IPL Handout v 102023 By: Atty. Bernadette C.

Mendoza

Intellectual Property Law (IPL)

(RA No. 8293, Jan. 1, 1998)
(except provisions under Part 1)
HIGHLIGHTS (as per RFBT TOS effective October 2022):
Patents
Trademark, Service Marks, and Trade Names
Copyright
Amendments to the IPL:
RA 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008
 Compulsory Licensing on the manufacture of patented medicines
 Compulsory Licensing on the importation of medicines protected by patent or trademark
 Non-patentability of second use of known substance UNLESS there is enhanced efficacy
RA 10372 on Copyrights (2013)
 Retransmission of broadcast made a right (reversing ABS-CBN v Phil. Media (2009)
 Vicarious liability including landlord liability
 Providing as aggravating circumstances the following:
 Circumvention of effective technological protection measures and
 Electronic rights management information
 TRIPS – an acronym which refers to the agreement on Trade-Related Aspects of Intellectual
Property Rights by virtue of which various nations bound themselves to modify their respective
laws governing IP rights to harmonize them in accordance with the requirements for
membership in the World Trade Organization (WTO)

Rationale: The State – Sec. 2, RA 8293

 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
 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 the 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.
 Section 6, Article XII, Constitution: “The use of property bears a social function, and all economic
agents shall contribute to the common good. Individuals and private groups, including
corporations, cooperatives, and similar collective organizations, shall have the right to own,
establish, and operate economic enterprises, subject to the duty of the State to promote
distributive justice and to intervene when the common good so demands.”
 streamline administrative procedures of registering patents, trademarks and copyright, to liberalize
and registration on the transfer of technology, and to enhance the enforcement of intellectual
property rights in the PH

INTELLECTUAL PROPERTY (IP) - those property rights which results from the physical
manifestation of an original thought; the legal rights which result from intellectual activities in the
industrial, scientific, literary and artistic fields
IP Consists of: IP definition under World Intellectual Property
1) Copyright and related rights Organization (WIPO) - Creations of the mind, such
2) Trademarks and Service Marks as
3) Patents Inventions
4) Geographic Indications Literary and artistic works
5) Layout Designs (Topographies) of Integrated Symbols, names, images used in
Circuits commerce
6) Protection of Undisclosed Information (Sec. 4.1,
RA 829); and WIPO – global forum for IP service, policy,
7) Industrial Designs information, and cooperation
8) Utility Models
9) Trade Secrets

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I-01 Any unique product of the mind or human intellect which includes music, movies, books,
software, paintings, words, phrases, symbols, designs, chemical formulas, etc.
A. intellectual property C. industrial designs
B. geographical indications D. layout designs

Can different Ips co-exist alongside each other? YES!

Thus, there is possibility to be sued

for different causes of action
simultaneously:
Ex: Liability for copyright
infringement, trademark
infringement, unfair competition

Industrial Design – constitutes the ornamental or aesthetic aspect of an article / object; what is
protected is the design of an object (shape or surface, patterns, lines, or colors)

Geographical Indication and appellation of origin – sign used on goods that have specific
geographical origin and possess qualities, a reputation or characteristics that are essentially
attributable to that place of origin; what is protected is the name of the place of origin of the
goods/services

I-02 Under Intellectual Property Code (IPC), to be covered by the law, it is required that you register
your business in the PH.
A. Yes, because registration will give you such protection.
B. No, because the law is design to protect registered and non-registered owner.
C. No, because the law is design to protect world-wide piracy of products.
D. Yes, because registration will give jurisdiction to our court.
E. B and C are correct
At a glance:
Copyright Patent Trademark
Market value These are property, intangible assets.
With recognized IP Exclusive rights to do or to prohibit,
rights may be assigned or licensed to others
may be infringed
Related Civil Code Articles 721-724, NCC Articles 520-522, NCC
supplementary
provisions
Copyrights, Patents, and trademarks are IP rights BUT they are DIFFERENT IP rights that cannot be
interchanged with one another.
What it covers Confined to literary Refer to any technical Any visible sign capable
and artistic works solution of a problem in of distinguishing the
which are original any field of human goods (trademark) or
intellectual creations in activity which is new, services (service mark)
the literary and artistic involves an inventive of an enterprise and
domain protected from step and is industrially shall include a stamped
the moment of applicable or marked container of
creation goods
Subject matter of the Literary, scientific or INVENTIONS: Any visible sign capable
right artistic work Technical solution of a of distinguishing the
Which is an original problem = New, useful, Goods manufactured or
intellectual creation involves an inventive produced or services of
with now an step and industrially an enterprise; brand
expression of that applicable
original thought

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Where right is to be Registration is not Intellectual Property Intellectual Property

registered required Office (Bureau of Office (Bureau of
Optional: National Patents) Trademarks)
Supreme Court Library Library or IPO*
– only works in the The National Library
field of law shall be has deputized the
deposited with it IPOPHL to receive
deposited works on its
behalf
When protection starts From the moment of Application Issuance of Certificate
Creation (First-to-File) of Registration
Upon issuance of the Upon issuance of the
letters of patent by the TM certificate
IPO (exception – well-
known marks)
Duration of right Lifetime of the author 20 years, 10 years, renewable at
+ generally, 50 years nonrenewable/non any instance
after death of the extendible (indefinite)
author, non-extendible From filing or priority
date
Taxation Significance Passive income sources subject to final passive income taxes

Basic General IP Principles

Territoriality
 Principle of Reciprocity – extension of reciprocal rights to nationals of the PH by law,
entitled to benefits to the extent necessary to give effect to any provision of conventions,
treaty or reciprocal law . . .
Registration System
 Except: Copyright
First-to-File Rule
 Except: Copyright
 Repealed the First-to-invent system under the old law
Nothing Absolute: Exceptions, Limitations and Time-Bound

Intellectual Property Office (IPO)

 agency of the gov’t in charge of the implementation of the IP Code; divided into 6 bureaus namely:
(1) Bureau of Patents,
(2) Bureau of Trademarks,
(3) Bureau of Legal Affairs,
(4) Documentation, Information and Technology Transfer Bureau,
(5) Management Information System and EDP Bureau, and
(6) Administrative, Financial and Personal Services Bureau
 lead agency responsible for handling the registration and conflict resolution of IP rights
 Jurisdictional Threshold: The threshold for administrative complaints for violations of laws
involving IP rights is P200,000 or more in total damages claimed.

I. The Law of PATENTS

Patent
 exclusive rights to a product or process, as well as its improvements—granted that the product or
process offers something new and useful
 a government issued grant, bestowing an exclusive right to the inventor over a product or process
that provides any technical solution to a problem in any field of human activity which is New,
Inventive, and Industrially Applicable (N+I+IA)
 exclusive right that allows the inventor to exclude others from making, using, or selling the product
of his invention during the life of the patent
 Throughout the entire duration of patent protection, a patent’s information must be available to the
public, as the owner is given enough time to gain ample commercial returns.

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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
P-01 What protects the intellectual property created by inventors? (ex. Samsung's L-shaped
smartphone)
A. Copyright B. Patents C. Registered Designs D. Trademarks

P-02 Refers to an intellectual property which gives an exclusive right to the inventor over his new,
inventive, and useful product, process or an improvement of a product or process
A. Copyright B. Trademark C. Franchise D. Patent

Three Different Kinds of Patents

Utility Patents Design Patents Plant Patents
The most common type of Granted to protect the unique Granted for the invention and
patent, these are granted to appearance or design of asexual reproduction of new
new machines, chemicals, and manufactured objects, such as and distinct plant varieties,
processes the surface ornamentation or including hybrids
overall design of the object *asexual reproduction means
the plant is reproduced by
means other than from seeds,
such as by grafting or rooting
of cuttings
Requisites of Patentability: (INI)
A. Novelty (Sec. 23)
 that which does not form part of a prior art
 PRIOR ART consists of:
a. Those already available to the public anywhere in the world before the filing date or
the priority date of the application.
b. that which forms part of an application whether for patent, utility model or industrial
design, effective in the Philippines, provided that:
i. the inventors or applicants are not the same
ii. the contents of the application are published in accordance with the requirements
of patent application rules
iii. the filing date of the prior art is earlier
 Prior art can include the following:
 A product that was available for sale
 Commercial use of the invention
 Articles, publications, or journals (printed or electronic)
 Presentation at a public event (a trade show, conference, etc.)
 Public knowledge or use of the invention (e.g. demonstration)

P-03 Under the requisite of Novelty for Patentable inventions, which of the following are required?
A. Those already available to the public anywhere in the world before the filing of the application
B. That which forms part of an application for Patent
C. That which forms part of an application for utility model or industrial design
D. That which does not form part of a Prior Art

Non-prejudicial disclosures
 An exception to the General Rule on Prior Art
 In provides that the disclosure of the information contained in the application during the 12
months preceding the filing date or the priority date of the application shall not prejudice the
applicant on the ground of lack of novelty if such disclosure was made by (a) the inventor, (b)
a patent office and the information was contained (i) in another application filed by the
inventor and should not have been disclosed by the office, or (ii) 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; (c) a third party which obtained the
information directly or indirectly from the inventor

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B. Inventiveness (Sec. 26) When does an invention involve inventive step?

 if, having regard to prior act, 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
P-04 In determining the requisite of “non-obviousness’’ in an invention, the following factors, among
others, are considered:
A. Level of ordinary skill in the field of the invention C. Commercial success
B. Both A and C D. Neither A nor C

C. Industrial applicability (Sec. 27)

 An invention that can be produced and used in any industry
P-05 Which inventions are patentable?
A. New/ Novelty
B. Involves an inventive step
C. Industrially applicable
D. Any technical solution to a problem in any field of human activity
E. All of the above

P-06 Which of the following is not a requisite of a patentable invention?

A. Must have a technical solution to a problem in any field of human activity
B. Must be new or novel
C. Must involve an inventive step
D. Must be industrially applicable
E. Must be made by a scientist

Non-Patentable Inventions: (DSM-PAC)

1) Discoveries, scientific theories and mathematical methods
2) Schemes, rules and methods of performing mental acts, playing games or doing business, and
programs for computers
3) Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods
practiced on the human or animal body. This provision shall not apply to products and composition
for use in any of these methods
4) 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.
Note:
Congress may enact law providing sui generis protection of plant varieties and animal breeds and a
system of community intellectual rights protection
5) Aesthetic creations
6) Anything which is contrary to public order or morality
7) In the case of drugs and medicine, discovery of a new form or new property of a known substance
which does not result in the enhancement of the known efficacy of that substance
8) Discovery of a new property or new use for a known substance
9) Use of a known process unless such known process results in a new product that employes at least
one new reactant

P-07 One of these CANNOT be patented:

A. A useful machine
B. A product
C. A process
D. Discoveries, scientific theories, and mathematical methods

P-08 Which items shall be excluded from Patent Protection?

