GENERAL OVERVIEW OF THE

PHILIPPINE INTELLECTUAL PROPERTY LAW

Republic Act No. 8293 [An Act Prescribing the Intellectual Property Code and Establishing the Intellectual Property Office, Providing for Its Powers and Functions, and for Other Purposes] otherwise known as the Intellectual Property Code of the Philippines.

   
The State recognizes that an effective intellectual and industrial property system is vital to the development of domestic and creative activity, facilitates transfer of technology, attracts foreign investments, and ensures market access for our products. It shall protect and secure the exclusive rights of scientists, inventors, artists and other gifted citizens to their intellectual property and creations, particularly when beneficial to the people, for such periods as provided in this Act.
    
The use of intellectual property bears a social function. To this end, the State shall promote the diffusion of knowledge and information for the promotion of national development and progress and the common good.
It is also the policy of the State to streamline administrative procedures of registering patents, trademarks and copyright, to liberalize the registration on the transfer of technology, and to enhance the enforcement of intellectual property rights in the Philippines.

Effect on international conventions and on principle of reciprocity:
Any person who is a national or who is domiciled or has a real and effective industrial establishment in a country which is a party to any convention, treaty or agreement relating to intellectual property rights or the repression of unfair competition, to which the Philippines is also a party, or extends reciprocal rights to nationals of the Philippines by law, shall be entitled to benefits to the extent necessary to give effect to any provision of such convention, treaty or reciprocal law, in addition to the rights to which any owner of an intellectual property right is otherwise entitled by this Act.
   

Republic Act No. 8293 repealed all Acts and parts of Acts inconsistent therewith, more particularly:

    
1. Republic Act No. 165, as amended [An Act Creating a Patent Office, Prescribing its Powers and Duties, Regulating the Issuance of Patents, and Appropriating Funds Therefore];
   
2. Republic Act No. 166, as amended [An Act to Provide for the Registration and Protection of Trademarks, Trade-Names, and Service-Marks, Defining Unfair Competition and False Marking and Providing Remedies Against the Same, and for Other Purposes].
   
3. Presidential Decree No. 49 [Decree on the Protection of Intellectual Property];
   
4. Presidential Decree No. 285, as amended [Decree on the Protection of Intellectual Property];
   
5. Articles 188 and 189 of the Revised Penal Code of the Philippines.
   

    
The Intellectual Property Code of the Philippines is divided into five [5] parts, to wit:
PART I - The Intellectual Property Office
PART II - The Law on Patents
PART III - The Law on Trademarks, Service Marks and Trade Names
PART IV - The Law on Copyright
PART V - Final Provisions
  

The intellectual property rights under the Intellectual Property Code are as follows:
1. Copyright and related rights;
2. Trademarks and service marks;
3. Geographic indications;
4. Industrial designs;
5. Patents;
6. Layout designs [topographies] of integrated circuits; and
7. Protection of undisclosed information.
   

    
The agency of the government in charge of the implementation of the Intellectual Property Code is the Intellectual Property Office which replaced the Bureau of Patents, Trademarks and Technology Transfer. It is divided into six [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 Personnel Services Bureau.
      
     

   
The Intellectual Property Office is mandated under the law to:
  

1. Examine applications for the grant of letters patent for inventions and register utility models and industrial designs;
  
2. Examine applications for the registration of marks, geographic indication and integrated circuits;
   
3. Register technology transfer arrangements and settle disputes involving technology transfer payments covered by the provisions of Part II, Chapter IX on Voluntary Licensing and develop and implement strategies to promote and facilitate technology transfer;
   
4. Promote the use of patent information as a tool for technology development;
   
5. Publish regularly in its own publication the patents, marks, utility models and industrial designs, issued and approved, and the technology transfer arrangements registered;
   
6. Administratively adjudicate contested proceedings affecting intellectual property rights; and
  
7. Coordinate with other government agencies and the private sector efforts to formulate and implement plans and policies to strengthen the protection of intellectual property rights in the country.
   
   

   
1. A shift was made from the "first-to-invent system" under R. A. 165 [old law] to "first-to-file system" under the new law.
   
2. In the case of inventions, the period of the grant was increased from 17 years from grant under the old law to 20 years from date of filing under the new law.
   
3. In the case of utility models, the previous grant of 5 years plus renewals of 5 years each under the old law was changed to 7 years without renewal under the new law.

