IP LECTURE NOTES (Pre-Midterms)

I.

Basic Intellectual Property Information

What is IP? (WIPO Definition)

IP refers to creations of the mind: inventions, literary and artistic works , and symbols, names, images and
designs used in commerce.

Pertinent Constitutional Provisions

a) Article XIV, Sec. 13 The Benefit to the People Proviso

The state shall protect and secure the exclusive right of scientists, inventors, artists and other gifted citizens to their
intellectual property and creations, particularly when beneficial to the people for such period as may be provided by
law.
b) Art. XIV- Secs 10 and 12
ARTICLE XIV
SCIENCE AND TECHNOLOGY
Section 10. Science and technology are essential for national development and progress. The State shall give priority to research
and development, invention, innovation, and their utilization; and to science and technology education, training, and services. It
shall support indigenous, appropriate, and self-reliant scientific and technological capabilities, and their application to the
country's productive systems and national life.
Section 12. The State shall regulate the transfer and promote the adaptation of technology from all sources for the national
benefit. It shall encourage the widest participation of private groups, local governments, and community-based organizations in
the generation and utilization of science and technology.
c) Art. XII, Sec 6 vis a vis Sec. 2 of the IP Code
ARTICLE XII
NATIONAL ECONOMY AND PATRIMONY
Section 6. The use of property bears a social function, and all economic agents shall contribute to the common good. xxxxx
IP Code
Sec. 2. Declaration of State Policy
The State recognizes that an effective intellectual and industrial property system is vital to the development of domestic and
creative activity, facilitates transfer of technology, attracts foreign investments, and ensures market access for our products. It
shall protect and secure the exclusive rights of scientists, inventors, artists and other gifted citizens to their intellectual property
and creations, particularly when beneficial to the people, for such periods as provided in this Act.
The use of intellectual property bears a social function. To this end, the State shall promote the diffusion of knowledge and
information for the promotion of national development and progress and the common good.
It is also the policy of the State to streamline administrative procedures of registering patents, trademarks and copyright, to
liberalize the registration on the transfer of technology, and to enhance the enforcement of intellectual property rights in the
Philippines. (n)
d) Art XII, Secs. 14 and 19
Section 14. The sustained development of a reservoir of national talents consisting of Filipino scientists, entrepreneurs,
professionals, managers, high-level technical manpower and skilled workers and craftsmen in all fields shall be promoted by the
State. The State shall encourage appropriate technology and regulate its transfer for the national benefit.
Section 19. The State shall regulate or prohibit monopolies when the public interest so requires. No combinations in restraint of
trade or unfair competition shall be allowed.

Civil Law Basis Articles 712; 721;722; 724

Art. 721 of the Civil Code
By intellectual creations, the following persons acquire ownership
(ACPS) :
a)
b)
c)
d)

the
the
the
the

AUTHOR , with regard to his literary,dramatic, historical, legal, philosophical, scientific or other work;
COMPOSER, as to his musical composition;
PAINTER, SCULPTOR or other ARTIST, with respect to product of his art ;
SCIENTIST or TECHNOLOGIST or any other person with regard to his discovery or invention

Historical Background Mirpuri v. C.A (G.R No. 114508, 19 Nov. 1999 ; Taada vs. Angara [G.R. No. 118295. May
2, 1997.] EN BANC

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Devt of IP in the world
PATENTS

precursors of modern patent system began in England in the 12 th century

person who introduced a technology imported abroad was granted an incentive (LETTERS PATENT) which
means an open letter =gives him monopoly powers or sole right to use it for a period enough to establish a
new industry to shield him from competition during the formative years of new undertaking
based on such rationale, ist modern patent law was enacted in the Republic of Venice 1474
1628 Statute of Monopolies (England) 14 yrs protection from grant
1790 - USA
1815 - France
1826 - Spain
1864 Italy
1885 - Japan

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COPYRIGHT (territorial in nature)