A. Discoveries, Scientific theories, Mathematical methods
B. Schemes, Rules and methods for performing mental acts, Games
C. Methods for treatment of the human or animal body through surgery or therapy
D. Programs for computers
E. All of the above

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P-09 Which of the following may become the subject matter of patent application?
A. Discoveries, scientific theories and mathematical methods
B. Schemes, rules, and methods of performing mental acts, playing games or doing business, and
programs for computers
C. Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods
practiced on the human or animal body
D. Microorganisms, non-biological process and microbiological process
E. Plant varieties and animal breeds

P-10 Which of the following is non-patentable?

A. Aesthetic creations C. Salt lamp technology
B. Car driven by water-engine D. Microorganisms

P-11 Which of the following is non-patentable?

A. Scientific discovery C. Solar-panels
B. Soft-touch technology D. Laser that can remove scars

P-12 X, an amateur astronomer, stumbled upon what appeared to be a massive volcanic eruption in
Jupiter while peering at the planet through his telescope. The following week, X, without notes,
presented a lecture on his findings before the Association of Astronomers of the Philippines. To his
dismay, he later read an article in a science journal written by Y, a professional astronomer, repeating
exactly what X discovered without any attribution to him. Has Y infringed on X's copyright, if any?
A. No, since X did not reduce his lecture in writing or other material form.
B. Yes, since the lecture is considered X’s original work.
C. No, since no protection extends to any discovery, even if expressed, explained, illustrated, or
embodied in a work.
D. Yes, since Y’s article failed to make any attribution to X.

P-13 Samsung invented a cellular phone that can also play digital music or MP3s. It applied for the
issuance of letters patent.
A. The invention is not patentable because it is a combination of old functions which does not produce
a new result.
B. The invention is patentable because it is a new product which is beneficial to the public.
C. The invention is not patentable because Samsung is a foreign corporation and it should file its
application in its home country.
D. The invention is patentable because it combines existing elements, a cellular phone and a digital
music player, and produces a new and useful result, namely, the convenience of having two
gadgets in one.

P-14 Alberto found that the theory of relativity of Einstein is wrong and the correct formula is E=MC/2.
He filed a patent for the same. A relative of Einstein learned of the application and went here to pray
for the denial of the application. Which statement is correct?
A. The application should be denied since the new formula needs to be validated by the science
community
B. The relative of Einstein has no personality to file the petition
C. The application should be denied since the formula has no relevance to any human activity or
solves any problem
D. None of the above

P-15 How is a patent as an intellectual property or right created or protected by law?

A. By invention by the inventor C. By registration with IPO
B. By notarization of the invention D. By experimenting over the invention

P-16 What is the legal term of a patent that gives its owner the exclusive right to use the covered
invention?
A. 20 years B. 10 years C. 15 years D. 25 years

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Right to Patent:
 Belongs to the inventor, his heirs, or assigns
 Joint inventors: the right to patent is owned jointly
 The person who commissions the work shall own the patent, unless otherwise provided in the
contract (Sec. 30.1)
 Invention made by an employee in the course of employment: the patent shall belong to:
 The employee, if the inventive activity is not a part of his regular duties even if the
employee uses the time, facilities and materials of the employer. (see 20, 21)
 The employer, if it is the result of the performance of his regular assigned duties,
o EXCEPTION: if there is an agreement, express or implied, to the contrary (Sec. 30.2)
P-17 Means any person who, at the filing date of application, had the right to the patent
A. Inventor B. Infringer C. Trader D. Proprietor

P-18 To whom does the right to a patent belong?

A. To the inventor
B. Inventor's Heirs
C. To those whom he (inventor) assigned (transferred) the Patent
D. The person who commissioned the work to be patented
E. All of the above

P-19 X is an engineer of a multi-national company. He was able to create an invention while in the
employ of his employer. Which of these statements relative to the patent of X’s invention is
true?
A. X owns the patent if the inventive activity is part of his regularly assigned duties
B. X owns the patent if the inventive activity is not part of his regularly assigned duties and only if he
did not use the time, facilities and materials of the company
C. X owns the patent if the inventive activity is not part of his regularly assigned duties and whether
or not he used the time, facilities and materials of the company
D. X does not own the patent which legally belongs to his employer

P-20 X works as a research computer engineer with the Institute of Computer Technology, a
government agency. When not busy with his work, but during office hours, he developed a software
program for law firms that will allow efficient monitoring of the cases, which software program is not
at all related to his work. Assuming the program is patentable, who has the right over the patent?
A. X
B. Institute of Computer Technology
C. Neither X nor the Institute of Computer Technology can claim patent right over the invention
D. X and the employer of X will jointly have the rights over the patent

P-21 Cherry Mobile Co. commissioned Engr. Reyes to develop a new phone. Engr. Reyes was able to
develop the commissioned phone. Who owns the patent over the new phone?
A. Cherry Mobile Co.
B. Engr. Reyes
C. Generally, Cherry Mobile Co., unless otherwise provided in the contract
D. Generally, Engr. Reyes, unless otherwise provided in the contract

P-22 Samsung Co. employs Engr. Cruz to develop a new phone. Engr. Cruz was able to develop the
phone in the course of performance of his regular duties. Who owns the patent over the new
phone?
A. Samsung Co.
B. Engr. Cruz
C. Generally, Samsung Co. unless otherwise provided in the contract
D. Generally, Engr. Cruz unless otherwise provided in the contract

Here are the exclusive rights of the patent owner/s:

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1. 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
2. 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
3. The right to assign, or transfer by succession the patent, and to conclude licensing
contracts for the same
P-23 Which of the following are within the scope of patentable subject matters?
A. may relate to a useful machine D. a product or process
B. an improvement of a microorganism E. on-biological or microbiological processes
C. all of those mentioned here

Patent Application
Unity of Invention – an application for a patent which relates to one invention only or to a group of
inventions forming a single general inventive concept (Sec. 38, RA 8923)
 First to File Rule (Sec. 29)
 If 2 or more persons have made the invention, the right to the patent belongs 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.
 Filing date – of a patent application shall be the date of receipt by the IP of at least the following
elements: (1) an express or implicit indication that a PH patent is sought, (2) information
identifying the applicant, and (3) description of the invention and one or more claims in Filipino
or English.

P-24 If two or more persons have made an invention separately and independently of each other,
who shall own the right to the patent?
A. The first person who invented the technology
B. The person who filed an application for registration for such invention
C. The first person who mass produced the technology
D. The first person who presented the technology to a convention

P-25 In 2010, N invented the technology of bamboo lamp and was using it already for 3 years. In
2014, O invented the same technology of bamboo lamp. Unlike N, O made an application for
registration with IPO. Who has a better right over the patent of the bamboo lamp technology?
A. N B. O C. Both N and O D. None of them

P-26 If two or more persons have made an invention separately and independently of each other,
who shall own the right to the patent where two or more applications for registration are filed for the
same invention?
A. The applicant who has the earliest filing date or, the earliest priority date
B. The applicant who has the latest filing date or, the latest priority date
C. The first person who invented the technology
D. The first person who presented the technology to a convention

P-27 In 2020, FI invented the technology of soft touch which he registered in the IPO of USA. Three
months later, SI also invented the same technology of soft touch which he registered in the IPO of
Manila. A certified copy of FI’s application in USA was filed two months later before the IPO of Manila.
Who has better right over the patent of the soft touch in so far as the PH jurisdiction is concerned.
A. FI B. SI C. Both FI and SI D. None of them

P-28 How many years is a Patent protected under the law?

A. 15 years B. 7 years C. 20 years D. 5 years

Cancellation of Patents
Grounds (Sec. 61)
 Any interested person may petition to cancel on any of the following grounds:

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a. that 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
Effect of cancellation (Sec. 66) The rights shall be terminated,
 with notice of cancellation published in IPO Gazette unless restraint by Director General
 the decision or order to cancel by Director of Legal Affairs is immediately executory even
pending appeal.
Remedies of Person with patent
APPLICATION BY PERSONS NOT HAVING RIGHT TO PATENT (SEC. 67)
 If a person referred to in Sec. 29 (Relating to the First to File Rule) other than the applicant
 is declared by final court order or decision as having the right to the patent,
 such person may, within 3 months after the decision has become final:
a. Prosecute application as his own in place of applicant
b. File new patent application in respect of the same invention
c. Request that application in respect of the same invention
d. Seek cancellation of patent, if already been issued
REMEDIES OF TRUE AND ACTUAL INVENTOR (SEC. 68)
 When true and actual inventor
 is deprived of patent without his consent or through fraud, and
 so declared by final court order,
 court shall order for his substitution as patentee, or
 at the option of true inventor, cancel the patent, and award actual and other damages in his
favor as warranted.
Time to file: the actions indicated in Secs. 67 and 68 shall be filed within 1 year from date of
publication.

