing requirements
of Section 127, it shall be numbered in the sequential order, and
the applicant shall be informed of the application number and
the filing date of the application will be deemed to have been
abandoned. (n)
SEC. 133. Examination and Publication. – 133.1. Once
the application meets the filing requirements of Section 127, the
Office shall examine whether the application meets the
requirements of Section 124 and the mark as defined in Section
121 is registrable under Section 123.
133.2. Where the Office finds that the conditions referred
to in Subsection 133.1 are fulfilled, it shall, upon payment of the
prescribed fee, forthwith cause the application, as filed, to be
published in the prescribed manner.
133.3. If after the examination, the applicant is not
entitled to registration for any reason, the Office shall advise the
applicant thereof and the reasons therefor. The applicant shall
have a period of four (4) months in which to reply or amend his
application, which shall then be re-examined. The Regulations
shall determine the procedure for the re-examination or revival
of an application as well as the appeal to the Director of
Trademarks from any final action by the Examiner.
133.4. An abandoned application may be revived as a
pending application within three (3) months from the date of
abandonment, upon good cause shown and the payment of the
required fee.
133.5. The final decision of refusal of the Director of
Trademarks shall be appealable to the Director General in
accordance with the procedure fixed by the Regulations. (Sec. 7,
R.A. No. 166a)
SEC. 134. Opposition. – Any person who believes that he
would be damaged by the registration of a mark may, upon
payment of the required fee and within thirty (30) days after the
publication referred to in Subsection 133.2, file with the Office an
opposition to the application. Such opposition shall be in writing
and verified by the oppositor or by any person on his behalf who
knows the facts, and shall specify the grounds on which it is
based and include a statement of the facts relied upon. Copies of
certificates of registration of marks registered in other countries
or other supporting documents mentioned in the opposition shall
be filed therewith, together with the translation in English, if not
in the English language. For good cause shown and upon payment
of the required surcharge, the time for filing an opposition may
be extended by the Director of Legal Affairs, who shall notify the
applicant of such extension. The Regulations shall fix the
maximum period of time within which to file the opposition. (Sec.
8, R.A. No. 165a)
SEC. 135. Notice and Hearing. – Upon the filing of an
opposition, the Office shall serve notice of the filing on the
applicant, and of the date of the hearing thereof upon the applicant
and the oppositor and all other persons having any right, title or
interest in the mark covered by the application, as appear of record
in the Office. (Sec. 9, R.A. No. 165)
SEC. 136. Issuance and Publication of Certificate. – When
the period for filing the opposition has expired, or when the Director
of Legal Affairs shall have denied the opposition, the Office upon
payment of the required fee, shall issue the certificate of
registration. Upon issuance of a certificate of registration, notice
thereof making reference to the publication of the application shall
be published in the IPO Gazette. (Sec. 10, R.A. No. 165)
SEC. 137. Registration of Mark and Issuance of a
Certificate to the Owner or his Assignee. – 137.1. The Office shall
maintain a Register in which shall be registered marks, numbered
in the order of their registration, and all transactions in respect
of each mark, required to be recorded by virtue of this law.
137.2. The registration of a mark shall include a
reproduction of the mark and shall mention: its number; the
name and address of the registered owner and, if the registered
owner's address is outside the country, his address for service
within the country; the dates of application and registration; if
priority is claimed, an indication of this fact, and the number,
date and country of the application, basis of the priority claims;
the list of goods or services in respect of which registration has
been granted, with the indication of the corresponding class or
classes; and such other data as the Regulations may prescribe
from time to time.
137.3. A certificate of registration of a mark may be issued
to the assignee of the applicant: Provided, That the assignment
is recorded in the Office. In case of a change of ownership, the
Office shall at the written request signed by the owner, or his
representative, or by the new owner, or his representative and
upon a proper showing and the payment of the prescribed fee,
issue to such assignee a new certificate of registration of the said
mark in the name of such assignee, and for the unexpired part of
the original period.
137.4. The Office shall record any change of address, or
address for service, which shall be notified to it by the registered
owner.
137.5. In the absence of any provision to the contrary in
this Act, communications to be made to the registered owner by
virtue of this Act shall be sent to him at his last recorded address
and, at the same, at his last recorded address for service. (Sec.
19, R.A. No. 166a)
SEC. 138. Certificates of Registration. – A certificate of
registration of a mark shall be prima facie evidence of the validity
of the registration, the registrant's ownership of the mark, and of
the registrant's exclusive right to use the same in connection
with the goods or services and those that are related thereto
specified in the certificate. (Sec. 20, R.A. No. 165)
SEC. 139. Publication of Registered Marks; Inspection of
Register. – 139.1. The Office shall publish, in the form and within
the period fixed by the Regulations, the marks registered, in the
order of their registration, reproducing all the particulars referred
to in Subsection 137.2.
139.2. Marks registered at the Office may be inspected
free of charge and any person may obtain copies thereof at his
own expense. This provision shall also be applicable to transactions
recorded in respect of any registered mark. (n)
SEC. 140. Cancellation upon Application by Registrant;
Amendment or Disclaimer of Registration. – Upon application of
the registrant, the Office may permit any registration to be
surrendered for cancellation, and upon cancellation the appropriate
entry shall be made in the records of the Office. Upon application
of the registrant and payment of the prescribed fee, the Office for
good cause may permit any registration to be amended or to be
disclaimed in part: Provided, That the amendment or disclaimer
does not alter materially the character of the mark. Appropriate
entry shall be made in the records of the Office upon the certificate
of registration or, if said certificate is lost or destroyed, upon a
certified copy thereof. (Sec. 14, R.A. No. 166)
SEC. 141. Sealed and Certified Copies as Evidence. –
Copies of any records, books, papers, or drawings belonging to
the Office relating to marks, and copies of registrations, when
authenticated by the seal of the Office and certified by the Director
of the Administrative, Financial and Human Resource
Development Service Bureau or in his name by an employee of
the Office duly authorized by said Director, shall be evidence in
all cases wherein the originals would be evidence; and any person
who applies and pays the prescribed fee shall secure such copies.
(n)
SEC. 142. Correction of Mistakes Made by the Office. –
Whenever a material mistake in a registration incurred through
the fault of the Office is clearly disclosed by the records of the
Office, a certificate stating the fact and nature of such mistake
shall be issued without charge, recorded and a printed copy thereof
shall be attached to each printed copy of the registration. Such
corrected registration shall thereafter have the same effect as the
original certificate; or in the discretion of the Director of the
Administrative, Financial and Human Resource Development
Service Bureau a new certificate of registration may be issued
without charge. All certificates of correction heretofore issued in
accordance with the Regulations and the registration to which
they are attached shall have the same force and effect as if such
certificates and their issuance had been authorized by this Act.
(n)
SEC. 143. Correction of Mistakes Made by Applicant. –
Whenever a mistake is made in a registration and such mistake
occurred in good faith through the fault of the applicant, the Office
may issue a certificate upon the payment of the prescribed fee:
Provided, That the correction does not involve any change in the
registration that requires republication of the mark. (n)
SEC. 144. Classification of Goods and Services. – 144.1.
Each registration, and any publication of the Office which concerns
an application or registration effected by the Office shall indicate
the goods or services by their names, grouped according to the
classes of the Nice Classification, and each group shall be preceded
by the number of the class of that Classification to which that
group of goods or services belongs, presented in the order of the
classes of the said Classification.
144.2. Goods or services may not be considered as being
similar or dissimilar to each other on the ground that, in any
registration or publication by the Office, they appear in different
classes of the Nice Classification. (Sec. 6, R.A. No. 166a)
SEC. 145. Duration. – A certificate of registration shall
remain in force for ten (10) years: Provided, That the registrant
shall file a declaration of actual use and evidence to that effect, or
shall show valid reasons based on the existence of obstacles to
such use, as prescribed by the Regulations, within one (1) year
from the fifth anniversary of the date of the registration of the
mark. Otherwise, the mark shall be removed from the Register
by the Office. (Sec. 12, R.A. No. 166a)
SEC. 146. Renewal. – 146.1. A certificate of registration
may be renewed for periods of ten (10) years at its expiration
upon payment of the prescribed fee and upon filing of a request.
The request shall contain the following indications:
(a) An indication that renewal is sought;
(b) The name and address of the registrant or his successorin-
interest, hereafter referred to as the "right holder";
(c) The registration number of the registration concerned;
(d) The filing date of the application which resulted in the
registration concerned to be renewed;
(e) Where the right holder has a representative, the name
and address of that representative;
(f) The names of the recorded goods or services for which
the renewal is requested or the names of the recorded goods or
services for which the renewal is not requested, grouped according
to the classes of the Nice Classification to which that group of
goods or services belongs and presented in the order of the classes
of the said Classification; and
(g) A signature by the right holder or his representative.
146.2. Such request shall be in Filipino or English and
may be made at any time within six (6) months before the
expiration of the period for which the registration was issued or
renewed, or it may be made within six (6) months after such
expiration on payment of the additional fee herein prescribed.
146.3. If the Office refuses to renew the registration, it
shall notify the registrant of his refusal and the reasons therefor.
146.4. An applicant for renewal not domiciled in the
Philippines shall be subject to and comply with the requirements
of this Act. (Sec. 15, R.A. No. 166a)
SEC. 147. Rights Conferred. – 147.1. The owner of a
registered mark shall have the exclusive right to prevent all third
parties not having the owner's 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. In case of the use of an identical sign for identical
goods or services, a likelihood of confusion shall be presumed.
