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)
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 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;
(x) Other
analogous
penalties or sanctions. (Secs. 6, 7, 8, and 9,
Executive
Order No. 913 [1983]a)
10.3. The Director
General may by Regulations establish the procedure to govern the
implementation
of this Section. (n)
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. Regulations
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:
(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 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.
(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
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 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 requirement 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. No. 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 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
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 non-commercial scale or for a
non-commercial
purpose: Provided, That it does not significantly prejudice
the
economic interests of the owner of the patent;
72.3. Where the
act consists of making or using exclusively for the purpose of
experiments
that relate to the subject matter of the patented invention;
72.4. Where the
act consists of the preparation for individual cases, in a pharmacy or
by a medical professional, of a medicine in accordance with a medical
prescription
or acts concerning the medicine so prepared;
72.5. Where the
invention is used in any ship, vessel, aircraft, or land vehicle of any
other country entering the territory of the Philippines temporarily or
accidentally: Provided, That such invention is used exclusively
for the needs of the ship, vessel, aircraft, or land vehicle and not
used
for the manufacturing of anything to be sold within the Philippines. (Secs.
38 and 39, R. A. No. 165a)
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 prescribed in three (3) years from 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
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;
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, and 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;
(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 terminated 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
canceled
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
and Layout Designs (Topographies) of Integrated Circuits
(Note:
This entire Chapter was amended by Republic
Act No. 9150 which was approved on August 06, 2001)
Sec. 112. Definition
of Terms:
1.An
Industrial Design is any composition of lines or colors or any
three-dimensional
form, whether or not associated with lines or colors: Provided, That
such composition or form gives a special appearance to and can serve as
pattern for an industrial product or handicraft;
2. Integrated
Circuit means a product, in its final form, or an intermediate
form,
in which the elements, at least one of which is an active element and
some
or all of the interconnections are integrally formed in and/or on a
piece
of material, and which is intended to perform an electronic function;
and
3. Layout-Design
is
synonymous with 'Topography' and means the three-dimensional
disposition,
however expressed, of the elements, at least one of which is an active
element, and of some or all of the interconnections of an integrated
circuit,
or such a three-dimensional disposition prepared for an integrated
circuit
intended for manufacture. chanrobles virtual law library
Sec. 113. Substantive
Conditions/or Protection.-
113.1.
Only industrial designs that are new or ornamental 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.
113.3. Only layout
-designs of integrated circuits that are original shall benefit from
protection
under this Act. A layout-design shall be considered original if it is
the
result of its creator's own intellectual effort and is not commonplace
among creators of layout-designs and manufacturers of integrated
circuits
at the time of its creation.
113.4. A layout-design
consisting of a combination of elements and interconnections that are
commonplace
shall be protected only if the combination, taken as a whole, is
original.
Sec. 114. Contents
of the Application. - 114.1.
Every
application for registration of an industrial design or layout-design
shall
contain:
(a) A request for
registration of the industrial design or layout-design;
(b) Information
identifying
the applicant;
(c) An
indication
of the kind of article of manufacture or handicraft to which the
industrial
design or layout-design shall be applied;
(d) A
representation
of the article of manufacture or handicraft by way of drawings,
photographs
or adequate graphic representation of the industrial design or of the
layout-design
as applied to the article of manufacture or handicraft which clearly
and
fully discloses those features for which protection is claimed;
and chanrobles virtual law library
(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 or
layout-design
registration.
114.2. The
application
may be accompanied by a specimen of the article embodying the
industrial
design or layout-design and shall be subject to the payment of the
prescribed
fee.
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 the layout -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 Sec. 114 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 Sec. 114
within
the prescribed period, otherwise the application shall be considered
withdrawn.
116.4. The Office
shall examine whether the industrial design or layout-design complies
with
requirements of Sec. 112 (Definitions) and Sec. 113 (Substantive
Conditions
for Protection).
Sec. 117, Registration.
-
117.1. Where the Office finds that the conditions referred to in Sec.
113
are fulfilled, it shall order that registration be effected in the
industrial
design or layout-design register and cause the issuance of an
industrial
design or layout-design certificate of registration; otherwise, it
shall
refuse the application.
117.2. The
form and contents of an industrial design or layout-design certificate
shall be established by the Registrations: 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 layout 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
or layout-designs including files of cancellation proceedings. chanrobles virtual law library
Sec. 118. The
Term of Industrial Design or Layout-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.
118.5. Registration
of a layout-design shall be valid for a period often (10) years,
without
renewal, and such validity to be counted from the date of commencement
of the protection accorded to the layout-design. The protection of a
layout-design
under this Act shall commence:
a) on the date of
the first commercial exploitation, anywhere in the world, of the
layout-design
by or with the consent of the right holder: Provided, That an
application
for registration is filed with the Intellectual Property Office within
two (2) years from such date of first commercial exploitation; or
b) on the
filing
date accorded to the application for the registration of the
layout-design
if the layout-design has not been previously exploited commercially
anywhere
in the world.