P-29 X filed her patent application before the Bureau of Patents of the IPO on July 1, 200A. Which
of the following statements relative to X’s patent application is true?
A. The application shall be published in the IPO Gazette on January 2, 200C or anytime thereafter
B. Assuming the application is published in the IPO Gazette on June 30, 200C, X shall file a written
request for examination not later than June 30, 200D
 RIGHTS OF PATENTEES AND INFRINGEMENT
RIGHTS CONFERRED BY PATENT (SEC. 71)
a. where patent covers product
 to restrain, prohibit and prevent any authorized person or entity from:
 making, using, offering for sale, selling or importing that product
b. where patent is process
 to restrain, prevent or prohibit any authorized person or entity from:
 using process, and manufacturing, dealing in, using, selling or offering for sale, or
importing any product obtained directly or indirectly form such process
c. to assign, or transfer by succession the patent, and to conclude licensing contracts for the same.
Note: 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. (Sec. 103.1)

P-30 Che Che invented a device that can transform rain into fuel. He asked Guevarra to help him
register it. Guevarra suggested that they form a company and register the same. While the application
is pending, Che Che died. Castro, the estranged husband of Che Che now comes contesting the
application of the corporation and filed his own patent application as the sole surviving heir. Which
statement is true?
A. Castro has a right being the heir of Che Che. It also appears that the corporation is not authorized
to file the application
B. Castro has a right provided it is proven in the estate proceedings of Che Che
C. Castro has no right since the right to the invention retroacts from its filing hence, favors the
corporation
D. Castro has no right since property rights to the invention already passed to the corporation
Assignment of Patent
 may be of entire patent and invention covered thereby, or

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 of an undivided share of entire patent and invention, in which event parties become joint-owners
 may be limited to specified territory. (Sec. 104)
 Form:
 in writing and notarized. (Sec. 105)
 GEN. RULE: shall be void as against any subsequent purchaser or mortgagee without notice,
EXCEPTION: unless recorded in IPO within three (3) months from date of said instrument, or prior
to subsequent purchase or mortgage. (Sec. 106.2)
 Rights of Joint Owners
 Each of them shall be entitled to personally make, use, sell, or import for his own profit.
 GEN. RULE neither of joint owners shall be entitled to grant licenses or to assign his right, title or
interest or part thereof
EXCEPTIONS:
 If made with the consent of other owner or owners
 The proceeds are divided proportionally between them (Sec. 107)

 LIMITATIONS OF PATENTS RIGHTS (SEC. 72)

 Patent owner has no right to prevent 3rd parties from performing, in the following circumstances:
a. using patent product which has been put on Philippine market by owner of product, or with his
express consent, insofar as such use is performed after that product has been so put on the
said market
b. where act is done privately and on a non-commercial scale for a non-commercial purpose
provided that it does not significantly prejudice owner’s economic interests
c. where act consists of making or using exclusively for purpose of experiments that relate to
subject matter of patent invention
d. where act consists of preparation for individual cases, in a pharmacy or by a medical
professional, of a medicine in accordance with a medical prescription or acts concerning
medicine so prepared
e. where invention is used in any ship, vessel, aircraft or land vehicle of any other country
entering Philippine territory temporarily or accidentally
 PRIOR USE ( SEC. 72)
 Any prior user who, in good faith was:
 using the invention or has undertaken serious preparations to use the invention in his
enterprise or businesses,
 before the filing date or priority date of the application on which a patent is granted,
 shall have the right to continue use thereof as envisaged.
Note: The right of prior user may only be transferred or assigned together with enterprise or
business, or with the part of his enterprise or business which use or preparations for use have been
made.

P-31 This defense may be set up by a respondent in an action for patent infringement when the
respondent is 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.
A. Doctrine of fair use C. Doctrine of prior use
B. Doctrine of good faith D. Doctrine of bad faith

P-32 X invented a device which, through the use of noise, can recharge a cellphone battery. He
applied for and was granted a patent on his device, effective within the Philippines. As it turns out, a
year before the grant of X's patent, Y, also an inventor, invented a similar device which he used in his
cellphone business in Manila. But X files an injunctive suit against Y to stop him from using the device
on the ground of patent infringement. Will the suit prosper?
A. No, since the correct remedy for X is a civil action for damages.
B. No, since Y is a prior user in good faith.
C. Yes, since X is the first to register his device for patent registration.
D. Yes, since Y unwittingly used X’s patented invention.

 USE OF INVENTION BY GOVERNMENT (SEC. 74)

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 A government agency or third person authorized by the Government may exploit the invention
even without the agreement of the patent owner:
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.
In sum, a government agency or a third person authorized by the government may exploit
the invention even without the agreement of the patent owner where:
i. 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
ii. a judicial or administrative body has determined that the manner of exploitation, by
the owner of the patent or his licensee is anti-competitive
iii. in the case of drugs and medicines, there is a national emergency or other
circumstance of extreme urgency requiring the use of the invention
iv. In the case of drugs and medicines, there is public non-commercial use of the patent
by the patentee, without satisfactory reason
v. In the case of drugs and medicines, the demand for the patented article in the PH is
not being met to an adequate extent and on reasonable terms, as determined by the
Secretary of the Department of Health
Case:
SB invented and patented a miracle medicine for the cure of AIDS.
Being the sole manufacturer, SB sold the medicine at an exorbitant price.
DOH, because of the sudden prevalence of AIDS cases asked SB for a license to produce and sell
the AIDS medicine to the public at a substantially lower price.
SB, citing the huge costs for R&D refused. Any legal action that DOH may take?

SA: DOH may file a petition for compulsory license with the Director of Legal Affairs of the IPO to
exploit the patented medicine even without the agreement of the patent owner on the ground of
public interest, in particular, health. Once granted, the DOH may then produce and sell the AIDS
medicines for a cheaper price subject to payment of reasonable royalties to SB.

Patent Infringement
 the making, using, offering for sale, selling, or importing:
 a patented product or
 a product obtained directly or indirectly from a patented process, OR
 the use of a patented process without the authorization of the patentee
P-33 It means the unauthorized, replication or use of patented invention or process.
A. Patent laundering C. Patent infringement
B. Patent misappropriation D. Patent destruction
Note: the IPC makes the contributory infringer jointly and severally liable with the infringer. A
contributory infringer is one who induces the infringement of a patent or provides the infringer with a
component of a patented product produced because of a patented invention and not suitable for
substantial non-infringing use.

Tests of Patent Infringement (Q: When is there patent infringement?)

a. Literal infringement test - resort must be had, in the first instance, to the ”words“ of the claim.
If the accused matter clearly falls within the claim, infringement is made out.
b. Doctrine of equivalents test – a device appropriates a prior invention by incorporating its
innovative concept and, although with some modification, performs substantially the same function
in substantially the same way to achieve substantially the same result; it requires the satisfaction
of the function-means-and-result test.
c. Economic interest test– when the process-discoverer’s economic interests are compromised, i.e.,
when others can import the products that result from the process, an act is said to be prohibited.

 Remedies in case of Infringement

1. Action for damages (Sec. 79) (Civil action for Infringement)

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 Prescription: must be filed within 4 years from the knowledge of the act of infringement
 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. 80)
Limitation: 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 times the amount of such actual damages (Sec. 76.4, RA 8293)

P-34 An administrative complaint is issued by filing a verified complaint with the Bureau of Legal
Affairs (BLA) of the Intellectual Property Office within ___ years of the date of the commission of the
violation, or if the date is unknown from the date of discovery of the violation.
A. 5 years C. 10 years E. 4 years
B. 15 years D. Does not prescribe
2. Injunction (Sec. 76)
3. Disposal or destruction by court’s order of infringing goods, materials and implements without
compensation. (Sec. 76)
4. Criminal action for repetition of infringement (Sec. 84)
 Only after finality of judgment in civil action and after repetition of infringement
 If the subject matter of a patent is a process for obtaining a product, the burden of proof is on the
defendant or alleged infringer. 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. (Sec. 78)
 Imprisonment for the period of not less than 6 months but not more than 3 years and/or a fine of
not less than P100k but not more than P300k, at the discretion of the court
 No damages can be recovered for acts of infringement committed more than four (4) years before
the institution of the action for infringement (Sec. 79)
 The criminal action shall prescribe in 3 years from date of the commission of the crime (Sec. 84)
 Such criminal action is without prejudice to the institution of a civil action for damages (Sec. 84,
RA 8293)
P-35 A criminal complaint is issued by filing a verified complaint with the Bureau of Legal Affairs (BLA)
of the Intellectual Property Office within ___ years of the date of the commission of the violation, or if
the date is unknown from the date of discovery of the violation.
A. 3 years C. 10 years E. 4 years
B. 15 years D. Does not prescribe

Defenses in Action for Infringement (Sec. 81)

The defendant may validly show:
a. invalidity of the patent or any claim thereof
b. on any grounds on which a petition for cancellation can be brought
P-36 Which of the following is not a valid defense by the defendant in an action for patent
infringement?
A. The covered invention or technical solution is non-patentable
B. The covered invention or technical solution is part of prior art
C. The respondent is the true owner of the patent and has right of priority in registration
D. The respondent has right of prior use
E. The respondent acted in good faith

LICENSING
1. Compulsory licensing (Secs. 93-102)
 The grant by the Director of Legal Affairs of 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 certain circumstances.
2. Voluntary Licensing (Secs. 85-92)
 the grant by the patent owner to a third person of the right to exploit a patented invention

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Voluntary Licensing Compulsory Licensing

Mandatory Provisions Issuance of a license by the Director General of
1. Jurisdiction of disputes – Philippines the IPO to exploit a patented invention without
2. Venue – principal place of business of patentee the permission of the patent holder, either by
3. Continuous access to improvements in manufacture or through parallel importation
techniques and processes Grounds:
4. If it includes Arbitration – venue; Philippines or 1. National emergency/ circumstances of
other neutral countries, and the following laws extreme urgency
are applicable 2. Public interest so requires
a. the Procedure of Arbitration of the 3. The use of the patent is anti-competitive
Arbitration Law of the PH or 4. Public non-commercial use without
b. the Arbitration Rules of the United Nations satisfactory reasons
Commission of International Trade Law 5. Invention is not being worked in the PH on a
(UNCITRAL) or commercial scale without satisfactory reasons
c. The Rules of Conciliation and Arbitration of (importation counts as working or using)
the International Chamber of Commerce (ICC) 6. Demand for patented drugs and medicine is
5. Taxes – borne by the licensor not being met to an adequate extent and or
reasonable terms, as determined by DOH
P-37 Compulsory Licensing of Inventions which are duly patented may be dispensed with or will be
allowed exploitation even without agreement of the patent owner under certain circumstances, like
national emergency, for reason of public interest, like national security, etc. The person who can
grant such authority is –
A. the Director General of the Intellectual Property Office
B. the Director of Legal Affairs of the Intellectual Property Office
C. the owner of the Patent right
D. any agent of the owner of the Patent right

UTILITY MODEL - An invention qualifies for registration as a utility model if it is new and industrially
applicable.
- the provisions governing patents shall apply, mutatis mutandis, to the registration of utility
models (Sec. 108)
Term - seven years after the date of the filing of the application, without any possibility of renewal
Patent Utility Model (Sec. 108) Industrial Design (Sec. 112)

Refer to either the grant of Models of implement or tools of Any composition of lines or colors or any
rights, or the instrument any industrial product even if three-dimensional form, whether or not
(sometimes called letters of not possessed of the quality of associated with lines or colors provided
patent) containing the grant, invention but which is of that such composition or form gives a
giving an inventor monopoly on “practical utility.” special appearance to and can serve as
the inventor’s invention for a pattern for an industrial product or
limited period. handicraft.
 New  New  New
 Industrially applicable  Industrially applicable  Not industrially applicable
 Involves an inventive step  Does not involve an  Does not involve any inventive step
inventive step
20 years from filing date of 7 years from filing date of 5 years from filing date of application;
application; without renewal application; without renewal renewable twice (sec. 118)
P-38 It refers to a protection option, which is designed to protect innovations that are not sufficiently
inventive to meet the inventive threshold required for standard patents application. It may be any
useful machines, implement, tools, product, composition, process, improvement or part of the same,
that is, of practical utility, novelty, and industrial applicability.
A. Utility model C. Patent
B. Industrial design D. Trademark

P-39 What is the legal term of the registration of a utility model?