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1709 Statute of Anne (England) first copyright law in the world that can be traced to the invention of
printing
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1741 (Denmark) copyright law
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1790 U.S.A (copyright law and patent law)
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1791 & 1793 (Copyright law in France)
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1834 Chile
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1849 Peru
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1869 - Argentina
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1871 Mexico
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1886 , September BERNE Convention for the protection of literary and artistic works is the first
international agreement for the protection of the rights of authors held in Berne, Switzerland due to the
need for a uniform system of protection.
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In view of fundamental changes in the means of creation, use and dissemination of literary and artistic
works the following revisions cropped up:
Berlin -1908
Rome 1928
Brussels -1948
Stockholm -1967
Paris -1971
TRADEMARKS
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In ancient cultures, trademarks were used by the makers of bricks, leather goods, books, weapons and
other products to indicate their origins
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Purpose of trademark is to establish a connection between a particular craftsman and his work in the mind
of the consumer.
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Middle of 19th century, common law in England provided protection for trademarks
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1857 France enacted a law in TM
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1870 US, Trademark law was declared unconstitutional . reason : covers also registration of
trademarks used in connection with goods traded interstate instead of limiting it to intrastate
commerce
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1905- US New Trademark Law
*** Due to international trade it became desirable to obtain protection for trademarks and inventions in several
countries. The only problem is
the principle of independence of industrial property meaning laws on trademark or patents
differ from one country to another.
*** The fate of an application for the registration of a trademark or an invention in a particular country has no influence
whatsoever on the fate of an application for registration of the same trademark or invention in another country.
*** Applications have to be made roughly at the same time in all countries where he wants protection.
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Birth of the PARIS CONVENTION for the protection of industrial property in Paris in 1883.
Revisions
Rome 1886
Madrid 1890 & 1891
Brussels 1897 & 1900
Washington 1911
The Hague 1925
London 1934
Lisbon - 1958
Stockholm - 1967

Devt of IP in Southeast Asia

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IP in SE Asia has not kept pace with its economic growth due to 2 factors :
a) not all SE Asian countries are parties to the Berne Convention (only Malaysia, Phils and
Thailand) are members; for the Paris Convention (only Malaysia, Philippines, Indonesia,
Singapore and Vietnam are members of the convention
b) limited use of industrial property in 1993 patent applications in ASEAN was less than 5 % of
patents in Japan and 8 % of that in US; over 4% of that in Western Europe

due to AFTA , the development of IP in Southeast Asia is likely to be rapid in the near future

Devt of IP in the Philippines

IP system followed those of Spain and US

History of Copyright Laws

1.

Law on Intellectual Property on January 10, 1879 published in the Gaceta de Madrid on Jan. 12, 1879.

2.

Spanish Copyright Law came to the Phil by way of the Royal Decree of May 5, 1887.

3.

US Copyright Law under the Treaty of Paris of 10th December 1898.

4.

Act No. 3134 by the Philippine Legislature on March 6, 1924. 1st intellectual property law patterned after the US Copyright
Law.

5.

Republic Act No. 167, An Act to Provide the Transfer of Powers, Duties and Functions Relating to the
Protection of Copyrights From the National Library to the Patent Office. June 20, 1947.

6.

Registration and

Civil Code (1949), Art. 721-724 of Rep. Act No. 386 (of. Provisions are on Intellectual Creations.

7.

Presidential Decree No. 49, Decree on Intellectual Property. passed during Martial Law on December 15,
1972.

8.

Presidential Decree No. 285, Authorizing the Compulsory Licensing or Reprinting of Educational Scientific or Cultural Books
and Materials as a Temporary or Emergency Measure Whenever the Prices Thereof Become So Exorbitant as to be
Detrimental to the National Interest. September 3, 1973

9.

Presidential Decree No. 400, Amending Presidential Decree No. 285. March 1, 1974.

10. Civil Code (1949), Art. 721-724 of Rep. Act No. 386 (of. Provisions are on Intellectual Creations)
11.

Presidential Decree No. 1203, Further Amending Presidential Decree 285, as Amended by Presidential Decree No. 400.
September 27, 1977