147.2. The exclusive right of the owner of a well-known
mark defined in Subsection 123.1(e) which is registered in the
Philippines, shall extend to goods and services which are not
similar to those in respect of which the mark is registered:
Provided, That use of that 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 interests of the owner of the registered mark are likely to be
damaged by such use. (n)
SEC. 148. Use of Indications by Third Parties for Purposes
Other than those for which the Mark is Used. – Registration of
the mark shall not confer on the registered owner the right to
preclude third parties from using bona fide their names, addresses,
pseudonyms, a geographical name, or exact indications concerning
the kind, quality, quantity, destination, value, place of origin, or
time of production or of supply, of their goods or services:
Provided, That such use is confined to the purposes of mere
identification or information and cannot mislead the public as to
the source of the goods or services. (n)
SEC. 149. Assignment and Transfer of Application and
Registration. – 149.1. An application for registration of a mark,
or its registration, may be assigned or transferred with or without
the transfer of the business using the mark. (n)
149.2. Such assignment or transfer shall, however, be
null and void if it is liable to mislead the public, particularly as
regards the nature, source, manufacturing process,
characteristics, or suitability for their purpose, of the goods or
services to which the mark is applied.
149.3. The assignment of the application for registration
of a mark, or of its registration, shall be in writing and require
the signatures of the contracting parties. Transfers by mergers
or other forms of succession may be made by any document
supporting such transfer.
149.4. Assignments and transfers of registrations of
marks shall be recorded at the Office on payment of the prescribed
fee; assignment and transfers of applications for registration shall,
on payment of the same fee, be provisionally recorded, and the
mark, when registered, shall be in the name of the assignee or
transferee.
149.5. Assignments and transfers shall have no effect
against third parties until they are recorded at the Office. (Sec.
31, R.A. No. 166a)
SEC. 150. License Contracts. – 150.1. Any license
contract concerning the registration of a mark, or an application
therefor, shall provide for effective control by the licensor of the
quality of the goods or services of the licensee in connection with
which the mark is used. If the license contract does not provide
for such quality control, or if such quality control is not effectively
carried out, the license contract shall not be valid.
150.2. A license contract shall be submitted to the Office
which shall keep its contents confidential but shall record it and
publish a reference thereto. A license contract shall have no
effect against third parties until such recording is effected. The
Regulations shall fix the procedure for the recording of the license
contract. (n)
SEC. 151. Cancellation. – 151.1. A petition to cancel a
registration of a mark under this Act may be filed with the Bureau
of Legal Affairs by any person who believes that he is or will be
damaged by the registration of a mark under this Act as follows:
(a) Within five (5) years from the date of the registration
of the mark under this Act.
(b) At any time, if the registered mark becomes the generic
name for the goods or services, or a portion thereof, for which it is
registered, or has been abandoned, or its registration was obtained
fraudulently or contrary to the provisions of this Act, or if the
registered mark is being used by, or with the permission of, the
registrant so as to misrepresent the source of the goods or services
on or in connection with which the mark is used. If the registered
mark becomes the generic name for less than all of the goods or
services for which it is registered, a petition to cancel the
registration for only those goods or services may be filed. A
registered mark shall not be deemed to be the generic name of
goods or services solely because such mark is also used as a name
of or to identify a unique product or service. The primary
significance of the registered mark to the relevant public rather
than purchaser motivation shall be the test for determining
whether the registered mark has become the generic name of
goods or services on or in connection with which it has been used.
(n)
(c) At any time, if the registered owner of the mark without
legitimate reason fails to use the mark within the Philippines, or
to cause it to be used in the Philippines by virtue of a license
during an uninterrupted period of three (3) years or longer.
151.2. Notwithstanding the foregoing provisions, the court
or the administrative agency vested with jurisdiction to hear and
adjudicate any action to enforce the rights to a registered mark
shall likewise exercise jurisdiction to determine whether the
registration of said mark may be cancelled in accordance with
this Act. The filing of a suit to enforce the registered mark with
the proper court or agency shall exclude any other court or agency
from assuming jurisdiction over a subsequently filed petition to
cancel the same mark. On the other hand, the earlier filing of
petition to cancel the mark with the Bureau of Legal Affairs shall
not constitute a prejudicial question that must be resolved before
an action to enforce the rights to same registered mark may be
decided. (Sec. 17, R.A. No. 166a)
SEC. 152. Non-use of a Mark When Excused. – 152.1.
Non-use of a mark may be excused if caused by circumstances
arising independently of the will of the trademark owner. Lack
of funds shall not excuse non-use of a mark.
152.2. The use of the mark in a form different from the
form in which it is registered, which does not alter its distinctive
character, shall not be ground for cancellation or removal of the
mark and shall not diminish the protection granted to the mark.
152.3. The use of a mark in connection with one (1) or
more of the goods or services belonging to the class in respect of
which the mark is registered shall prevent its cancellation or
removal in respect of all other goods or services of the same class.
152.4. The use of a mark by a company related with the
registrant or applicant shall inure to the latter's benefit, and
such use shall not affect the validity of such mark or of its
registration: Provided, That such mark is not used in such
manner as to deceive the public. If use of a mark by a person is
controlled by the registrant or applicant with respect to the nature
and quality of the goods or services, such use shall inure to the
benefit of the registrant or applicant. (n)
SEC. 153. Requirements of Petition; Notice and Hearing.
– Insofar as applicable, the petition for cancellation shall be in
the same form as that provided in Section 134 hereof, and notice
and hearing shall be as provided in Section 135 hereof.
SEC. 154. Cancellation of Registration. – If the Bureau
of Legal Affairs finds that a case for cancellation has been made
out, it shall order the cancellation of the registration. When the
order or judgment becomes final, any right conferred by such
registration upon the registrant or any person in interest of record
shall terminate. Notice of cancellation shall be published in the
IPO Gazette. (Sec. 19, R.A. No. 166a)
SEC. 155. Remedies; Infringement. – Any person who
shall, without the consent of the owner of the registered mark:
155.1. 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 of 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
155.2. 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 in a
civil action for infringement by the registrant for the remedies
hereinafter set forth: Provided, That the infringement takes
place at the moment any of the acts stated in Subsection 155.1 or
this subsection are committed regardless of whether there is actual
sale of goods or services using the infringing material. (Sec. 22,
R.A. No. 166a)
SEC. 156. Actions, and Damages and Injunction for
Infringement. – 156.1. The owner of a registered mark may recover
damages from any person who infringes his rights, and the
measure of the damages suffered shall be either the reasonable
profit which the complaining party would have made, had the
defendant not infringed his rights, or the profit which the defendant
actually made out of the infringement, or in the event such
measure of damages cannot be readily ascertained with reasonable
certainty, then the court may award as damages a reasonable
percentage based upon the amount of gross sales of the defendant
or the value of the services in connection with which the mark or
trade name was used in the infringement of the rights of the
complaining party. (Sec. 23, first par., R.A. No. 166a)
156.2. On application of the complainant, the court may
impound during the pendency of the action, sales invoices and
other documents evidencing sales. (n)
156.3. In cases where actual intent to mislead the public
or to defraud the complainant is shown, in the discretion of the
court, the damages may be doubled. (Sec. 23, first par., R.A. No.
166a)
156.4. The complainant, upon proper showing, may also
be granted injunction. (Sec. 23, second par., R.A. No. 166a)
SEC. 157. Power of Court to Order Infringing Material
Destroyed. – 157.1. In any action arising under this Act, in
which a violation of any right of the owner of the registered mark
is established, the court may order that goods found to be
infringing be, without compensation of any sort, disposed of outside
the channels of commerce in such a manner as to avoid any harm
caused to the right holder, or destroyed; and all labels, signs,
prints, packages, wrappers, receptacles and advertisements in
the possession of the defendant, bearing the registered mark or
trade name or any reproduction, counterfeit, copy or colorable
imitation thereof, all plates, molds, matrices and other means of
making the same, shall be delivered up and destroyed.
157.2. In regard to counterfeit goods, the simple removal
of the trademark affixed shall not be sufficient other than in
exceptional cases which shall be determined by the Regulations,
to permit the release of the goods into the channels of commerce.
(Sec. 24, R.A. No. 166a)
SEC. 158. Damages; Requirement of Notice. – In any suit
for infringement, the owner of the registered mark shall not be
entitled to recover profits or damages unless the acts have been
committed with knowledge that such imitation is 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
by displaying with the mark the words "Registered Mark" or the
letter R within a circle or if the defendant had otherwise actual
notice of the registration. (Sec. 21, R.A. No. 166a)
SEC. 159. Limitations to Actions for Infringement. –
Notwithstanding any other provision of this Act, the remedies
given to the owner of a right infringed under this Act shall be
limited as follows:
159.1. Notwithstanding the provisions of Section 155
hereof, a registered mark shall have no effect against any person
who, in good faith, before the filing date or the priority date, was
using the mark for the purposes of his business or enterprise:
Provided, That his right may only be transferred or assigned
together with his enterprise or business or with that part of his
enterprise or business in which the mark is used.
159.2. Where an infringer who is engaged solely in the
business of printing the mark or other infringing materials for
others is an innocent infringer, the owner of the right infringed
shall be entitled as against such infringer only to an injunction
against future printing.