A. 20 years B. 7 years C. 10 years D. 50 years

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P-40 It refers to 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. Simply put, it is that aspect of a
useful article which is ornamental or aesthetic.
A. Utility model B. Patent C. Industrial design D. Trademark

P-41 What is the legal term of the registration of an industrial design?

A. 5 years from the filing date of the application, renewable for not more than two (2) consecutive
periods of five (5) years each, by paying the renewal fee
B. 10 years from the filing date of the application, renewable for not more than two (2) consecutive
periods of ten (10) years each, by paying the renewal fee
C. 8 years from the filing date of the application, renewable for not more than two (2) consecutive
periods of eight (8) years each, by paying the renewal fee
D. 20 years from the filing date of the application, renewable for not more than two (2) consecutive
periods of twenty (20) years each, by paying the renewal fee

II The Law on Trademarks, Service Marks and Trade Names

TRADEMARKS, SERVICE MARKS AND TRADE NAMES
 A trademark is a tool used to differentiate services and goods from one another. It can be in the
form of a word or a group of words; a sign, logo, or symbol. It could even be a combination of
those above.
 Essential in marketing products or services, a trademark will help consumers identify the brand
among the many others in the market. To protect business’ trademark, it is advisable to have it
registered.
 Owner of the trademark would have exclusive rights to make use of the mark. Furthermore, it will
ensure that no one else can use the same or even a similar mark for the products or services of a
similar nature.
T-01 What does a trademark protect? (Advantage: stopping competitors from poaching your
customers)
A. an invention B. a work of art C. logos, name and brands D. a secret formula

T-02 It is an intellectual property that refers to any visible sign capable of distinguishing the goods of
an enterprise and shall include a stamped or marked container of goods
A. Distinguishing mark B. Trademark C. Patent D. Copyright

T-03 It is an intellectual property that refers to any visible sign capable of distinguishing services of
an enterprise and shall include a stamped or marked container of services
A. Distinguishing mark B. Service mark C. Patent D. Copyright

Definitions:
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
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
3) “Trade name" means the name or designation identifying or distinguishing an enterprise
Trademark/Service mark Trade Name
Basis of registration Prior use in PH commerce
Ownership
When protected Upon registration A trade name may be protected even
if unregistered
Remedies Owner can avail of administrative, civil, Owner only has civil and
and criminal remedies administrative remedies
Assignment Can be assigned independent of Can only be assigned with the
business business

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Spectrum of Distinctiveness
1. Generic Marks – those which constitute the name of an article or substance; or comprise the
genus of which the particular product is a species of; these must remain in the public domain and
can never be registered as a trademark
Examples: “Sugar” for refined sugar, “Kape” for instant coffee, “Water” for bottled water
2. Descriptive Marks – 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 services, or other characteristics of the goods or services; these are
words that merely describe the product or service or refer to their quality or characteristic; not
entitled to protection and are too weak to function as a trademark
Example: “Yellow Pages” for telephone directory having yellow pages
3. Suggestive Marks – marks that hint or suggest the nature or quality of the good or service
without directly describing it. They are subtly descriptive and are entitled to protection despite lack
of distinctiveness
Example: “Jaguar” for automobile
4. Arbitrary Marks – common words used as marks but are unrelated to the good or service they
represent; they neither describe nor suggest the characteristic of the G/S, though they are
considered highly distinctive for purposes of registration
Example: “Apple” for electronic products
5. Fanciful or Coined Marks – these are invented or coined words that do not have any meaning
and are made solely for the purpose of the mark; considered strong marks for purposes of
registration and protection for being inherently distinctive
Example” “Kodak” for camera
T-04 ______ means any visible sign capable of distinguishing the goods or services of an enterprise
and shall include a stamped or marked container of goods
A. Tradename D. Trademark
B. Mark E. Collective mark
C. Patent

T-05 ______ 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
A. Tradename D. Trademark
B. Mark E. Collective mark
C. Cultural mark

T-06 ______means the name or designation identifying or distinguishing an enterprise

A. Tradename D. Trademark
B. Mark E. Collective mark
C. Business name

T-07 Under the Intellectual Property Law, it is required that you register your business in the
Philippines.
A. True B. False

T-08 The person, whether natural or juridical, who does the business and produces the goods or
services is designated by a trademark.
A. True B. False

T-09 Determine the veracity of the following statements:

S1: "McDonald's" is a tradename; "Jollibee" is also a trade name.
S2: McDonald's Corporation and Jollibee Foods Corporation are legal names.
A. Both true B. Both false C. True, False D. False, True

T-10 How is the right over a trademark, service mark or collective mark created or protected by
law?
A. By its usage of owner
B. By its registration with IPO

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C. By its publication in a newspaper of general circulation

D. By notarization of the mark

T-11 How is the right over a tradename created or protected by law?

A. By its usage of owner
B. By its registration with IPO
C. By its publication in a newspaper of general circulation
D. By its registration with DTI or SEC

T-12 What is the term and life of a trademark? It has a term of ___________ which is subject to
unlimited times of renewal, thus, it has ________ life.
A. 10 years, indefinite C. 5 years, definite
B. 20 years, indefinite D. 15 years, definite

• Registrability – cannot be registered if:

1) 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
2) Consists of the flag or coat of arms or other insignia of the PH or any of its political subdivisions,
or of any foreign nation, or any simulation thereof
3) 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 PH, during
the life of his widow, if any, except by written consent of the widow
4) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier
filing or priority date, in respect of:
a) The same goods or services, or
b) Closely related goods or services, or
c) If it nearly resembles such a mark as to be likely to deceive or cause confusion;
5) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is well-
known internationally and in the PH
6) Is likely to mislead the public, particularly as to the nature, quality, characteristics or
geographical origin of the goods or services
7) Consists exclusively of signs that are generic for the goods or services that they seek to identify
8) 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
9) 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
10) 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
11) Consists of color alone, unless defined by a given form
12) Is contrary to public order or morality
• No registration of a mark in the Philippines by a person shall be granted until such mark
has been registered in the country of origin of the applicant.
 Duration - A certificate of registration shall remain in force for ten (10) years from the filing
date of the application provided the registrant shall file a declaration of actual use within a
year from the 5th anniversary of registration date (Sec. 145). Otherwise, the mark shall be
removed from the Register by the Office
 Renewal - Renewable for another 10 years (Sec. 146). A certificate of registration
may be renewed for periods of ten years at its expiration upon payment of the
prescribed fee and upon filing of a request
• Benefits/ Rights Conferred – (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 the registered
trademark or tradename; (2) Aside from being a source-identifier, differentiator, quality
indicator, and an advertising device, a protective mark may also bring another stream of
income to the owner through licensing or franchising
T-13 Which of the following can be registered as a mark?

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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 with his written
consent
D. Is identical with a registered mark belonging to a different proprietor or a mark with an earlier
filing or priority date

T-14 Which of the following marks may be registered before IPO for protection?
A. Marks consisting exclusively of signs that are generic for the goods or services that they seek to
identify
B. Marks consisting of color only
C. Marks consisting of shapes only
D. Marks consisting of combination of color, shapes, and drawing

T-15 Any visual sign can be registered as a trademark in the PH, such as the following, except –
A. word marks, figurative marks
B. slogans, composite marks
C. color marks, three-dimensional marks, collective marks
D. position marks, hologram marks, motion marks
E. sound marks, touch marks, taste marks

TRADEMARKS TRADE NAME

The goods or services offered by a proprietor or The person (whether natural or juridical) who
an enterprise are designated by trademarks or does the business and produces the goods or
service marks. services is designated by a trade name.
Has an existence separate from the proprietor Attached to the natural or juridical person who
or the juridical person doing business and does business and produces the goods or services.
producing the goods or distinct from the existence
of the services offered by such person or
enterprise.
There is a need to be registered to secure There is no need to register in order to secure
protection for them. protection for them.
T-16 For Trademarks, there is a need to be registered to ensure protection for it but for Tradenames
there is no need to register in order to ensure protection for it.
A. True B. False
 Purpose of Trademark
a. to indicate origin or ownership of articles to which they are attached
b. to guarantee that those articles come up to certain standard of quality
c. to advertise articles they symbolize
T-17 The certificate of Registration of a Mark shall remain in force for the duration of:
A. 10 years C. 20 years E. 5 years
B. 3 years D. 50 years
ACQUISITION OF OWNERSHIP OF MARK (SEC. 122) AND TRADE NAME (SEC. 165)
a. the ownership of a mark is acquired solely through registration made validly in accordance with
the provisions of the IP Code (Zuneca Ruling) Prior use no longer determines the
acquisition of ownership of a mark
b. the ownership of trade name is acquired through adoption and use. Registration is not required.
T-18 The ownership of a trademark is acquired solely through registration.
A. True B. False

T-19 The ownership of a tradename is acquired through adoption and use. Registration is not
required.
A. True B. False

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T-20 Determine the veracity of the following statements:

I. The Philippines follows a first-to-file trademark system. The rights in a trademark are acquired
through registration made validly in accordance with the law. Well-known marks are likewise
protected in the Philippines, even if they are not registered in the Philippines.
II. Jurisprudence provides that it is not the application or registration of a trademark that vests
ownership thereof; instead, it is the ownership of a trademark that confers the right to register
the same. Hence, bad-faith registration is proscribed in the Philippines, as the trademark
applicant must be the true and lawful owner of the mark.
A. Both are true B. Both are false C. Only I is true D. Only II is false

 Infringement (Sec. 155)

 if a registered mark is used in commerce by a person
 without the consent of the registered owner thereof. Such infringement may involve:
a. use in commerce of any reproduction, counterfeit, copy or colorable imitation of the mark or the
same container or a dominant feature thereof in connection with the sale, offering for sale,
distribution or advertising of any goods or services, including other preparatory steps necessary
to carry out the sale of the said goods or services.
b. the reproduction, counterfeit, copying or colorable imitation of the mark or a dominant feature
thereof and the application of such reproduction, etc., to labels, signs, prints packages,
wrappers, receptacles or advertisements intended to be used in commerce in connection with
the sale, etc. of goods, in connection with which such use is likely to cause confusion, mistake
or deception.
There is infringement of trademark when the use of the mark involved would be likely to cause
confusion or mistake in the mind of the public or to deceive purchasers as to the origin or source of
commodity. (Phil Nut Industry, Inc. v. Standard Brands, Inc.)