12. Republic Act No. 8792, An Act Providing for the Recognition and Use of Electronic Commercial and, Non-Commercial
Transactions, Penalties for Unlawful Use Thereof, and Other Purpose, popularly known as the E-Commerce Law, signed into
law on June 14, 2000, Implementing Rules and Regulations of the Electronic Commerce Act one month after the approval of
the law, 13th July 2000.
13. Republic Act No. 8293, An Act Prescribing the Intellectual Property Code and Establishing the Intellectual Property Office,
passed June 6 1997 and took effect January 1, 1998.
Incorporated provisions of international agreements wherein the Phil. is a signatory such as the Berne
Convention for the Protection of Literary and Artistic Works ( August 1, 1951), Exchange of Notes with the
United States for the protection and enforcement of intellectual property rights on April 6, 1993, WTO TRIPS
Agreement (Agreement on Trade Related Aspects in Intellectual Property Rights) on Dec. 15, 1994 and the
Dec. 1996 World Intellectual Property Organization (WIPO) Geneva Protocol which covered the protection of
digital technology.
Trademarks and Patents

Trademark law governed by a Trademark Law promulgated by Queen Ma. Cristina of Spain on 26 Oct. 1888 ( a modified
version version of the Spanish TM law)

Patents unknown whether Spanish Patent Law was enforced in the Philippines; records show that Spanish authorities
referred patent matters to Spain

TREATY OF PARIS (Dec. 10 1898)

Art. 13 of TP provides that copyrights, trademarks and patents that were granted by the Spanish authorities continue to have
legal effect in the Philippines
AMERICAN REGIME

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1903 (Mar. 6) Act No. 666 Trademarks and Tradename Law of the Philippine Islands
1909 (Mar. 6) Act No 3134 (Copyright law of the Philippine Islands)
1913 (Feb. 10) US Patent Laws applicability in the Philippine island
Trademark system was under the Bureau of Forestry
Patent system under the Executive Bureau.
After Philippine Independence

1947 Philippine Patent Office was established

RA 165 Phil Patent Law

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RA 166 Trademark Law

1972 (Dec. 15) effectivity date of PD 49 on Copyright
1951 (August 1) Philippines became contracting party to Berne Convention for Protection of Literary and Artistic works
1965(Sept. 27) Philippines became contracting paty to Paris convention for protections of industrial property
1980 Philippines became contracting party to Convention(establishing the WIPO/accorded to GATT)
1986- PPO was consolidated with the TTB to become the BPTTT
1994 Phils is included in the signatories to Uruguay Round Final Act, the Agreement establishing the WTO.
Phils ratified the agreement ( SC upheld the constitutionality of senates ratification to the agreement)
January 1, 1998 effectivity of the IP Code

Intellectual Property and Economics

o
Sec. 2 (RA 8293) Declaration of State Policy effective industrial property and IP system is vital
to the development of domestic and creative activity. It also :
a) facilitates transfer of technology
b) attracts foreign investment
c) ensures market access for our products
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IP encourages creativity which promotes economic development

IP confers monopoly rights to authors, merchants and inventors. It essentially protects info which
is costly to produce but relatively inexpensive to transmit or info is difficult to appropriate
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Copyright ensures the payment of adequate royalties to authors of literary and artistic works
as compensation for their efforts so they can devote fully their energies to the production of
such works
Trademarks promote an open market & ensure free competition by enabling consumer to
make informed choices between various goods
Patents secure the result of investment in research and innovation

Amendments to Republic Act No. 8293 or to the Intellectual Property Code or RA 8293
1.

Republic Act No. 9168, - June 7, 2002 (Philippine Plant Variety Protection Act of 2002)
Section 2. Statement of Policies.
a) The State recognizes that an effective intellectual property system in general and the development of new plant
variety in particular is vital in attaining food security for the country. To this end, it shall protect and secure the exclusive
rights of breeders with respect to their new plant variety particularly when beneficial to the people for such periods as
provided for in this Act.
b) The use of intellectual property bears a socioeconomic function. To this end, the State shall promote the diffusion of
technology and information for the promotion of national development and progress for the common good

2.

Republic Act No. 9239, Feb. 10, 2004 - Regulating Optical Media, Reorganizing the VIDEOGRAM REGULATORY BOARD

3.

Republic Act No. 9502, June 6, 2008 Cheaper and Quality Medicines Act

4.

Republic Act No. 10055, entitled "An Act Providing the Framework and Support System for the Ownership,
Management, Use, and Commercialization of Intellectual Property Generated from Research and Development Funded by
Government and for Other Purposes" also known as the "Philippine Technology Transfer Act of 2009

II.