159.3. Where the infringement complained of is contained
in or is part of paid advertisement in a newspaper, magazine, or
other similar periodical or in an electronic communication, the
remedies of the owner of the right infringed as against the
publisher or distributor of such newspaper, magazine, or other
similar periodical or electronic communication shall be limited to
an injunction against the presentation of such advertising matter
in future issues of such newspapers, magazines, or other similar
periodicals or in future transmissions of such electronic
communications. The limitations of this subparagraph shall apply
only to innocent infringers: Provided, That such injunctive relief
shall not be available to the owner of the right infringed with
respect to an issue of a newspaper, magazine, or other similar
periodical or an electronic communication containing infringing
matter where restraining the dissemination of such infringing
matter in any particular issue of such periodical or in an electronic
communication would delay the delivery of such issue or
transmission of such electronic communication is customarily
conducted in accordance with the sound business practice, and
not due to any method or device adopted to evade this section or to
prevent or delay the issuance of an injunction or restraining order
with respect to such infringing matter. (n)
SEC. 160. Right of Foreign Corporation to Sue in
Trademark or Service Mark Enforcement Action. – Any foreign
national or juridical person who meets the requirements of Section
3 of this Act and does not engage in business in the Philippines
may bring a civil or administrative action hereunder for
opposition, cancellation, infringement, unfair competition, or false
designation of origin and false description, whether or not it is
licensed to do business in the Philippines under existing laws.
(Sec. 21-A, R.A. No. 166a)
SEC. 161. Authority to Determine Right to Registration.
– In any action involving a registered mark, the court may
determine the right to registration, order the cancellation of a
registration, in whole or in part, and otherwise rectify the register
with respect to the registration of any party to the action in the
exercise of this. Judgment and orders shall be certified by the
court to the Director, who shall make appropriate entry upon the
records of the Bureau, and shall be controlled thereby. (Sec. 25,
R.A. No. 166a)
SEC. 162. Action for False or Fraudulent Declaration. –
Any person who shall procure registration in the Office of a mark
by a false or fraudulent declaration or representation, whether
oral or in writing, or by any false means, shall be liable in a civil
action by any person injured thereby for any damages sustained
in consequence thereof. (Sec. 26, R.A. No. 166)
SEC. 163. Jurisdiction of Court. – All actions under
Sections 150, 155, 164, and 166 to 169 shall be brought before the
proper courts with appropriate jurisdiction under existing laws.
(Sec. 27, R.A. No. 166)
SEC. 164. Notice of Filing Suit Given to the Director. –
It shall be the duty of the clerks of such courts within one (1)
month after the filing of any action, suit, or proceeding involving
a mark registered under the provisions of this Act, to notify the
Director in writing setting forth: the names and addresses of the
litigants and designating the number of the registration or
registrations and within one (1) month after the judgment is
entered or an appeal is taken, the clerk of court shall give notice
thereof to the Office, and the latter shall endorse the same upon
the filewrapper of the said registration or registrations and
incorporate the same as a part of the contents of said filewrapper.
(n)
SEC. 165. Trade Names or Business Names. – 165.1. A
name or designation may not be used as a trade name if by its
nature or the use to which such name or designation may be put,
it is contrary to public order or morals and if, in particular, it is
liable to deceive trade circles or the public as to the nature of the
enterprise identified by that name.
165.2. (a) Notwithstanding any laws or regulations
providing for any obligation to register trade names, such names
shall be protected, even prior to or without registration, against
any unlawful act committed by third parties.
(b) In particular, any subsequent use of the trade name by
a third party, whether as a trade name or a mark or collective
mark, or any such use of a similar trade name or mark, likely to
mislead the public, shall be deemed unlawful.
165.3. The remedies provided for in Sections 153 to 156
and Sections 166 and 167 shall apply mutatis mutandis.
165.4. Any change in the ownership of a trade name shall
be made with the transfer of the enterprise or part thereof
identified by that name. The provisions of Subsections 149.2 to
149.4 shall apply mutatis mutandis.
SEC. 166. Goods Bearing Infringing Marks or Trade
Names. – No article of imported merchandise which shall copy or
simulate the name of any domestic product, or manufacturer, or
dealer, or which shall copy or simulate a mark registered in
accordance with the provisions of this Act, or shall bear a mark
or trade name calculated to induce the public to believe that the
article is manufactured in the Philippines, or that it is
manufactured in any foreign country or locality other than the
country or locality where it is in fact manufactured, shall be
admitted to entry at any customhouse of the Philippines. In
order to aid the officers of the customs service in enforcing this
prohibition, any person who is entitled to the benefits of this Act,
may require that his name and residence, and the name of the
locality in which his goods are manufactured, a copy of the
certificate of registration of his mark or trade name, to be recorded
in books which shall be kept for this purpose in the Bureau of
Customs, under such regulations as the Collector of Customs
with the approval of the Secretary of Finance shall prescribe, and
may furnish to the said Bureau facsimiles of his name, the name
of the locality in which his goods are manufactured, or his
registered mark or trade name, and thereupon the Collector of
Customs shall cause one (1) or more copies of the same to be
transmitted to each collector or to other proper officer of the Bureau
of Customs. (Sec. 35, R.A. No. 166)
SEC. 167. Collective Marks. – 167.1. Subject to
Subsections 167.2 and 167.3, Sections 122 to 164 and 166 shall
apply to collective marks, except that references therein to "mark"
shall be read as "collective mark."
167.2. (a) An application for registration of a collective
mark shall designate the mark as a collective mark and shall be
accompanied by a copy of the agreement, if any, governing the
use of the collective mark.
(b) The registered owner of a collective mark shall notify
the Director of any changes made in respect of the agreement
referred to in paragraph (a).
167.3. In addition to the grounds provided in Section 149,
the Court shall cancel the registration of a collective mark if the
person requesting the cancellation proves that only the registered
owner uses the mark, or that he uses or permits its use in
contravention of the agreements referred to in Subsection 166.2
or that he uses or permits its use in a manner liable to deceive
trade circles or the public as to the origin or any other common
characteristics of the goods or services concerned.
167.4. The registration of a collective mark, or an
application therefor shall not be the subject of a license contract.
(Sec. 40, R.A. No. 166a)
SEC. 168. Unfair Competition, Rights, Regulation and
Remedies. – 168.1. A person who has identified in the mind of
the public the goods he manufactures or deals in, his business or
services from those of others, whether or not a registered mark is
employed, has a property right in the goodwill of the said goods,
business or services so identified, which will be protected in the
same manner as other property rights.
168.2. 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, and shall be subject to an action
therefor.
168.3. In particular, and without in any way limiting the
scope of protection against unfair competition, the following shall
be deemed guilty of unfair competition:
(a) Any person, who is selling his goods and gives them
the general appearance of goods of another manufacturer or dealer,
either as to the goods themselves or in the wrapping of the
packages in which they are contained, or the devices or words
thereon, or in any other feature of their appearance, which would
be likely to influence purchasers to believe that the goods offered
are those of a manufacturer or dealer, other than the actual
manufacturer or dealer, or who otherwise clothes the goods with
such appearance as shall deceive the public and defraud another
of his legitimate trade, or any subsequent vendor of such goods or
any agent of any vendor engaged in selling such goods with a like
purpose;
(b) Any person who by any artifice, or device, or who
employs any other means calculated to induce the false belief
that such person is offering the services of another who has
identified such services in the mind of the public; or
(c) Any person who shall make any false statement in the
course of trade or who shall commit any other act contrary to
good faith of a nature calculated to discredit the goods, business
or services of another.
168.4. The remedies provided by Sections 156, 157 and
161 shall apply mutatis mutandis. (Sec. 29, R.A. No. 166a)
SEC. 169. False Designations of Origin; False Description
or Representation. – 169.1. Any person who, on or in connection
with any goods or services, or any container for goods, uses in
commerce any word, term, name, symbol, or device, or any
combination thereof, or any false designation of origin, false or
misleading description of fact, or false or misleading representation
of fact, which:
(a) Is likely to cause confusion, or to cause mistake, or to
deceive as to the affiliation, connection, or association of such
person with another person, or as to the origin, sponsorship, or
approval of his or her goods, services, or commercial activities by
another person; or
(b) In commercial advertising or promotion, misrepresents
the nature, characteristics, qualities, or geographic origin of his
or her or another person's goods, services, or commercial activities,
shall be liable to a civil action for damages and injunction provided
in Sections 156 and 157 of this Act by any person who believes
that he or she is or is likely to be damaged by such act.
169.2. Any goods marked or labelled in contravention of
the provisions of this Section shall not be imported into the
Philippines or admitted entry at any customhouse of the
Philippines. The owner, importer, or consignee of goods refused
entry at any custom house under this section may have any
recourse under the customs revenue laws or may have the remedy
given by this Act in cases involving goods refused entry or seized.