T-21 It refers to the unauthorized usage by any person of a mark without the consent of the
registrant of the mark. It also pertains to any reproduction, counterfeiting, copying or colorable
imitation of any registered mark or tradename in connection with the sale, offering for sale, or
advertising of any goods, business or services on or in connection with which such use is likely to
cause confusion or mistake or to deceive purchasers or others as to the source or origin of such goods
or services, or identity of such business.
A. Trademark infringement C. Unfair competition
B. Trademark misappropriation D. Unfair theft

Tests of Trademark Infringement

Dominancy Test Holistic Test or Totality Test
Kolin Electronics Co., Inc. vs. Kolin Philippines (abandoned doctrine)
International, Inc. decided last February 9, 2021
focuses not simply on similarities in size, form or considers the mark as a whole and not as
color BUT on the main or essential features of each dissected; focuses on the mark as a totality not
mark taken together. usually to any part of it.

 The test of dominancy requires that if the competing trademark contains the main or essential
features of another and confusion and deception is likely to result infringement takes place. (Asia
Brewery, Inc. v. CA, 224 SCRA 437)
T-22 A test which focuses not simply on similarities on size, form or color but on the main or essential
features of each mark taken together
A. Dominancy Test B. Holistic test C. Colorable imitation D. Idem Sonans test

T-23 The "test of dominancy" in the Law on Trademarks, is a way to determine whether there exists
an infringement of a trademark by –
A. determining if the use of the mark has been dominant in the market
B. focusing on the similarity of the prevalent features of the competing marks which might create
confusion
C. looking at the mark whether they are similar in size, form or color
D. looking at the mark whether there is one specific feature that is dominant

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T-24 A test where it considers the mark as a whole and not as dissected, focuses on the mark as a
totality and not usually to any part of it
A. Dominancy Test B. Holistic test C. Colorable imitation D. Idem Sonans test

SC Ruling in 2021 Kolin Case:

“In determining trademark infringement, we have the dominancy test which focuses on the
similarity of the prevalent features of the competing trademarks which might cause confusion or
deception, and thus infringement. If the competing trademark contains the main, essential or
dominant features of another trademark, and confusion or deception is likely to result, then
infringement takes place. Duplication or imitation, it said, is not necessary nor is it necessary that
the infringing label should suggest and effort to imitate. The question is whether the use of the
trademark involved is likely to cause confusion or mistake in the mind of the public or deceive
purchasers.”

Principle of Related Goods or Services

 There is infringement when there is use of similar marks on goods that are so related that the
public may be, or is actually deceived, and misled that they come from the same maker or
manufacturer. (Esso Standard Eastern, Inc. v CA 116 SCRA 336)
 Goods are related when they belong to the same class or have the same descriptive properties,
when they possess the same physical attributes or essential characteristics with reference to their
form, composition, texture or quality
 they may also be related because they serve the same purpose or are sold in grocery store or they
flow through the same channels of trade. (Esso Standard Eastern, Inc. v CA 116 SCRA 336)
T-25 Determine the veracity of the following statements:
I: Infringement is the use by others without the registrant’s consent of a reproduction or colorable
imitation of his trademark, tradename or service mark with the purpose of causing to mislead or
misleading the public that those goods or services are those of the registrant.
II: The definition of infringement implies that only registered trademarks, trade names and service
marks are protected against infringement or unauthorized use by another or others
A. Both true B. Both false C. True, false D. False, true
Exception
- well- known mark; a junior user of a well-known mark
is precluded from using the same on goods or services entirely unrelated to those specified in the
certificate of registration of the well-known mark (246 Corp. v. Daway 416 SCRA 315)

Well-known marks
- Are protected even without registration
- Nevertheless, when the well-known mark is not registered, its protection is limited, as it only
prevents the registration of confusingly similar marks that are used for identical or similar goods
or services
- Marks which a competent authority (the court, the Director General of IPO, the Director of the
Bureau of Legal Affairs, any administrative agency or office vested with quasi-judicial or judicial
jurisdiction to hear and adjudicate any action to enforce the rights to a mark) of the PH has
designated to be well-known internationally and in the PH

 Idem Sonans Test (similarity of sounds or pronunciations) alone cannot be applied (Amigo Mfg.
vs. Cluett Peabody)
T-26 A test where similarity of sounds or pronunciations of the mark are applied.
A. Dominancy Test B. Holistic test C. Colorable imitation D. Idem Sonans test

Remedies (Secs 156, 157 & 170)

a. Sue for damages
b. Have the infringement goods impounded
c. ask for double damages
d. ask for injunction
e. Have the infringing goods disposed of outside the channels of commerce
f. Have the infringing goods destroyed

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g. File criminal action

h. Administrative sanctions
T-27 The infringer is liable to the following:
S1: An injunction for such infringement.
S2: Pay actual, moral and exemplary damages.
S3: Deliver for impounding of the articles alleged to infringe a copyright.
S4: Deliver for destruction all copies, devices and other means used for making the infringing copies.
Which of the statements above is/are true:
A. S1 B. S2 C. S3 D. S4 E. All of the above

Limitations to Actions for Infringement (Sec. 159)

a. No action for infringement could be taken against a person who, in good faith and before the filing
date or priority date, was using the mark for the purposes of his business or enterprise.
b. Only an injunction against future printing may be imposed upon an innocent infringing printer.
c. Similarly, only an injunction against the presentation of infringing advertising matter in future
issues may be imposed on innocent infringing newspapers and magazines.

Unfair Competition (Sec. 168)

 the use by a person of deception or
 any other means contrary to good faith by which he passes off the goods manufactured by him or
in which he deals, or his business or services, for those of another person who has established
goodwill in the goods of such person manufactures or deals in, or his business or services
 or who shall commit any acts calculated to produce said result
T-28 Refers to the passing off (or palming off) or attempting to pass off upon the public of the goods
or business of one person as the goods or business of another with the end and probable effect of
deceiving the public
A. Trademark infringement C. Unfair competition
B. Trademark misappropriation D. Unfair theft

Some acts of unfair competition are as follows:

a. giving one’s goods the general appearance of goods of another manufacturer
b. inducing the false belief that one is offering the services of another who has identified such
services in the minds of the public
c. making any false statement calculated to discredit the goods, business or services of another
T-29 Mark manufactured rubber shoes under the brand name of Koby. He did not register it but it
became popular. Years later, Nelson manufactured rubber shoes using the same design and color as
Koby but named it as Shak. Mark filed a case against Nelson. Nelson contended that the name Koby is
not protected. Which statement is true?
A. Nelson is not liable since the name is not registered
B. Nelson is liable since the name is already popular
C. Nelson is liable but not for infringement
D. Nelson is not liable because he gave it a different name

Note: Registration of a mark is not necessary for purposes of filing a case of unfair competition or
false designation of origin (Secs. 168.2 and 169 IPC)
Infringement of Trademark Unfair Competition
Broader and more inclusive than TM Infringement
1. As to nature of offense
it is the unauthorized use of a trademark it is the passing off of one’s goods as those of another
2. As to existence of fraudulent intent
fraudulent intent is unnecessary fraudulent intent is essential
3. As to need for registration on mark
General Rule: prior registration of the trademark is registration is not necessary
a prerequisite to the action
Exception: well-known marks
T-30 Which of the following is not a valid defense by the defendant in an action for trademark
infringement?

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A. The mark is non-registrable

B. The respondent is the true owner of the mark
C. The respondent has right of priority in registration
D. The respondent acted in good faith

T-31 Registration of a tradename is not necessary for purposes of filing a case of unfair competition or
false designation of origin.
A. True B. False

T-32 Fraudulent intent is essential in cases of Unfair Competition.

A. True B. False

T-33 Lucky Me registered its trademark, “Ang Sarap Pancit Palabok” with the Intellectual Property
Office. Nissin subsequently introduced its new product, “Ang Sarap Pinoy Ramen”. Lucky Me sued for
trademark infringement.
A. Nissin is not guilty of trademark infringement because the trademark “Ang Sarap” is descriptive,
hence not capable of exclusive appropriation.
B. Nissin is not guilty of trademark infringement because its product, Pinoy Ramen, belongs to a
different category from Lucky Me’s product, Pancit Palabok.
C. Nissin is guilty of trademark infringement because it did not register its trademark “Ang Sarap
Pinoy Ramen”.
D. Nissin is guilty of trademark infringement because the trademark “Ang Sarap” is fanciful and
arbitrary, hence capable of exclusive appropriation.

T-35 Determine the veracity of the following statements:

I: Infringement is the use by others without the registrant’s consent of a reproduction or colorable
imitation of his trademark, tradename or service mark with the purpose of causing to mislead or
misleading the public that those goods or services are those of the registrant.
II: The definition of infringement implies that only registered trademarks, trade names and service
marks are protected against infringement or unauthorized use by another or others.
A. Only I is true B. Only II is true C. Both are true D. Both are false

T-39 To establish trademark infringement, the following elements must be shown: (1) the validity of
the plaintiff’s mark; (2) the plaintiff’s ownership of the mark; and (3) the use of the mark or its
colorable imitation by the alleged infringer results in “likelihood of confusion” Of these, the element of
______________ is the gravamen of trademark infringement.
A. Element no. 1 B. Element No. 2 C. Element No. 3

T-40 Unilevel Corporation asked your legal advice regarding their plan to use a trademark with the
words “SWEET CANDY”. However, there is an existing and registered trademark using the words
“TWEET CANDY”. Which of the following advice is correct?
A. The firm must abandon the plan because another company uses the trademark Tweet Candy and
there is a danger of a suit for infringement. The words Sweet and Tweet is almost similar in sound
and they can confuse or mislead the public.
B. They can use the SWEET CANDY as long as there will be a very different packaging and flavors so
as not to mislead the public.
C. Unilevel is a well-known company and their products are patronized country-wide, they can use the
trademark SWEET CANDY because TWEET CANDY is owned by a small-time company whose
market is within Luzon only.