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 28 - Right
to a Patent;
SECTION 29 - First
to File Rule;
SECTION 30 - Inventions
Created Pursuant to a Commission;
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; chanrobles virtual law library
SECTION 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.
119.3. The following
provisions relating to patents shall apply mutatis mutandis to
a
layout -design of integrated circuits registration:
SECTION 28 - Right
to a Patent;
SECTION 29 - First
to File Rule;
SECTION 30 - Inventions
Created Pursuant to a Commission;
SECTION 33 - Appointment
of Agent or Representative;
SECTION 56 - Surrender
of Patent;
SECTION 57 - Correction
of Mistakes of the Office;
SECTION 58 - Correction
of Mistakes in the Application;
SECTION 59 - Changes
in Patents;
SECTION 60 - Form
and Publication of Amendment;
CHAPTER VII - Remedies
of a Person with a Right to Patent;
CHAPTER VIII - Rights
of Patentees and Infringement of Patents: Provided, That the
layout-design
rights and limitation of layout-design rights provided hereunder shall
govern:
CHAPTER X - Compulsory
Licensing; chanrobles virtual law library
CHAPTER XI - Assignment
and Transmission of Rights
119.4. Rights
Conferred to the Owner of a Layout-Design Registration. - The owner
of a layout-design registration shall enjoy the following rights:
(1) to reproduce,
whether by incorporation in an integrated circuit or otherwise, the
registered
layout-design in its entirety or any part thereof, except the act of
reproducing
any part that does not comply with the requirement of originality; and
(2) to sell or
otherwise
distribute for commercial purposes the registered layout design, an
article
or an integrated circuit in which the registered layout-design is
incorporated.
119.5. Limitations
of Layout Rights. - The owner of a layout design has no right to
prevent
third parties from reproducing, selling or otherwise distributing for
commercial
purposes the registered layout-design in the following circumstances:
(1) Reproduction
of the registered layout-design for private purposes or for the sole
purpose
of evaluation, analysis, research or teaching;
(2) Where the
act
is performed in respect of a layout-design created on the basis of such
analysis or evaluation and which is itself original in the meaning as
provided
herein;
(3) Where the
act
is performed in respect of a registered lay-out-design, or in respect
of
an integrated circuit in which such a layout-design is incorporated,
that
has been put on the market by or with the consent of the right holder;
(4) In respect
of
an integrated circuit where the person performing or ordering such an
act
did not know and had no reasonable ground to know when acquiring the
integrated
circuit or the article incorporating such an integrated circuit, that
it
incorporated an unlawfully reproduced layout-design: Provided,
however,
That
after the time that such person has received sufficient notice that the
layout-design was unlawfully reproduced, that person may perform any of
the said acts only with respect to the stock on hand or ordered before
such time and shall be liable to pay to the right holder a sum
equivalent
to at least 5% of net sales or such other reasonable royalty as would
be
payable under a freely negotiated license in respect of such
layout-design;
or chanrobles virtual law library
(5) Where the
act
is performed in respect of an identical layout-design which is original
and has been created independently by a third party.
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 registerable 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.
120.3. Grounds
for Cancellation of Layout-Design of Integrated Circuits.- Any
interested
person may petition that the registration of a layout-design be
canceled
on the ground that:
(i) the
layout-design
is not protectable under this Act;
(ii) the right
holder
is not entitled to protection under this Act; or
(iii) where the
application
for registration of the layout-design, was not filed within two (2)
years
from its first commercial exploitation anywhere in the world.
Where the grounds for
cancellation are established with respect only to a part of the
layout-design,
only the corresponding part of the registration shall be canceled.
Any canceled layout-design
registration or part thereof, shall be regarded as null and void from
the
beginning and may be expunged from the records of the Intellectual
Property
Office. Reference to all canceled layout-design registration shall be
published
in the IPO Gazette.
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"
means 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 it 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 hand-written 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 well-known 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 mark 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 certificates 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 successor-in-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 registration 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 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. 166)
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 likely to be damaged by such act.
169.2. Any goods
marked or labeled 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 customhouse 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, or 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" means 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 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;
(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 three-dimensional 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 audio-visual 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 a 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 copy right 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
of 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 copy right 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 owners. (Sec.
9, Third Par., P. D. No. 49)
CHAPTER V
COPYRIGHT OR
ECONOMIC
RIGHTS
Sec. 177.
Copy 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 co-authors 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, express 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 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 producers 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 doubts 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 of 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
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
interest.
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 education 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 the 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 form of building or other construction;
(b) An entire
book,
or a substantial past thereof, or of a musical work in which graphics
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 person 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 may be: 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 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; and
(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.
(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 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 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
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)
This Act, which is
a consolidation of S. No. 1719 and H. No. 8098, was finally passed by
the
Senate and the House of Representatives on June 4, 1997 and June 5,
1997,
respectively.
Approved: 06 June
1997
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