(Sec. 30, R.A. No. 166a)
SEC. 170. Penalties. – Independent of the civil and
administrative sanctions imposed by law, a criminal penalty of
imprisonment from two (2) years to five (5) years and a fine ranging
from Fifty thousand pesos (P50,000) to Two hundred thousand
pesos (P200,000), shall be imposed on any person who is found
guilty of committing any of the acts mentioned in Section 155,
Section 168 and Subsection 169.1. (Arts. 188 and 189, Revised
Penal Code)
PART IV
THE LAW ON COPYRIGHT
CHAPTER I
PRELIMINARY PROVISIONS
SEC. 171. Definitions. – For the purpose of this Act, the
following terms have the following meaning:
171.1. "Author" is the natural person who has created
the work;
171.2. A "collective work" is a work which has been created
by two (2) or more natural 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 contributing natural
persons will not be identified;
171.3. "Communication to the public" or "communicate
to the public" means the making of a work available to the public
by wire or wireless means in such a way that members of the
public may access these works from a place and time individually
chosen by them;
171.4. A "computer" is an electronic or similar device
having information-processing capabilities, and a "computer
program" is a set of instructions expressed in words, codes, schemes
or in any other form, which is capable when incorporated in a
medium that the computer can read, of causing the computer to
perform or achieve a particular task or result;
171.5. "Public lending" is the transfer of possession of the
original or a copy of a work or sound recording for a limited period,
for non-profit purposes, by an institution, the services of which
are available to the public, such as public library or archive;
171.6. "Public performance," in the case of a work other
than an audiovisual work, is the recitation, playing, dancing,
acting or otherwise performing the work, either directly or by
means of any device or process; in the case of an audiovisual
work, the showing of its images in sequence and the making of
the sounds accompanying it audible; and, in the case of a sound
recording, making the recorded sounds audible at a place or at
places where persons outside the normal circle of a family and
that family's closest social acquaintances are or can be present,
irrespective of whether they are or can be present at the same
place and at the same time, or at different places and/or at different
times, and where the performance can be perceived without the
need for communication within the meaning of Subsection 171.3;
171.7. "Published works" mean works, which with the
consent of the authors, are made available to the public by wire
or wireless means in such a way that members of the public may
access these works from a place and time individually chosen by
them: Provided, That availability of such copies has been such,
as to satisfy the reasonable requirements of the public, having
regard to the nature of the work;
171.8. "Rental" is the transfer of the possession of the
original or a copy of a work or a sound recording for a limited
period of time, for profit-making purposes;
171.9. "Reproduction" is the making of one (1) or more
copies of a work or a sound recording in any manner or form (Sec.
41 (E), P.D. No. 49a);
171.10. A "work of applied art" is an artistic creation with
utilitarian functions or incorporated in a useful article, whether
made by hand or produced on an industrial scale;
171.11. A "work of the Government of the Philippines" is a
work created by an officer or employee of the Philippine
Government or any of its subdivisions and instrumentalities,
including government-owned or -controlled corporations as a part
of his regularly prescribed official duties.
CHAPTER II
ORIGINAL WORKS
SEC. 172. Literary and Artistic Works. – 172.1. Literary
and artistic works, hereinafter referred to as "works," are original
intellectual creations in the literary and artistic domain protected
from the moment of their creation 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 works and
works produced by a process analogous to cinematography or any
process for making audiovisual recordings;
(m) Pictorial illustrations and advertisements;
(n) Computer programs; and
(o) Other literary, scholarly, scientific and artistic works.
172.2. Works are protected by the sole fact of their
creation, irrespective of their mode or form of expression, as well
as of their content, quality and purpose. (Sec. 2, P.D. No. 49a)
CHAPTER III
DERIVATIVE WORKS
SEC. 173. Derivative Works. – 173.1. The following
derivative works shall also be protected by copyright:
(a) Dramatizations, translations, adaptations, abridgments,
arrangements, and other alterations of literary or artistic works;
and
(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. 2, (P) and (Q), P.D. No. 49)
173.2. The works referred to in paragraphs (a) and (b) of
Subsection 173.1 shall be protected as new works: Provided,
however, That such new work shall not affect the force of any
subsisting copyright upon the original works employed or any
part thereof, or be construed to imply any right to such use of the
original works, or to secure or extend copyright in such original
works. (Sec. 8, P.D. 49; Art. 10, TRIPS)
SEC. 174. Published Edition of Work. – In addition to
the right to publish granted by the author, his heirs, or assigns,
the publisher shall have a copyright consisting merely of the right
of reproduction of the typographical arrangement of the published
edition of the work. (n)
CHAPTER IV
WORKS NOT PROTECTED
SEC. 175. Unprotected Subject Matter. – Notwithstanding
the provisions of Sections 172 and 173, no protection shall extend,
under this law, to any idea, procedure, system, method or
operation, concept, principle, discovery or mere data as such, even
if they are expressed, explained, illustrated or embodied in a work;
news of the day and other miscellaneous facts having the character
of mere items of press information; or any official text of a
legislative, administrative or legal nature, as well as any official
translation thereof. (n)
SEC. 176. Works of the Government. – 176.1. No copyright
shall subsist in any work of the Government of the Philippines.
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. No prior approval
or conditions shall be required for the use for any purpose of
statutes, rules and regulations, and speeches, lectures, sermons,
addresses, and dissertations, pronounced, read or rendered in
courts of justice, before administrative agencies, in deliberative
assemblies and in meetings of public character. (Sec. 9, first par.,
P.D. No. 49)
176.2. The author of speeches, lectures, sermons,
addresses, and dissertations mentioned in the preceding
paragraphs shall have the exclusive right of making a collection
of his works. (n)
176.3. Notwithstanding the foregoing provisions, the
Government is not precluded from receiving and holding
copyrights transferred to it by assignment, bequest or otherwise;
nor shall publication or republication by the Government in a
public document of any work in which copyright is subsisting be
taken to cause any abridgment or annulment of the copyright or
to authorize any use or appropriation of such work without the
consent of the copyright owner. (Sec. 9, third par., P.D. No. 49)
CHAPTER V
COPYRIGHT OR ECONOMIC RIGHTS
SEC. 177. Copyright or Economic Rights. – Subject to
the provisions of Chapter VIII, copyright or economic rights shall
consist of the exclusive right to carry out, authorize or prevent
the following acts:
177.1. Reproduction of the work or substantial portion of
the work;
177.2. Dramatization, translation, adaptation,
abridgment, arrangement or other transformation of the work;
177.3. The first public distribution of the original and each
copy of the work by sale or other forms of transfer of ownership;
177.4. Rental of the original or a copy of an audiovisual or
cinematographic work, a work embodied in a sound recording, a
computer program, a compilation of data and other materials or
a musical work in graphic form, irrespective of the ownership of
the original or the copy which is the subject of the rental; (n)
177.5. Public display of the original or a copy of the work;
177.6. Public performance of the work; and
177.7. Other communication to the public of the work.
(Sec. 5, P.D. No. 49a)
CHAPTER VI
OWNERSHIP OF COPYRIGHT
SEC. 178. Rules on Copyright Ownership. – Copyright
ownership shall be governed by the following rules:
178.1. Subject to the provisions of this section, in the case
of original literary and artistic works, copyright shall belong to
the author of the work;
178.2. In the case of works of joint authorship, the coauthors
shall be the original owners of the copyright and in the
absence of agreement, their rights shall be governed by the rules
on co-ownership. If, however, a work of joint authorship consists
of parts that can be used separately and the author of each part
can be identified, the author of each part shall be the original
owner of the copyright in the part that he has created;
178.3. In the case of work created by an author during
and in the course of his employment, the copyright shall belong
to:
(a) The employee, if the creation of the object of copyright
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 work is the result of the
performance of his regularly-assigned duties, unless there is an
agreement, expressed or implied, to the contrary.
178.4. In the case of a work commissioned by a person
other than an employer of the author and who pays for it and the
work is made in pursuance of the commission, the person who so
commissioned the work shall have ownership of the work, but
the copyright thereto shall remain with the creator, unless there
is a written stipulation to the contrary;
178.5. In the case of audiovisual work, the copyright shall
belong to the producer, the author of the scenario, the composer
of the music, the film director, and the author of the work so
adapted. However, subject to contrary or other stipulations among
the creators, the producer shall exercise the copyright to an extent
required for the exhibition of the work in any manner, except for
the right to collect performing license fees for the performance of
musical compositions, with or without words, which are
incorporated into the work; and
178.6. In respect of letters, the copyright shall belong to
the writer subject to the provisions of Article 723 of the Civil
Code. (Sec. 6, P.D. No. 49a)
SEC. 179. Anonymous and Pseudonymous Works. – For
purposes of this Act, the publishers shall be deemed to represent
the authors of articles and other writings published without the
names of the authors or under pseudonyms, unless the contrary
appears, or the pseudonyms or adopted name leaves no doubt as
to the author's identity, or if the author of the anonymous works
discloses his identity. (Sec. 7, P.D. 49)
CHAPTER VII
TRANSFER OR ASSIGNMENT OF COPYRIGHT
SEC. 180. Rights of Assignee. – 180.1. The copyright may
be assigned in whole or in part. Within the scope of the
assignment, the assignee is entitled to all the rights and remedies
which the assignor had with respect to the copyright.
180.2. The copyright is not deemed assigned inter vivos
in whole or in part unless there is a written indication of such
intention.
180.3. The submission of a literary, photographic or
artistic work to a newspaper, magazine or periodical for publication
shall constitute only a license to make a single publication unless
a greater right is expressly granted. If two (2) or more persons
jointly own a copyright or any part thereof, neither of the owners
shall be entitled to grant licenses without the prior written consent
of the other owner or owners. (Sec. 15, P.D. No. 49a)
SEC. 181. Copyright and Material Object. – The copyright
is distinct from the property in the material object subject to it.
Consequently, the transfer or assignment of the copyright shall
not itself constitute a transfer of the material object. Nor shall a
transfer or assignment of the sole copy or of one or several copies
of the work imply transfer or assignment of the copyright. (Sec.