Note: Even if one fails to establish his exclusive property right to TM (thus no TM infringement), he
may still obtain relief on the ground of his competitor’s unfairness or fraud.
Penalties for infringement, unfair competition, false designation of origin and false description or
representation range from
Imprisonment: two years to five years
Fine: P50,000 to P200,000

III The Law on Copyrights

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COPYRIGHTS
 protection given to the owner of an original work covering literary works, musical pieces, paintings,
and computer programs, among others; legal protection extended to the owner of the rights in an
original work
 the owner of the original work is entitled to economic rights and moral rights. Economic rights
enable the creator to receive profit gains should his works be distributed by third parties. Moral
rights, on the other hand, protect the connection between the creator and his work.
 Once the owner receives the rights to his work, unauthorized third parties are prohibited from
selling or distributing the works, especially for trade purposes.
C-01 Under the Intellectual Property Code, lectures, sermons, addresses or dissertations prepared for
oral delivery, whether or not reduced in writing or other material forms, are regarded as
A. non-original works B. original works C. derivative works D. not subject to protection

C-02 It refers to every production in the literary, scientific, and artistic domain such as books and
other writings, musical works, films, paintings and other works, and computer programs.
A. Original work B. Imitated work C. Counterfeited work D. Copied work

C-03 It is an intellectual property that refers to the legal protection extended to the owner of the
rights in an original work.
A. Trademark B. Copyright C. Tradename D. Patent

Basic principles (Secs. 172.2 & 175)

 works are protected by the sole fact of their creation, irrespective of their mode or form of
expression, as well as their content, quality or purpose.
 protection extends only to the expression of the idea, not to the idea itself or to any procedure,
system, method or operation, concept or principle, discovery, or mere data.
C-04 How is a copyright over original work protected by law?
A. It is created and protected from the moment of creation
B. It is created and protected from the moment of registration with IPO
C. It is created and protected from the moment of notarization
D. It is created and protected from the moment of publication

C-05 The Protection for copyright extends only to the expression of the idea, not the idea itself.
A. True B. False

C-06 What protects the intellectual property created by artists? Ex. songs of BTS or pop music
(Comment: election jingles using music of artists without permission or without paying them royalties
- breaking ______ law)
A. Copyright C. Geographical Indications
B. Patent D. Trademarks
 Principle of Automatic Protection of Copyright
 the enjoyment and exercise of copyright, including moral rights, shall not be the subject of any
formality. (Berne Convention); a system for voluntary registration of works
 such system help solve disputes over ownership or creation, as well as facilitate financial
transactions, sales, and the assignment and/or transfer of rights

Issues: Eligible or not eligible for copyright protection

Literary and artistic works are original intellectual creations in the literary and artistic domain
Derivative works
Works covered by copyright that can be deposited with IPOPHL are, but are not limited to: novels,
poems, plays, reference works, newspapers, advertisements, computer programs, databases, films,
musical compositions, choreography, paintings, drawings, photographs, sculpture, architecture,
maps, and technical drawings

Copyright or economic rights - shall consist of the exclusive right to carry out, authorize or prevent
the following acts:
a) Reproduction of the work or substantial portion of the work

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b) Dramatization, translation, adaptation, abridgment, arrangement or other transformation of the

work
c) The first public distribution of the original and each copy of the work by sale or other forms of
transfer of ownership
d) 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
e) Public display of the original or a copy of the work
f) Public performance of the work
g) Other communication to the public of the work

A copyright protects solely original works of “authorship” enclosed within the following seven
categories:
1. Literary works (including PC programs)
2. Musical works, together with any incidental works
3. Dramatic works, together with any incidental music
4. Pantomimes and dance works
5. Pictorial, graphic and sculptural works
6. Motion photos and different audio-visual works
7. Sound recordings
C-07 Dramatization, translation, adaptation, abridgment, arrangement or other transformation of a
copyrighted work is not prohibited. (these are derivative works which are also protected by copyright)
A. True B. False

Related Rights (Neighboring Rights)

1. Rights of Performers
2. Rights of Producers of Sound Recordings
 Single Equitable Remuneration – the right to be paid a single equitable remuneration by the user to
be shared with the performers equally in the absence of any agreement, when a sound recording
published for commercial purposes, or a reproduction of such sound recording is used directly for
broadcasting or used for other communication to the public or publicly performed with the intention
of making and enhancing profit
3. Rights of Broadcasting Organizations
 Must-Carry Rule – prevents cable television companies from excluding broadcasting organization
especially in those places not reached by signal; also prevents cable television companies from
depriving viewers of far-flung areas the enjoyment of programs available to city viewers

Works are not protected by copyright: No protection shall extend, under this law, to:
a) 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
b) news of the day and other miscellaneous facts having the character of mere items of press
information
Bar: News reports are not copyrightable. T/F
SA: True. These are unprotected subject matter therefore not copyrightable.
c) any official text of a legislative, administrative or legal nature, as well as any official translation
thereof
ex. Philippine Financial Reporting Standards and PH Standards on Auditing, TRAIN Law,
Jurisprudence involving decisions of the Supreme Court
d) Works of the government – 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
e) Works of the public domain
Rationale behind no protection: insufficient authorship, work of importance to public interest

General Rule: No copyright shall subsist in any work of the government.

Exceptions:
(1) When copyright is transferred by assignment or bequest in favor of the government

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(2) Author of speeches, lectures, sermons, addresses and dissertations shall have exclusive right
of making a collection of his work. However, prior approval of the government agency or the
office wherein the work is created shall be necessary for the exploitation of such work for
profit.

Works of the Public Domain

1. Works, whose term of copyright has expired
2. Works wherein the C over them are waived by the owner in favor of the public
3. Works which did not enjoy C protection in the first place, as in the case of unregistered works
made under previous laws that required the registration of C

Denicola Test (Conceptual Separability – Aesthetics vs Functionality)

- The work cannot be copyrighted if its design elements reflect a merger of aesthetic and functional
considerations, and the artistic aspects of the work cannot be conceptually separable from the
utilitarian aspects
- Conceptual separability exists where design elements can be identified as reflecting the designer’s
artistic judgment, exercised independently of functional influences

C-08 Any official text of a legislative, administrative or legal nature, as well as any official translation
thereof can be protected through a Copyright.
A. True B. False

C-09 One of these CAN be copyrighted. Which is it?

A. An idea, procedure, system, method or operation, concept, principle, discovery or mere data as
such
B. Collection of speeches delivered by a Senator in the Senate compiled by him / speech of a senator
C. News of the day and other miscellaneous facts which constitute press information
D. Official text of a legislative, administrative of legal nature, as well as any official translation of them

C-10 One of these CANNOT be copyrighted. Which is it?

A. Works of drawing, painting, architecture, sculpture, engraving, or other works of art
B. Original ornamental designs or models for articles of manufacture
C. Sportswear
D. Illustrations, maps, plans, sketches, charts and three- dimensional works relative to geography,
topography, architecture or science

C-11 Which of the following works are protected and can be copyrighted?
A. A biography containing your life, love and success
B. Your musical compositions with or without words
C. News of the day and other facts having the character of mere press information
D. Any work of the Government of the Philippines
E. A and B only
C-12 Which of the following works is not copyrightable?
A. Any official text of a legislative, administrative or legal nature, as well as any official translation
thereof
B. Computer programs
C. Drawings or plastic works of a scientific or technical character
D. Lectures, sermons, addresses, dissertations prepared for oral delivery, whether or not reduced in
writing or other material form
E. Musical compositions, with or without words/lyrics

ACTIVITY: TRUE or FALSE Exercise – Part 1:

1. News footages are subject to copyright.
2. The format or mechanics of a TV show is not copyrightable.
3. A compilation is not copyrightable per se.
4. A person to be entitled to copyright must be the original creator of the work.
5. Ownership of copyrighted material is shown by proof of originality and copyrightability.

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6. Valid copyright ownership denotes originality of the copyrighted material.

7. 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.

Rights Management Information

- Means information which identifies the work, sound recording or performance, the author of the
work, producer of the sound recording or performer of the performance; the owner of any right
in the work, sound recording or information about the terms and conditions of the use of the
work, sound recording or performance; and any number or code that represent such information
when any of these terms is attached to a copy of the works, sound recording or fixation or
performance or appears in conjunction with the communication to the public of a work, sound
recording or performance (Sec. 171.3, RA 10372)

Rights of an Author - exclusive right to use or authorize others to use the work on agreed
terms
1. Economic rights (Sec. 177)
a. right to reproduce
b. right to create derivative works (Note that the derivative works have their own copyright
independent of the original work)
c. right to first public distribution or first sale
d. right to rent out
e. right to public display
f. right to public performance
g. right to other communication of the work to the public
The right holder(s) of a work can authorize or prohibit – its reproduction in all forms, including print
form and sound recording, public performance and communication to the public, broadcasting,
translation into other languages, and adaptation, such as from a novel to a screenplay for a film

Right to Transfer, Assign or License

- the author has the right to assign or license the copyright and/or the material object in whole or in
part, and they allow the owner to derive financial reward from the use of his works by others (Sec.
180.1, RA 8293 as amended by RA 10372)
C-13 The right to publicly display a copyrighted work is___
A. Economic Right D. Moral Right
B. Droit de Suite E. Human right
C. International right

C-14 It refers to a type of right provided by a copyright which enables the creator to obtain
remuneration from the exploitation of his works by third parties
A. Economic rights C. Moral rights
B. Material rights D. Intellectual rights

C-15 One of these is NOT included in the exclusive economic rights of an owner of a copyright. Which
is it?
A. Reproduction of the work or substantial party of the works
B. Dramatization, translation, adaptation, abridgment, arrangement, or other transformation of the
work
C. Reproduction of a chapter of a work for purposes of research
D. The first public distribution of the original and each copy of the work by sale or other forms of
transfer of ownership

2. Moral Rights (Sec. 193)

a. right to attribution or paternity right
b. right to alteration or non-publication
c. right to preservation of integrity

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d. right not to be identified with work of others or with distorted work

C-16 The right to preserve the integrity of a copyrighted work is___
A. Economic Right D. Moral Right
B. Droit de Suite E. Human right
C. International right