4. In the case of industrial designs, the previous grant of 5 years plus renewals of 5 years each was maintained.
   
5. Under the old law, there was no opposition proceedings and the examination is mandatory; under the new law, the examination is made only upon request [possibly with or without examination].
   
6. Under the old law, publication is made after the grant; under the new law, publication is effected after 18 months from filing date or priority date.
   
7. Under the old law, the penalties for repetition of infringement are: PhP10,000 and/or 5 years of imprisonment and the offense prescribes in 2 years; under the present law, the penalties range from PhP100,000 to PhP300,000 and/or 6 months to 3 years of imprisonment and the offense prescribes in 3 years.

Sec. 216. Remedies for Infringement. -

216.1. Any person infringing a right protected under this law shall be liable:

(a) To an injunction restraining such infringement. The court may also order the defendant to desist from an infringement, among others, to prevent the entry into the channels of commerce of imported goods that involve an infringement, immediately after customs clearance of such goods.

(b) Pay to the copyright proprietor or his assigns or heirs such actual damages, including legal costs and other expenses, as he may have incurred due to the infringement as well as the profits the infringer may have made due to such infringement, and in proving profits the plaintiff shall be required to prove sales only and the defendant shall be required to prove every element of cost which he claims, or, in lieu of actual damages and profits, such damages which to the court shall appear to be just and shall not be regarded as penalty.

(c) Deliver under oath, for impounding during the pendency of the action, upon such terms and conditions as the court may prescribe, sales invoices and other documents evidencing sales, all articles and their packaging alleged to infringe a copyright and implements for making them.

(d) Deliver under oath for destruction without any compensation all infringing copies or devices, as well as all plates, molds, or other means for making such infringing copies as the court may order.

(e) Such other terms and conditions, including the payment of moral and exemplary damages, which the court may deem proper, wise and equitable and the destruction of infringing copies of the work even in the event of acquittal in a criminal case.

216. 2. In an infringement action, the court shall also have the power to order the seizure and impounding of any article which may serve as evidence in the court proceedings. (Sec. 28, P. D. No. 49a)

217.1. Any person infringing any right secured by provisions of Part IV of this Act or aiding or abetting such infringement shall be guilty of a crime punishable by:

(a) Imprisonment of one (1) year to three (3) years plus a fine ranging from Fifty thousand pesos (P50,000) to One hundred fifty thousand pesos (P150,000) for the first offense.

(b) Imprisonment of three (3) years and one (1) day to six (6) years plus a fine ranging from One hundred fifty thousand pesos (P150,000) to Five hundred thousand pesos (P500,000) for the second offense.

(c) Imprisonment of six (6) years and one (1) day to nine (9) years plus a fine ranging from Five hundred thousand pesos (P500,000) to One million five hundred thousand pesos (P1,500,000) for the third and subsequent offenses.

(d) In all cases, subsidiary imprisonment in cases of insolvency.

   
The significant changes in the trademark law under the old law [R. A. No. 166] and the present law are as follows:
   
1. Under the former, the element of use before filing a local application is a requirement although this is not required when the application is based on foreign registration; while under the latter, the element of use has been eliminated as a requirement for application.
   
2. Under the former, the term granted is 20 years renewable for 20-year periods; while under the latter, the term is for 10 years, renewable for 10-year periods.

   
3. Under the former, the affidavit of use or non-use is required on the 5th, 10th and 15th anniversaries; while under the latter, proof of use within 3 years from the filing of the application is required and the affidavit of use should be filed within 1 year from the 5th anniversary.
   
4. Under the former, a Supplemental Register is required to be maintained; while under the latter, it is no longer required.
   
5. Under the former law, penalties for infringement, unfair competition, false designation of origin and false description or representation range from fine of PhP500 to PhP2,000 and/or 6 months to 3 years and 4 months of imprisonment; while under the latter law, the penalties range from fine of PhP50,000 to PhP200,000 and/or 2 to 5 years of imprisonment.
   
      

It is now 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.
   
The scheme of penalties for infringement has also been changed. From the previous fine of Php200 to Php2,000 and/or imprisonment of 1 year, the current range of penalties are as follows:
    
For first offenders - fine of PhP50,000 to PhP150,000 and/or imprisonment of 1 to 3 years
For second offenders - fine of PhP150,000 to PhP500,000 and/or imprisonment of 3 to 6 years
For third and subsequent offenders - fine of PhP500,000 to PhP1.5 Million and/or imprisonment of 6 to 9 years.
In case of insolvency, the offender shall furthermore suffer subsidiary imprisonment.