16, P.D. No. 49)
SEC. 182. Filing of Assignment or License. – An
assignment or exclusive license may be filed in duplicate with
the National Library upon payment of the prescribed fee for
registration in books and records kept for the purpose. Upon
recording, a copy of the instrument shall be returned to the sender
with a notation of the fact of record. Notice of the record shall be
published in the IPO Gazette. (Sec. 19, P.D. No. 49a)
SEC. 183. Designation of Society. – The copyright owners
or their heirs may designate a society of artists, writers or
composers to enforce their economic rights and moral rights on
their behalf. (Sec. 32, P.D. No. 49a)
CHAPTER VIII
LIMITATIONS ON COPYRIGHT
SEC. 184. Limitations on Copyright. – 184.1.
Notwithstanding the provisions of Chapter V, the following acts
shall not constitute infringement of copyright:
(a) The recitation or performance of a work, once it has
been lawfully made accessible to the public, if done privately and
free of charge or if made strictly for a charitable or religious
institution or society; (Sec. 10(1), P.D. No. 49)
(b) The making of quotations from a published work if they
are compatible with fair use and only to the extent justified for
the purpose, including quotations from newspaper articles and
periodicals in the form of press summaries: Provided, That the
source and the name of the author, if appearing on the work, are
mentioned; (Sec. 11, third par., P.D. No. 49)
(c) The reproduction or communication to the public by
mass media of articles on current political, social, economic,
scientific or religious topic, lectures, addresses and other works
of the same nature, which are delivered in public if such use is
for information purposes and has not been expressly reserved:
Provided, That the source is clearly indicated; (Sec. 11, P.D. No.
49)
(d) The reproduction and communication to the public of
literary, scientific or artistic works as part of reports of current
events by means of photography, cinematography or broadcasting
to the extent necessary for the purpose; (Sec. 12, P.D. No. 49)
(e) The inclusion of a work in a publication, broadcast, or
other communication to the public, sound recording or film, if
such inclusion is made by way of illustration for teaching purposes
and is compatible with fair use: Provided, That the source and
of the name of the author, if appearing in the work, are mentioned;
(f) The recording made in schools, universities, or
educational institutions of a work included in a broadcast for the
use of such schools, universities or educational institutions:
Provided, That such recording must be deleted within a reasonable
period after they were first broadcast: Provided, further, That
such recording may not be made from audiovisual works which
are part of the general cinema repertoire of feature films except
for brief excerpts of the work;
(g) The making of ephemeral recordings by a broadcasting
organization by means of its own facilities and for use in its own
broadcast;
(h) The use made of a work by or under the direction or
control of the Government, by the National Library or by
educational, scientific or professional institutions where such use
is in the public interest and is compatible with fair use;
(i) The public performance or the communication to the
public of a work, in a place where no admission fee is charged in
respect of such public performance or communication, by a club
or institution for charitable or educational purpose only, whose
aim is not profit making, subject to such other limitations as
may be provided in the Regulations; (n)
(j) Public display of the original or a copy of the work not
made by means of a film, slide, television image or otherwise on
screen or by means of any other device or process: Provided,
That either the work has been published, or, that the original or
the copy displayed has been sold, given away or otherwise
transferred to another person by the author or his successor in
title; and
(k) Any use made of a work for the purpose of any judicial
proceedings or for the giving of professional advice by a legal
practitioner.
184.2. The provisions of this section shall be interpreted
in such a way as to allow the work to be used in a manner which
does not conflict with the normal exploitation of the work and
does not unreasonably prejudice the right holder's legitimate
interests.
SEC. 185. Fair Use of a Copyrighted Work. – 185.1. The
fair use of a copyrighted work for criticism, comment, news
reporting, teaching including multiple copies for classroom use,
scholarship, research, and similar purposes is not an infringement
of copyright. Decompilation, which is understood here to be the
reproduction of the code and translation of the forms of the
computer program to achieve the inter-operability of an
independently created computer program with other programs
may also constitute fair use. In determining whether the use
made of a work in any particular case is fair use, the factors to be
considered shall include:
(a) The purpose and character of the use, including whether
such use is of a commercial nature or is for non-profit educational
purposes;
(b) The nature of the copyrighted work;
(c) The amount and substantiality of the portion used in
relation to the copyrighted work as a whole; and
(d) The effect of the use upon the potential market for or
value of the copyrighted work.
185.2. The fact that a work is unpublished shall not by
itself bar a finding of fair use if such finding is made upon
consideration of all the above factors.
SEC. 186. Work of Architecture. – Copyright in a work of
architecture shall 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 form 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. (n)
SEC. 187. Reproduction of Published Work. – 187.1.
Notwithstanding the provision of Section 177, and subject to the
provisions of Subsection 187.2, the private reproduction of a
published work in a single copy, where the reproduction is made
by a natural person exclusively for research and private study,
shall be permitted, without the authorization of the owner of
copyright in the work.
187.2. The permission granted under Subsection 187.1
shall not extend to the reproduction of:
(a) A work of architecture in the form of building or other
construction;
(b) An entire book, or a substantial part thereof, or of a
musical work in graphic form by reprographic means;
(c) A compilation of data and other materials;
(d) A computer program except as provided in Section 189;
and
(e) Any work in cases where reproduction would
unreasonably conflict with a normal exploitation of the work or
would otherwise unreasonably prejudice the legitimate interests
of the author. (n)
SEC. 188. Reprographic Reproduction by Libraries. –
188.1. Notwithstanding the provisions of Subsection 177.6, 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:
(a) Where the work by reason of its fragile character or
rarity cannot be lent to user in its original form;
(b) Where the works are isolated articles contained in
composite works or brief portions of other published works and
the reproduction is necessary to supply them, when this is
considered expedient, to persons requesting their loan for purposes
of research or study instead of lending the volumes or booklets
which contain them; and
(c) Where the making of such a copy is in order to preserve
and, if necessary in the event that it is lost, destroyed or rendered
unusable, replace a copy, or to replace, in the permanent collection
of another similar library or archive, a copy which has been lost,
destroyed or rendered unusable and copies are not available with
the publisher.
188.2. Notwithstanding the above provisions, it shall not
be permissible to produce a volume of a work published in several
volumes or to produce missing tomes or pages of magazines or
similar works, unless the volume, tome or part is out of stock:
Provided, That every library which, by law, is entitled to receive
copies of a printed work, shall be entitled, when special reasons
so require, to reproduce a copy of a published work which is
considered necessary for the collection of the library but which is
out of stock. (Sec. 13, P.D. 49a)
SEC. 189. Reproduction of Computer Program. – 189.1.
Notwithstanding the provisions of Section 177, the reproduction
in one (1) back-up copy or adaptation of a computer program shall
be permitted, without the authorization of the author of, or other
owner of copyright in, a computer program, by the lawful owner
of that computer program: Provided, That the copy or adaptation
is necessary for:
(a) The use of the computer program in conjunction with a
computer for the purpose, and to the extent, for which the computer
program has been obtained; and
(b) Archival purposes, and, for the replacement of the
lawfully owned copy of the computer program in the event that
the lawfully obtained copy of the computer program is lost,
destroyed or rendered unusable.
189.2. No copy or adaptation mentioned in this Section
shall be used for any purpose other than the ones determined in
this Section, and any such copy or adaptation shall be destroyed
in the event that continued possession of the copy of the computer
program ceases to be lawful.
189.3. This provision shall be without prejudice to the
application of Section 185 whenever appropriate. (n)
SEC. 190. Importation for Personal Purposes. – 190.1.
Notwithstanding the provision of Subsection 177.6, but subject
to the limitation under the Subsection 185.2, 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) When copies of the work are not available in the
Philippines and:
(i) Not more than one (1) copy at one time is imported for
strictly individual use only; or
(ii) The importation is by authority of and for the use of the
Philippine Government; or
(iii)The importation, consisting of not more than three (3)
such copies or likenesses in any one invoice, is not for
sale but for the use only of any religious, charitable, or
educational society or institution duly incorporated or
registered, or is for the encouragement of the fine arts,
or for any state school, college, university, or free public
library in the Philippines.
(b) When such copies form parts 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).
190.2. Copies imported as allowed by this Section may
not lawfully be used in any way to violate the rights of owner the
copyright or annul or limit the protection secured by this Act,
and such unlawful use shall be deemed an infringement and shall
be punishable as such without prejudice to the proprietor's right
of action.
190.3. Subject to the approval of the Secretary of Finance,
the Commissioner of Customs is hereby empowered to make rules
and regulations for preventing the importation of articles, the
importation of which is prohibited under this Section and under
treaties and conventions to which the Philippines may be a party
and for seizing and condemning and disposing of the same in case
they are discovered after they have been imported. (Sec. 30, P.D.
No. 49)
CHAPTER IX
DEPOSIT AND NOTICE
SEC. 191. Registration and Deposit with National
Library and the Supreme Court Library. – After the first public
dissemination of performance by authority of the copyright owner
of a work falling under Subsections 172.1, 172.2 and 172.3 of this
Act, there shall, for the purpose of completing the records of the
National Library and the Supreme Court Library, within three
(3) weeks, be registered and deposited with it, by personal delivery
or by registered mail, two (2) complete copies or reproductions of
the work in such form as the directors of said libraries may
prescribe. A certificate of deposit shall be issued for which the
prescribed fee shall be collected and the copyright owner shall be
exempt from making additional deposit of the works with the
National Library and the Supreme Court Library under other
laws. If, within three (3) weeks after receipt by the copyright
owner of a written demand from the directors for such deposit,
the required copies or reproductions are not delivered and the fee
is not paid, the copyright owner shall be liable to pay a fine
equivalent to the required fee per month of delay and to pay to the
National Library and the Supreme Court Library the amount of
the retail price of the best edition of the work. Only the above
mentioned classes of work shall be accepted for deposit by the
National Library and the Supreme Court Library. (Sec. 26, P.D.