C-17 It refers to a type of right provided by a copyright which makes it possible for the creator to
undertake measures to maintain and protect the personal connection between himself and the work
A. Economic rights C. Moral rights
B. Material rights D. Intellectual rights

C-18 Which of the following is not an example of moral rights granted by a copyright to the creator of
original work?
A. Right of attribution
B. Right of alteration
C. Right of integrity by objecting to any prejudicial distortion
D. Right to restrain the use of his name
E. Right to rental income

C-19 Apart from economic rights, the author of a copyright also has moral rights which he may
transfer by way of assignment. The term of these moral rights shall last
A. during the author's lifetime and for 50 years after his death
B. forever
C. 50 years from the time the author created his work
D. during the author's lifetime
 These rights are distinct from economic rights and remain with the author even after he has
transferred or assigned to others “other rights of copyright. (WIPO, 215)
 Term of moral right: lifetime of the author and 50 years after his death. Moral right not
assignable or subject to license. (Sec. 198)
Waiver of moral right:
a. by a written instrument (Sec. 195)
b. by contribution to a collective work unless expressly reserved. (Sec. 196)

3. Droit de suite (Sec. 200)

 The right to participate in the gross proceeds of the sale or lease of the original work.
 Rights to proceed on subsequent transfers; aka follow-up rights
 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 of lease to
the extent of five percent (5%). (Sec. 200, RA 8293)
 Duration of the right – during the lifetime of the author and for 50 years after his death
 Does not cover prints, etchings, engravings, works of applied art, or works of similar kind
wherein the author primarily derives gain from the proceeds of reproductions
C-20 The right to participate in the gross proceeds of the sale or lease of the original work is
A. Economic Right D. Moral Right
B. Droit de Suite E. Human right
C. International right

 PUBLISHER’S RIGHTS
The right to publish granted by the author, his heirs, or assigns
The publisher shall have a copyright consisting merely of the right of reproduction of the
typographical arrangement of the published edition of the work. (Sec. 174)
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. (Sec. 180.3)
C-21 A publisher shall have the copyright over the work of the author and also the right to the
publication of the work.
A. True B. False

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Owner of the rights to a copyright if:

The work is literary and artistic:
1) In the case of original literary and artistic works, copyright shall belong to the author of
the work.
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.
3) If, a work of joint authorship consists of parts that can be used separately and the author
of each part can be identified,
4) the author of each part shall be the original owner of the copyright in the part that he has
created.
Pursuant to a commission:
5) In the case of a work commissioned by a person other than an employer of the author
and who pays for it and the work is made in pursuance of the commission, the person
who so commissioned the work shall have ownership of the work,
but the copyright thereto shall remain with the creator,
unless there is a written stipulation to the contrary
The work is an audiovisual like movies:
6) 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.
C-22 Determine the veracity of the following statements:
I. In the case of a work-commissioned by a person other than an employer of an 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.
II. 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 adopted.
A. Only 1 is true C. Only II is true
B. Both are true D. Both are false

C-23 Ely commissioned Marcus, a renowned artist, to paint a mural in the lobby of his newly
renovated building located at Binondo, for the sum of P2M. Later on, an infringement case was filed
by Marcus against Ray. Ray contended that Marcus has no right to file the case. Rule.
A. Marcus has a right provided he obtains the consent of Ely being as the owner of the painting
B. Marcus has a right since he owns the copyright to the painting, being its creator
C. Marcus has no right since he Ely owns the painting
D. Marcus has no right because he has no interest to the painting

C-24 In the case above, supposed Ray presented as evidence the contract of Ely and Marcus with a
stipulation that the copyright will be owned by Ely. Which statement is true?
A. The stipulation is not valid since it is contrary to public policy and good custom
B. The stipulation effectively puts the ownership of the copyright to Ely
C. The stipulation is immaterial since no copyright was registered for the painting
D. Ray cannot use the stipulation since he was not a party thereof

C-25 Rose commissioned Jack to paint her nude body. Who owns the painting of the nude body
of Rose?
A. Jack C. Rose
B. Both Jack and Rose D. Neither Jack nor Rose

C-26 The author is an employee Rose commissioned Jack to paint her nude body. Who owns the
copyright over the painting of the nude body of Rose?
A. Jack C. Rose
B. Both Jack and Rose D. Neither Jack nor Rose
13) In the case of work created by an author during and in the course of his employment, the
rules stated on patent above apply.

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C-27 Jane is an employed scriptwriter of ABS CBN Co. As part of her regularly assigned duties, she
was able to write the script of the move One More Chance. Who own the copyright over the
script?
A. Generally Jane in the absence of express or implied agreement to the contrary
B. Generally ABS CBN Co. in the absence of express or implied agreement to the contrary
C. Jane only
D. ABS CBN only

C-28 Chris is an employed reporter of GMA 7. During his breaktime, Chris was able to write a novel
titled True Love using the laptop and printer of GMA7. Who owns the copyright over the novel?
A. Generally Chris in the absence of express or implied agreement to the contrary
B. Generally GMA7 in the absence of express or implied agreement to the contrary
C. Chris
D. GMA7

C-29 In case of work created by an author during and in the course of his employment, the copyright
shall belong to:
I. The employer, 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.
II. The employee, 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.
A. Only 1 is true B. Only II is true C. Both are true D. Both are false

Owner of the rights to a letter sent to someone

In respect of letters, the copyright shall belong to the writer subject to the provisions of
Article 723 of the Civil Code. Under this provision, letters and other private communications in
writing are owned by the person to whom they are addressed and delivered, but they cannot be
published or disseminated without the consent of the writer or his heirs. However, the court may
authorize their publication or dissemination if the public good or the interest of justice so requires.
C-30 T, an associate attorney in XYZ Law Office, wrote a newspaper publisher a letter disputing a
columnist’s claim about an incident in the attorney’s family. T used the law firm’s letterhead and its
computer in preparing the letter. T also requested the firm’s messenger to deliver the letter to the
publisher. Who owns the copyright to the letter?
A. T, since he is the original creator of the contents of the letter.
B. Both T and the publisher, one wrote the letter to the other who has possession of it.
C. The law office since T was an employee and he wrote it on the firm’s letterhead.
D. The publisher to whom the letter was sent.
 Term of copyright (Sec. 213):
a. In general - lifetime of the creator and for 50 years after his death
b. In case of joint ownership - lifetime of last surviving co-creator and for 50 years after his death
c. In case of anonymous or pseudonymous works - 50 years after the date of their first publication
Except where, before the expiration of said period, the author’s identity is revealed or is no
longer in doubt, (a) and (b) shall apply
d. In case of works of applied art - 25 years from the date of making.
e. In case of photographic works - 50 years from the publication of the work, or from making the
same term is given to audiovisual works produced by photography or analogous processes.
f. In case of newspaper article - lifetime of the author and fifty years thereafter. However, relative to
newspapers and periodicals, Sec. 175 denies copyright protection to "news of the day and other
miscellaneous facts having the character of mere items of press information." A pure news report
will no longer find protection under the new law, BUT a column or published comment will. When
newspapers and periodicals include works enjoying independent copyrights, the works so included
continue enjoying the rights for a duration proper to them.
Calculation: The term of protection shall be counted from the first day of January of the year following
the death or of last publication. (Sec. 214)

C-31 In general, what is the duration for copyright protection?

A. through the lifetime of the last surviving co-creator and from 50 years after his death
B. through the lifetime of the creator and for 50 years after his death

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C. in case of anonymous works, 50 years after the date of its first publication
D. through the lifetime of its last surviving co-creator and for 50 years after his death
E. 50 years

C-32 Reproduction of books by Xerox or photocopying is a violation of the Copyright Law?

A. No, it is being tolerated anyway.
B. No, because there is no law that prohibits it.
C. No, because it is economical.
D. Yes, because it deprives the author of his royalties.
E. Yes, because the operator of the Xerox Machine does not pay his income tax.

C-33 It consists of unauthorized use of original work without proper consent and attribution to the
owner of the original work.
A. Plagiarism C. Infringement of copyright
B. Misappropriation of copyright D. Protection of copyright
LIMITATIONS OF COPYRIGHT (SEC. 184)
The following shall not constitute infringement of copyright:
a. 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
b. making of quotations from a published work if they are compatible with fair use, provided that
the source and the name of the author, if appearing on the work, are mentioned
c. 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 given
d. 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
e. 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 the name of the author are mentioned
f. recording made in schools, universities, or educational institutions, provided that such
recording must be deleted within a reasonable period after they were first broadcast
g. making of ephemeral recordings by a broadcasting organization by means of its own facilities
and for use in its own broadcast
h. use made 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. public performance or 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
j. public display of the original or a copy of the work not made by means of film, slide, television
image or otherwise on screen or by means of any other device or process, provided that either
the work has been published, or, that the original or the copy displayed has been sold, given
away or otherwise transferred to another person by the author or his successor in title
k. use made for the purpose of any judicial proceedings or for giving or professional advice be
legal practitioner

COLLECTIVE MANAGEMENT ORGANIZATION (CMO)

o Entity composed of artists, writers, composers and other creators, or copyright/related rights
holders that manage the bundle of copyrights that their members own by providing the legal
platform to efficiently enforce their IP rights.
o the owners of copyright and related rights or their heirs may designate a society of artists, writers,
composers, and other right-holders to collectively manage their economic or moral rights on their
behalf. For the said CMO to enforce the rights of its members, it shall first secure the necessary
accreditation from the IPO
o the primary purpose of a CMO is to collectively manage copyright and/or related rights

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FAIR USE OF COPYRIGHT WORK (SEC. 185)

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.
Fair Use is the limitation to the prerogative granted by copyright law to the author on an ingenious
work. Samples of such embrace statement, search engines, criticism, news coverage, research,
teaching, library archiving and scholarship.

What is the Doctrine of Fair Use?

The fair use of copyrighted work for criticism, news reporting, teaching (including multiple copies
for classroom use), research and similar purposes is not an infringement of copyright.

Case:
V was a composer of Ilocano songs
P was a music professor in a local university with special focus on indigenous music.
P purchased a CD of V’s works. She copied the CD and sent the 2nd copy to her Music class with
instructions for the class to listen to the music and analyze the works of V. Did P infringe V’s
copyright?
Suggested Answer: No. The fair use of a copyrighted work for criticism, comment, news reporting,
teaching including limited number of copies for classroom use, scholarship, research and similar
purposes is not an infringement of copyright.