No. 49a)
SEC. 192. Notice of Copyright. – Each copy of a work
published or offered for sale may contain a notice bearing the
name of the copyright owner, and the year of its first publication,
and, in copies produced after the creator's death, the year of such
death. (Sec. 27, P.D. No. 49a)
CHAPTER X
MORAL RIGHTS
SEC. 193. Scope of Moral Rights. – The author of a work
shall, independently of the economic rights in Section 177 or the
grant of an assignment or license with respect to such right,
have the right:
193.1. To require that the authorship of the works be
attributed to him, in particular, the right that his name, as far
as practicable, be indicated in a prominent way on the copies,
and in connection with the public use of his work;
193.2. To make any alterations of his work prior to, or to
withhold it from publication;
193.3. To object to any distortion, mutilation or other
modification of, or other derogatory action in relation to, his work
which would be prejudicial to his honor or reputation; and
193.4. To restrain the use of his name with respect to
any work not of his own creation or in a distorted version of his
work. (Sec. 34, P.D. No. 49)
SEC. 194. Breach of Contract. – An author cannot be
compelled to perform his contract to create a work or for the
publication of his work already in existence. However, he may be
held liable for damages for breach of such contract. (Sec. 35, P.D.
No. 49)
SEC. 195. Waiver of Moral Rights. – An author may waive
his rights mentioned in Section 193 by a written instrument, but
no such waiver shall be valid where its effects is to permit another:
195.1. To use the name of the author, or the title of his
work, or otherwise to make use of his reputation with respect to
any version or adaptation of his work which, because of alterations
therein, would substantially tend to injure the literary or artistic
reputation of another author; or
195.2. To use the name of the author with respect to a
work he did not create. (Sec. 36, P.D. No. 49)
SEC. 196. Contribution to Collective Work. – When an
author contributes to a collective work, his right to have his
contribution attributed to him is deemed waived unless he
expressly reserves it. (Sec. 37, P.D. No. 49)
SEC. 197. Editing, Arranging and Adaptation of Work. –
In the absence of a contrary stipulation at the time an author
licenses or permits another to use his work, the necessary editing,
arranging or adaptation of such work, for publication, broadcast,
use in a motion picture, dramatization, or mechanical or electrical
reproduction in accordance with the reasonable and customary
standards or requirements of the medium in which the work is to
be used, shall not be deemed to contravene the author's rights
secured by this chapter. Nor shall complete destruction of a work
unconditionally transferred by the author be deemed to violate
such rights. (Sec. 38, P.D. No. 49)
SEC. 198. Term of Moral Rights. – 198.1. The rights of
an author under this chapter shall last during the lifetime of the
author and for fifty (50) years after his death and shall not be
assignable or subject to license. The person or persons to be charged
with the posthumous enforcement of these rights shall be named
in writing to be filed with the National Library. In default of
such person or persons, such enforcement shall devolve upon either
the author's heirs, and in default of the heirs, the Director of the
National Library.
198.2. For purposes of this Section, "Person" shall mean
any individual, partnership, corporation, association, or society.
The Director of the National Library may prescribe reasonable
fees to be charged for his services in the application of provisions
of this Section. (Sec. 39, P.D. No. 49)
SEC. 199. Enforcement Remedies. – Violation of any of
the rights conferred by this Chapter shall entitle those charged
with their enforcement to the same rights and remedies available
to a copyright owner. In addition, damages which may be availed
of under the Civil Code may also be recovered. Any damage
recovered after the creator's death shall be held in trust for and
remitted to his heirs, and in default of the heirs, shall belong to
the government. (Sec. 40, P.D. No. 49)
CHAPTER XI
RIGHTS TO PROCEEDS IN SUBSEQUENT TRANSFERS
SEC. 200. Sale or Lease of Work. – In every sale or lease
of an original work of painting or sculpture or of the original
manuscript of a writer or composer, subsequent to the first
disposition thereof by the author, the author or his heirs shall
have an inalienable right to participate in the gross proceeds of
the sale or lease to the extent of five percent (5%). This right
shall exist during the lifetime of the author and for fifty (50)
years after his death. (Sec. 31, P.D. No. 49)
SEC. 201. Works Not Covered. – The provisions of this
Chapter shall not apply to prints, etchings, engravings, works of
applied art, or works of similar kind wherein the author primarily
derives gain from the proceeds of reproductions. (Sec. 33, P.D.
No. 49)
CHAPTER XII
RIGHTS OF PERFORMERS, PRODUCERS OF
SOUNDS RECORDINGS AND
BROADCASTING ORGANIZATIONS
SEC. 202. Definitions. – For the purpose of this Act, the
following terms shall have the following meanings:
202.1. "Performers" are actors, singers, musicians,
dancers, and other persons who act, sing, declaim, play in,
interpret, or otherwise perform literary and artistic work;
202.2. "Sound recording" means the fixation of the sounds
of a performance or of other sounds, or representation of sound,
other than in the form of a fixation incorporated in a
cinematographic or other audiovisual work;
202.3. An "audiovisual work or fixation" is a work that
consists of a series of related images which impart the impression
of motion, with or without accompanying sounds, susceptible of
being made visible and, where accompanied by sounds, susceptible
of being made audible;
202.4. "Fixation" means the embodiment of sounds, or of
the representations thereof, from which they can be perceived,
reproduced or communicated through a device;
202.5. "Producer of a sound recording" means the person,
or the legal entity, who or which takes the initiative and has the
responsibility for the first fixation of the sounds of a performance
or other sounds, or the representation of sounds;
202.6. "Publication of a fixed performance or a sound
recording" means the offering of copies of the fixed performance
or the sound recording to the public, with the consent of the right
holder: Provided, That copies are offered to the public in
reasonable quality;
202.7. "Broadcasting" means the transmission by wireless
means for the public reception of sounds or of images or of
representations thereof; such transmission by satellite is also
"broadcasting" where the means for decrypting are provided to
the public by the broadcasting organization or with its consent;
202.8. "Broadcasting organization" shall include a natural
person or a juridical entity duly authorized to engage in
broadcasting; and
202.9. "Communication to the public of a performance or
a sound recording" means the transmission to the public, by any
medium, otherwise than by broadcasting, of sounds of a
performance or the representations of sounds fixed in a sound
recording. For purposes of Section 209, "communication to the
public" includes making the sounds or representations of sounds
fixed in a sound recording audible to the public.
SEC. 203. Scope of Performers' Rights. – Subject to the
provisions of Section 212, performers shall enjoy the following
exclusive rights:
203.1. As regards their performances, the right of
authorizing:
(a) The broadcasting and other communication to the public
of their performance; and
(b) The fixation of their unfixed performance.
203.2. The right of authorizing the direct or indirect
reproduction of their performances fixed in sound recordings, in
any manner or form;
203.3. Subject to the provisions of Section 206, the right
of authorizing the first public distribution of the original and
copies of their performance fixed in the sound recording through
sale or rental or other forms of transfer of ownership;
203.4. The right of authorizing the commercial rental to
the public of the original and copies of their performances fixed in
sound recordings, even after distribution of them by, or pursuant
to the authorization by the performer; and
203.5. The right of authorizing the making available to
the public of their performances fixed in sound recordings, by
wire or wireless means, in such a way that members of the public
may access them from a place and time individually chosen by
them. (Sec. 42, P.D. No. 49a)
SEC. 204. Moral Rights of Performers. – 204.1.
Independently of a performer's economic rights, the performer,
shall, as regards his live aural performances or performances
fixed in sound recordings, have the right to claim to be identified
as the performer of his performances, except where the omission
is dictated by the manner of the use of the performance, and to
object to any distortion, mutilation or other modification of his
performances that would be prejudicial to his reputation.
204.2. The rights granted to a performer in accordance
with Subsection 203.1 shall be maintained and exercised fifty
(50) years after his death, by his heirs, and in default of heirs, the
Government, where protection is claimed. (Sec. 43, P.D. No. 49)
SEC. 205. Limitation on Right. – 205.1. Subject to the
provisions of Section 206, once the performer has authorized the
broadcasting or fixation of his performance, the provisions of
Sections 203 shall have no further application.
205.2. The provisions of Section 184 and Section 185 shall
apply mutatis mutandis to performers. (n)
SEC. 206. Additional Remuneration for Subsequent
Communications or Broadcasts. – Unless otherwise provided in
the contract, in every communication to the public or broadcast
of a performance subsequent to the first communication or
broadcast thereof by the broadcasting organization, the performer
shall be entitled to an additional remuneration equivalent to at
least five percent (5%) of the original compensation he or she
received for the first communication or broadcast. (n)
SEC. 207. Contract Terms. – Nothing in this Chapter
shall be construed to deprive performers of the right to agree by
contracts on terms and conditions more favorable for them in
respect of any use of their performance. (n)
CHAPTER XIII
PRODUCERS OF SOUND RECORDINGS
SEC. 208. Scope of Right. – Subject to the provisions of
Section 212, producers of sound recordings shall enjoy the following
exclusive rights:
208.1. The right to authorize the direct or indirect
reproduction of their sound recordings, in any manner or form;
the placing of these reproductions in the market and the right of
rental or lending;
208.2. The right to authorize the first public distribution
of the original and copies of their sound recordings through sale
or rental or other forms of transferring ownership; and
208.3. The right to authorize the commercial rental to
the public of the original and copies of their sound recordings,
even after distribution by them by or pursuant to authorization
by the producer. (Sec. 46, P.D. No. 49a)
SEC. 209. Communication to the Public. – If a sound
recording published for commercial purposes, or a reproduction
of such sound recording, is used directly for broadcasting or for
other communication to the public, or is publicly performed with
the intention of making and enhancing profit, a single equitable
remuneration for the performer or performers, and the producer
of the sound recording shall be paid by the user to both the
performers and the producer, who, in the absence of any agreement
shall share equally. (Sec. 47, P.D. No. 49a)
SEC. 210. Limitation of Right. – Sections 184 and 185
shall apply mutatis mutandis to the producer of sound recordings.
(Sec. 48, P.D. No. 49a)
CHAPTER XIV
BROADCASTING ORGANIZATIONS
SEC. 211. Scope of Right. – Subject to the provisions of
Section 212, broadcasting organizations shall enjoy the exclusive
right to carry out, authorize or prevent any of the following acts:
211.1. The rebroadcasting of their broadcasts;
211.2. The recording in any manner, including the making
of films or the use of video tape, of their broadcasts for the purpose
of communication to the public of television broadcasts of the
same; and
211.3. The use of such records for fresh transmissions or
for fresh recording. (Sec. 52, P.D. No. 49)
CHAPTER XV
LIMITATIONS ON PROTECTION
SEC. 212. Limitations on Rights. – Sections 203, 208 and
209 shall not apply where the acts referred to in those Sections
are related to:
212.1. The use by a natural person exclusively for his
own personal purposes;
212.2. Using short excerpts for reporting current events;
212.3. Use solely for the purpose of teaching or for scientific
research; and
212.4. Fair use of the broadcast subject to the conditions
under Section 185. (Sec. 44, P.D. No. 49a)
CHAPTER XVI
TERM OF PROTECTION
SEC. 213. Term of Protection. – 213.1. Subject to the
provisions of Subsections 213.2 to 213.5, the copyright in works
under Sections 172 and 173 shall be protected during the life of
the author and for fifty (50) years after his death. This rule also
applies to posthumous works. (Sec. 21, first sentence, P.D. No.
49a)
213.2. In case of works of joint authorship, the economic
rights shall be protected during the life of the last surviving author
and for fifty (50) years after his death. (Sec. 21, second sentence,
P.D. No. 49)
213.3. In case of anonymous or pseudonymous works, the
copyright shall be protected for fifty (50) years from the date on
which the work was first lawfully published: Provided, That
where, before the expiration of the said period, the author's identity
is revealed or is no longer in doubt, the provisions of Subsections
213.1 and 213.2 shall apply, as the case maybe: Provided, further,
That such works if not published before shall be protected for
fifty (50) years counted from the making of the work. (Sec. 23,
P.D. No. 49)
213.4. In case of works of applied art, the protection shall
be for a period of twenty-five (25) years from the date of making.
(Sec. 24(B), P.D. No. 49a)
213.5. In case of photographic works, the protection shall
be for fifty (50) years from publication of the work and, if
unpublished, fifty (50) years from the making. (Sec. 24(C), P.D.
49a)
213.6. In case of audio-visual works including those
produced by process analogous to photography or any process for
making audio-visual recordings, the term shall be fifty (50) years
from the date of publication and, if unpublished, from the date of
making. (Sec. 24(C), P.D. No. 49a)
SEC. 214. Calculation of Term. – The term of protection
subsequent to the death of the author provided in the preceding
Section shall run from the date of his death or of publication, but
such terms shall always be deemed to begin on the first day of
January of the year following the event which gave rise to them.
(Sec. 25, P.D. No. 49)
SEC. 215. Term of Protection for Performers, Producers
and Broadcasting Organizations. – 215.1. The rights granted to
performers and producers of sound recordings under this law shall
expire:
(a) For performances not incorporated in recordings, fifty
(50) years from the end of the year in which the performance took
place; and
(b) For sound or image and sound recordings and for
performances incorporated therein, fifty (50) years from the end
of the year in which the recording took place.
215.2. In case of broadcasts, the term shall be twenty
(20) years from the date the broadcast took place. The extended
term shall be applied only to old works with subsisting protection
under the prior law. (Sec. 55, P.D. No. 49a)
CHAPTER XVII
INFRINGEMENT
SEC. 216. Remedies for Infringement. – 216.1. Any
person infringing a right protected under this law shall be liable:
(a) To an injunction restraining such infringement. The
court may also order the defendant to desist from an infringement,
among others, to prevent the entry into the channels of commerce
of imported goods that involve an infringement, immediately after
customs clearance of such goods.
(b) Pay to the copyright proprietor or his assigns or heirs
such actual damages, including legal costs and other expenses,
as he may have incurred due to the infringement as well as the
profits the infringer may have made due to such infringement,
and in proving profits the plaintiff shall be required to prove sales
only and the defendant shall be required to prove every element
of cost which he claims, or, in lieu of actual damages and profits,
such damages which to the court shall appear to be just and shall
not be regarded as penalty.
(c) Deliver under oath, for impounding during the pendency
of the action, upon such terms and conditions as the court may
prescribe, sales invoices and other documents evidencing sales,
all articles and their packaging alleged to infringe a copyright
and implements for making them.
(d) Deliver under oath for destruction without any
compensation all infringing copies or devices, as well as all plates,
molds, or other means for making such infringing copies as the
court may order.
(e) Such other terms and conditions, including the payment
of moral and exemplary damages, which the court may deem
proper, wise and equitable and the destruction of infringing copies
of the work even in the event of acquittal in a criminal case.
216.2. In an infringement action, the court shall also have
the power to order the seizure and impounding of any article
which may serve as evidence in the court proceedings. (Sec. 28,
P.D. No. 49a)
SEC. 217. Criminal Penalties. – 217.1. Any person
infringing any right secured by provisions of Part IV of this Act
or aiding or abetting such infringement shall be guilty of a crime
punishable by:
(a) Imprisonment of one (1) year to three (3) years plus a
fine ranging from Fifty thousand pesos (P50,000) to One hundred
fifty thousand pesos (P150,000) for the first offense.
(b) Imprisonment of three (3) years and one (1) day to six
(6) years plus a fine ranging from One hundred fifty thousand
pesos (P150,000) to Five hundred thousand pesos (P500,000) for
the second offense.
(c) Imprisonment of six (6) years and one (1) day to nine
(9) years plus a fine ranging from Five hundred thousand pesos
(P500,000) to One million five hundred thousand pesos (P1,500,000)
for the third and subsequent offenses.
(d) In all cases, subsidiary imprisonment in cases of
insolvency.
217.2. In determining the number of years of
imprisonment and the amount of fine, the court shall consider
the value of the infringing materials that the defendant has
produced or manufactured and the damage that the copyright
owner has suffered by reason of the infringement.
217.3. Any person who at the time when copyright
subsists in a work has in his possession an article which he knows,
or ought to know, to be an infringing copy of the work for the
purpose of:
(a) Selling, letting for hire, or by way of trade offering or
exposing for sale, or hire, the article;
(b) Distributing the article for purpose of trade, or for any
other purpose to an extent that will prejudice the rights of the
copyright owner in the work; or
(c) Trade exhibit of the article in public, shall be guilty of
an offense and shall be liable on conviction to imprisonment and
fine as above mentioned. (Sec. 29, P.D. No. 49a)
SEC. 218. Affidavit Evidence. – 218.1. In an action under
this Chapter, an affidavit made before a notary public by or on
behalf of the owner of the copyright in any work or other subject
matter and stating that:
(a) At the time specified therein, copyright subsisted in
the work or other subject matter;
(b) He or the person named therein is the owner of the
copyright; and
(c) The copy of the work or other subject matter annexed
thereto is a true copy thereof, shall be admitted in evidence in
any proceedings for an offense under this Chapter and shall be
prima facie proof of the matters therein stated until the contrary
is proved, and the court before which such affidavit is produced
shall assume that the affidavit was made by or on behalf of the
owner of the copyright.
218.2. In an action under this Chapter:
(a) Copyright shall be presumed to subsist in the work or
other subject matter to which the action relates if the defendant
does not put in issue the question whether copyright subsists in
the work or other subject matter;
(b) Where the subsistence of the copyright is established,
the plaintiff shall be presumed to be the owner of the copyright if
he claims to be the owner of the copyright and the defendant does
not put in issue the question of his ownership; and
(c) Where the defendant, without good faith, puts in issue
the questions of whether copyright subsists in a work or other
subject matter to which the action relates, or the ownership of
copyright in such work or subject matter, thereby occasioning
unnecessary costs or delay in the proceedings, the court may
direct that any costs to the defendant in respect of the action
shall not be allowed by him and that any costs occasioned by the
defendant to other parties shall be paid by him to such other
parties. (n)
SEC. 219. Presumption of Authorship. – 219.1. The
natural person whose name is indicated on a work in the usual
manner as the author shall, in the absence of proof to the contrary,
be presumed to be the author of the work. This provision shall be
applicable even if the name is a pseudonym, where the pseudonym
leaves no doubt as to the identity of the author.