C-34 Refers to the defense in a suit in copyright infringement which pertains to a privilege to use the
copyrighted material in a reasonable manner without the consent of the copyright owner or as copying
the theme or ideas rather than their expression. It is an exception to the copyright owner’s monopoly
of the use of the work to avoid stifling the very creativity which that law is designed to foster
A. Doctrine of Fair Use C. Doctrine of Unfair Use
B. Doctrine of Inappropriate Use D. Doctrine of Authorized Use
Factors determining Fair Use
a. purpose and character of use; including whether such use is of a commercial nature or is for
non-profit educational purposes
b. nature of copyrighted work
c. amount and substantiality of the portion used in relation toot the copyrighted work as a whole
d. effect of use upon the potential market for or value of the copyrighted work
Note: 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.
C-35 Is the reproduction of copyrighted material for personal purposes punishable by this law?
Answer 1: No. Infringement in this context refers to the economic rights of the copyright owner. So, if
you transfer music from a lawfully acquired CD into a computer, then download it to a portable
device for personal use, then you did not commit infringement.
Answer 2: No, but if, for example, you make multiple copies of the CD to sell, then infringement
occurs.”
A. Both are true B. Both are false C. Only I is true D. Only II is false

C-36 The public performance or communication to the public of a work, for educational purposes shall
constitute infringement of copyright
A. True B. False

C-37 L, a first-year law student of UL, photocopied some pages of the Criminal Law book authored by
Atty. Estrada. Atty. ABC, his professor in Criminal Law 1, saw the photocopies during one of their
classes. He scolded L for not buying the original book and told him that he violated the copyright law
and maybe penalized. Is Atty. ABC correct?
A. Yes, because the book was photocopied without the consent of the author and used publicly in a
classroom.
B. No, because 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.

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C. No, because L reproduced a single copy only, exclusively for his private study and he did not gain
any profit for photocopying some of the pages of the book.
D. No, because he did not reproduce the whole book but only some of its pages, it can be permitted
even without the consent of the owner of the copyright.

C-38 One of these statements is NOT correct. Which is it?

A. Infringement consists in the doing by any person without the consent of the owner of the copyright
of anything the sole right to do which is conferred by statute on the owner of the copyright.
B. A distributor of software who was authorized to produce only one copy for each customer who
made additional copies to be used for other purposes is liable for infringement.
C. The copying of 88 percent of the words in dictionary of a previous author is infringement.
D. A photographer who photographed the same scenic spots shown in postcards and used a different
arrangement and composition is liable for infringement.

Plagiarism – is copying or closely imitating the work of another author, composer, etc. while no
permission and with the intention of passing the results of as original

C-39 Kris Aquino commissioned Magaling to write a biography of her late father, Ninoy Aquino, for a
fee. Upon completion of the work, Kris paid Magaling the agreed price. The biography was
copyrighted. Kris, however, changed her mind again upon reading the book and decided not to have
it published. Can Kris Aquino sell the property without the consent of Magaling?
A. Yes, Kris Aquino can sell the copyrighted biography of her father without need of securing the
consent of Magaling, the writer of said biography.
B. Magaling entered into a contract with Kris Aquino and having compensated, he had parted with all
his rights to the said book, in effect making Kris his assignee.
C. The assignee’s rights include the right to sell the work without the consent of the writer, Magaling.
D. None of the above
E. A, B and C

C-40 Atty. Ana wrote a legal opinion for a client on the differences of a probationary, regular, casual
and seasonal employee. She quoted without permission Atty. Ben Kato’s comment appearing in his
book “Annotations on the Labor Code”, but she indicated the source of the quotation, the book and the
author’s name. Atty. Kato is a labor law expert. Can Atty. Kato hold Atty. Ana liable for
infringement of copyright for quoting a portion of his book without his permission?
A. Yes, because Atty. Ana copied somebody else’s work without the original author’s consent.
B. No, because the Intellectual Property Code provides that a quotation from a copyrighted work can
be used for judicial proceedings or for giving professorial advice by legal practitioner, provided the
source are identified.
C. Yes, because Atty. Ana used the work of another for her own gain.
D. No, because everybody can quote somebody as long as the source and the name of the author of
the quotation are identified.

C-41 The Sogod Hotel chain reproduces DVD’s, distributes the copies thereof to its hotels and makes
them available to hotel guests for viewing in the hotel guest rooms and charges a separate fee for the
use of the DVD players. Is Sogod Hotel liable for infringement?
A. No, the DVD viewing is done privately in the hotel guest rooms.
B. Yes, because the reproduction of the DVD’s violates the copyright or economic rights of the owner
of the film. The hotel charge fees for the use of DVD player as well as there are room charges, they
earn gain from the use of the DVD because it entices the guests to check-in in their hotel.
C. No, the DVD viewing is part of the hotel services and it is the use of the DVD players that is
charged and not the cost of the DVD.

C-42 Rico is a laptop repair technician. A defective laptop was sold to him. He was able to fix. In its
hard drive, he found a program which he used to develop FACELOOK. Later, Bob filed an action for
damages on account of an infringement of copyright on the program which he owns. Rico raised as a
defense that he was unaware that what he used was a copyrighted material. Which statement is
correct?

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A. The defense is not valid. It is immaterial whether the infringer was aware or not that the material
he copied has a copyright.
B. The defense is not valid since there was bad faith when he copied the program considering that the
laptop was only sold to him
C. The defense is valid since the computer program is an invention hence, not covered by a copyright
D. The defense is valid. Good faith can be used in this case since the laptop is already beyond repair
when it was sold to him.

C-43 Poalo and Sam are famous personalities who kept a secret love affair. They used a special
instant messaging service which allows them to see one another’s typing on their screen as each letter
is pressed. When KC, the controller of the service facility, found out their identities, she kept a copy
of all the messages and later published them. Is KC liable for copyright infringement?
A. No, the letters are not in the form required by law to be protected by copyright
B. No, there is no artistic or literary work in the letters published
C. Yes, the law does not distinguish if the letters are handwritten or in electronic form
D. Yes, provided the electronic data is authenticated

C-44 X's painting of Madonna and Child was used by her mother to print some personalized gift
wrapper. As part of her mother's efforts to raise funds for Bantay Bata, the mother of X sold the
wrapper to friends. Y, an entrepreneur, liked the painting in the wrapper and made many copies and
sold the same through National Bookstore. Which statement is most accurate?
A. Y can use the painting for his use because this is not a copyrightable material.
B. X can sue Y for infringement because artistic works are protected from moment of creation.
C. Works of art need to be copyrighted also to get protection under the law.
D. Y can use the drawing even though not copyrighted because it is already a public property having
been published already.

What are the distinctions between trademark infringement of trademark and unfair
competition?
INFRINGEMENT UNFAIR COMPETITION

It is the unauthorized use of a trademark. It is the passing off of one’s goods as those of
another.
Fraudulent intent is unnecessary. Fraudulent intent is essential.
Prior registration of the trademark is a prerequisite Registration of the trademark is not necessary.
to an action for infringement.

C-45 What is the name of the copyright licenses that provide a finer designation than "all rights
reserved" and "public domain"?
A. Creative Commons
B. CLOUD (Clarifying Lawful Overseas Use of Data)
C. www (world wide web)
D. Blockchain

C-46 A graduate student of the university submitted a photograph as his own and won a contest. The
photograph was copyrighted by Children at Risk Foundation. What issue can be found here?
A. Copyright D. Plagiarism
B. Digital Divide E. Computer Addiction
C. Cyber Bullying

What is the term of protection of copyright?

Type of Work Term
Single Creation Lifetime of the creator and for 50 years after
his death.
Joint Creation Lifetime of the last surviving co‐creator and
for 50 years after his death.

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Anonymous or pseudonymous work 50 years after the date of their first publication; except
where before the expiration of said period, the author’s
identity is revealed or is no longer in doubt, the 1st two
mentioned rules shall apply; or if unpublished, 50 years
from their making.
Work of an applied art of an artistic creation with 25 years from the time of the making.
utilitarian functions or incorporated in a useful
article whether made by hand or produced on an
industrial scale
Audio‐visual works including those produced by 50 years from date of publication and, if
process analogous to photography or any unpublished, from the date of making.
process for making audio‐ visual recordings
Newspaper Article Lifetime of the author and 50 years after [Sec.
213, IPC].

What is the duration of a certificate of trademark registration?

A certificate of trademark registration has a term of 10 years, renewable for a period of another 10
years. Each request for renewal must be made within 6 months before or after the expiration of the
registration.
What is the duration of a patent, utility model and industrial design?
Type of Work Term
Patent 20 years from date of filing of application without renewal
Utility Model 7 years from the filing date of the application without renewal
Industrial Design 5 years from the filing date of the application, renewable for not
more than two (2) consecutive periods of five (5) years each

C-46 Determine the veracity of the following statements:

Application 1: Patent for the treatment of the human body by therapy.
Application 2: Trademark for the signature of Ex-President Ferdinand Marcos with the consent of now
Pres. Ferdinand Marcos, Jr.
Application 3: Copyright for a computer program invented by a professor.
Which should be approved?
A. Application 1
B. Application 2
C. Application 3

Additional Notes:
1. The IPO examination is made only upon request (possibly without examination)
2. Publication is effected after 18 months from filing date or priority date (patents)
3. The penalties range for repetition of infringement: fine of P100k to P300k and / or 6 months to 3
years of imprisonment and the offense prescribes in 3 years (patent law)
4. The element of use has been eliminated as a requirement for application under trademark law
5. Proof of use should be filed within 3 years from filing of the application is required and the affidavit
of use should be filed within one year from the 5th anniversary (trademark law)
6. The penalties range for infringement, unfair competition, false designation of origin and false
description or representation is fine of P50,000 to P200,000 and/or 2 years to 5 years of
imprisonment (trademark law)
7. Copyright law: It is required that after the first public dissemination of performance by authority of
the copyright owner of certain specified work, 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
8. Scheme of Penalties for Copyright infringement:
a. For first offenders – fine of P50k to P150k and/or imprisonment of 1 to 3 years
b. For second offenders – fine of P150k to P500k and/or imprisonment of 3 years and one day to
6 years

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c. For third and subsequent offenders – fine of P500k to P1.5million and/or imprisonment of 6
years and one day to 9 years
d. In case of insolvency, the offender shall furthermore suffer subsidiary imprisonment
9. Same scheme of penalties as seen in 8 for any person infringing or aiding or abetting such
infringement

/bcmendoza102023

Module 6 IPL AE 312 First Sem AY 2023-2024