219.2. The person or body corporate whose name appears
on an audio-visual work in the usual manner shall, in the absence
of proof to the contrary, be presumed to be the maker of said
work. (n)
SEC. 220. International Registration of Works. – A
statement concerning a work, recorded in an international register
in accordance with an international treaty to which the Philippines
is or may become a party, shall be construed as true until the
contrary is proved except:
220.1. Where the statement cannot be valid under this
Act or any other law concerning intellectual property.
220.2. Where the statement is contradicted by another
statement recorded in the international register. (n)
CHAPTER XVIII
SCOPE OF APPLICATION
SEC. 221. Points of Attachment for Works under Sections
172 and 173. – 221.1. The protection afforded by this Act to
copyrightable works under Sections 172 and 173 shall apply to:
(a) Works of authors who are nationals of, or have their
habitual residence in, the Philippines;
(b) Audio-visual works the producer of which has his
headquarters or habitual residence in the Philippines;
(c) Works of architecture erected in the Philippines or other
artistic works incorporated in a building or other structure located
in the Philippines;
(d) Works first published in the Philippines; and
(e) Works first published in another country but also
published in the Philippines within thirty (30) days, irrespective
of the nationality or residence of the authors.
221.2. The provisions of this Act shall also apply to works
that are to be protected by virtue of and in accordance with any
international convention or other international agreement to
which the Philippines is a party. (n)
SEC. 222. Points of Attachment for Performers. – The
provisions of this Act on the protection of performers shall apply
to:
222.1. Performers who are nationals of the Philippines;
222.2. Performers who are not nationals of the Philippines
but whose performances:
(a) Take place in the Philippines; or
(b) Are incorporated in sound recordings that are protected
under this Act; or
(c) Which has not been fixed in sound recording but are
carried by broadcast qualifying for protection under this Act. (n)
SEC. 223. Points of Attachment for Sound Recordings.
– The provisions of this Act on the protection of sound recordings
shall apply to:
223.1. Sound recordings the producers of which are
nationals of the Philippines; and
223.2. Sound recordings that were first published in the
Philippines. (n)
SEC. 224. Points of Attachment for Broadcasts. – 224.1.
The provisions of this Act on the protection of broadcasts shall
apply to:
(a) Broadcasts of broadcasting organizations the
headquarters of which are situated in the Philippines; and
(b) Broadcasts transmitted from transmitters situated in
the Philippines.
224.2. The provisions of this Act shall also apply to
performers who, and to producers of sound recordings and
broadcasting organizations which, are to be protected by virtue of
and in accordance with any international convention or other
international agreement to which the Philippines is a party. (n)
CHAPTER XIX
INSTITUTION OF ACTIONS
SEC. 225. Jurisdiction. – Without prejudice to the
provisions of Subsection 7.1(c), actions under this Act shall be
cognizable by the courts with appropriate jurisdiction under
existing law. (Sec. 57, P.D. No. 49a)
SEC. 226. Damages. – No damages may be recovered
under this Act after four (4) years from the time the cause of
action arose. (Sec. 58, P.D. No. 49)
CHAPTER XX
MISCELLANEOUS PROVISIONS
SEC. 227. Ownership of Deposit and Instruments. – All
copies deposited and instruments in writing filed with the National
Library and the Supreme Court Library in accordance with the
provisions of this Act shall become the property of the Government.
(Sec. 60, P.D. No. 49)
SEC. 228. Public Records. – The section or division of the
National Library and the Supreme Court Library charged with
receiving copies and instruments deposited and with keeping
records required under this Act and everything in it shall be
opened to public inspection. The Director of the National Library
is empowered to issue such safeguards and regulations as may be
necessary to implement this Section and other provisions of this
Act. (Sec. 61, P.D. No. 49)
SEC. 229. Copyright Division; Fees. – The Copyright
Section of the National Library shall be classified as a Division
upon the effectivity of this Act. The National Library shall have
the power to collect, for the discharge of its services under this
Act, such fees as may be promulgated by it from time to time
subject to the approval of the Department Head. (Sec. 62, P.D.
49a)
PART V
FINAL PROVISIONS
SEC. 230. Equitable Principles to Govern Proceedings. –
In all inter partes proceedings in the Office under this Act, the
equitable principles of laches, estoppel, and acquiescence where
applicable, may be considered and applied. (Sec. 9-A, R.A. No.
165)
SEC. 231. Reverse Reciprocity of Foreign Laws. – Any
condition, restriction, limitation, diminution, requirement, penalty
or any similar burden imposed by the law of a foreign country on
a Philippine national seeking protection of intellectual property
rights in that country, shall reciprocally be enforceable upon
nationals of said country, within Philippine jurisdiction. (n)
SEC. 232. Appeals. – 232.1. Appeals from decisions of
regular courts shall be governed by the Rules of Court. Unless
restrained by a higher court, the judgment of the trial court shall
be executory even pending appeal under such terms and conditions
as the court may prescribe.
232.2. Unless expressly provided in this Act or other
statutes, appeals from decisions of administrative officials shall
be provided in the Regulations. (n)
SEC. 233. Organization of the Office; Exemption from the
Salary Standardization Law and the Attrition Law. – 233.1.
The Office shall be organized within one (1) year after the approval
of this Act. It shall not be subject to the provisions of Republic
Act No. 7430.
233.2. The Office shall institute its own compensation
structure: Provided, That the Office shall make its own system
conform as closely as possible with the principles provided for
under Republic Act No. 6758. (n)
SEC. 234. Abolition of the Bureau of Patents,
Trademarks, and Technology Transfer. – The Bureau of Patents,
Trademarks, and Technology Transfer under the Department of
Trade and Industry is hereby abolished. All unexpended funds
and fees, fines, royalties and other charges collected for the
calendar year, properties, equipment and records of the Bureau
of Patents, Trademarks and Technology Transfer, and such
personnel as may be necessary are hereby transferred to the Office.
Personnel not absorbed or transferred to the Office shall enjoy
the retirement benefits granted under existing law, otherwise,
they shall be paid the equivalent of one (1) month basic salary for
every year of service, or the equivalent nearest fractions thereof
favorable to them on the basis of the highest salary received. (n)
SEC. 235. Applications Pending on Effective Date of Act.
– 235.1. All applications for patents pending in the Bureau of
Patents, Trademarks and Technology Transfer shall be proceeded
with and patents thereon granted in accordance with the Acts
under which said applications were filed, and said Acts are hereby
continued to be enforced, to this extent and for this purpose only,
notwithstanding the foregoing general repeal thereof: Provided,
That applications for utility models or industrial designs pending
at the effective date of this Act, shall be proceeded with in
accordance with the provisions of this Act, unless the applicants
elect to prosecute said applications in accordance with the Acts
under which they were filed.
235.2. All applications for registration of marks or trade
names pending in the Bureau of Patents, Trademarks and
Technology Transfer at the effective date of this Act may be
amended, if practicable to bring them under the provisions of
this Act. The prosecution of such applications so amended and
the grant of registrations thereon shall be proceeded with in
accordance with the provisions of this Act. If such amendments
are not made, the prosecution of said applications shall be
proceeded with and registrations thereon granted in accordance
with the Acts under which said applications were filed, and said
Acts are hereby continued in force to this extent for this purpose
only, notwithstanding the foregoing general repeal thereof. (n)
SEC. 236. Preservation of Existing Rights. –Nothing
herein shall adversely affect the rights on the enforcement of
rights in patents, utility models, industrial designs, marks and
works, acquired in good faith prior to the effective date of this
Act. (n)
SEC. 237. Notification on Berne Appendix. – The
Philippines shall by proper compliance with the requirements
set forth under the Appendix of the Berne Convention (Paris Act,
1971) avail itself of the special provisions regarding developing
countries, including provisions for licenses grantable by competent
authority under the Appendix. (n)
SEC. 238. Appropriations. – The funds needed to carry
out the provisions of this Act shall be charged to the appropriations
of the Bureau of Patents, Trademarks, and Technology Transfer
under the current General Appropriations Act and the fees, fines,
royalties and other charges collected by the Bureau for the calendar
year pursuant to Sections 14.1 and 234 of this Act. Thereafter
such sums as may be necessary for its continued implementations
shall be included in the annual General Appropriations Act. (n)
SEC. 239. Repeals. – 239.1. All Acts and parts of Acts
inconsistent herewith, more particularly Republic Act No. 165,
as amended; Republic Act No. 166, as amended; and Articles 188
and 189 of the Revised Penal Code; Presidential Decree No. 49,
including Presidential Decree No. 285, as amended, are hereby
repealed.
239.2 Marks registered under Republic Act No. 166 shall
remain in force but shall be deemed to have been granted under
this Act and shall be due for renewal within the period provided
for under this Act and, upon renewal, shall be reclassified in
accordance with the International Classification. Trade names
and marks registered in the Supplemental Register under Republic
Act No. 166 shall remain in force but shall no longer be subject to
renewal.
239.3. The provisions of this Act shall apply to works in
which copyright protection obtained prior to the effectivity of this
Act is subsisting: Provided, That the application of this Act
shall not result in the diminution of such protection. (n)
SEC. 240. Separability. – If any provision of this Act or
the application of such provision to any circumstances is held
invalid, the remainder of the Act shall not be affected thereby. (n)
SEC. 241. Effectivity. – This Act shall take effect on 1
January 1998. (n)
Approved, June 6, 1997.
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