Classes of Intellectual Property (2 Main Divisions)

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III.

Copyright and related rights

Industrial property
1. distinctive signs trademarks, service marks and geographical indications
2. IP relating to technological advances patent, industrial designs, lay-out designs, protection
of undisclosed information

IPR under the IP Code

1. Copyright and related rights
2. Trademarks and Service Marks
3. Geographical Indications
4. Industrial Designs
5. Patents
6. Lay-out Designs (Topographies) of Integrated Circuits (RA 9150)
7. Protection of Undisclosed Information

IV. International Treaties/ Conventions to which the Philippines is a Signatory

1)
2)
3)
4)
5)
6)

Convention creating the WIPO

Uruguay Round (creating the WTO)
Paris Convention
Berne Convention
Budapest Treaty
Patent Cooperation Treaty

7) WIPO Copyright Treaty

8) Madrid Protocol

WIPO and WTO

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Berne and Paris conventions had separate international secretariats to administer the 2 conventions. They were later
placed under the supervision of the Swiss Federal government with their headquarters in Berne.
1893, the two secretariats united and after undergoing several changes became the United International Bureau for the
Protection of Intellectual Property (BIRPI, the acronym for the French version of the name)
1960 BIRPI moved its headquarters to Geneva
1967 diplomatic conference on IP in Stockholm (creation of WIPO) to succeed BIRPI
1974 WIPO became a specialized agency of the UN
Relationship between WIPO and WTO
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US believed that issues on IP protection involves trade

GATT (General Agreement on Tariff and Trade) is the main multilateral treaty on the elimination of
trade barriers.
US advocated that IP issues be addressed under the auspices of GATT because it has dispute
settlement mechanism
Developing countries opposed this because of the view that their interests would be better protected
within the framework of WIPO due to their numerical number
Developing countries urged WIPO to draft its own treaty for a dispute resolution mechanism ( said
proposals not adopted for various reasons

WTO
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1993 Uruguay Round of the multilateral trade negotiations under the auspices of GATT was concluded on
Dec. 15, 1993
which involved discussions for the first time on the protection of intellectual property in relation to
international trade
countries cant agree on the most basic issues of the agenda such as :
1. coverage of IP
2. minimum levels of protection
3. adoption by member countries of procedures for the enforcement of IPR
discussions collapsed on 2 occasions but later paved the way for the Agreement on Trade Related Aspects
of IPR (TRIPS Agreement ) which took effect on Jan. 1, 1995
also led to the agreement establishing the WTO, effective Jan. 1, 1995

International Treaties Protecting Copyrights

1.

Berne Convention for protection of literary works, established in Aug. 1,

1951.

Core Principles:
a) national treatment treat foreigners the way you protect nationals
b) principle of automatic protection no need to register copyrights
c) principle of independence of protection nationals from different states should have protection of their own works
2. TRIPS Agreement Trade Related Aspects of IP Rights, a sub-agreement of the GATT,
Core Principles:
a) Principle of independence of protection of Intellectual property
b) National treatment of the IP owner
c) Most favored nation principle treat all signatories similarly, no special treatment should be given to any nation
Establishment of minimum standards of protection as to enforcement of IPR transnationally is likewise embodied in the TRIPS
agreement as one of its salient features
Notable Features of the TRIPS Agreement
1.
2.
3.
4.

incorporates by reference most of the standards of protection of copyright/related rights under the two
conventions
explicit recognition of computer software as proper subject of copyright
explicit recognition of micro-organisms and non-biological processes for the production of plants and
animals as patentable
includes substantial number of additional obligations on matters where the Berne and Paris Conventions
were silent or inadequate, eg :
a)
b)

adoption by member countries of procedures for enforcement of IP

provides a dispute resolution mechanism for member countries

TRIPS Compliance commitments

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Jan. 1, 1996 all provisions of TRIPS must be complied by developed countries

Jan. 1, 2000 for developing countries
Jan. 1, 2006 least developed countries

***WTO and IPO has a mutually supportive relationship. WTO has a dispute resolution mechanism, while
WIPO promotes IP in developing countries. The two concluded an agreement which took effect on Jan. 1,
1996 providing cooperation in areas such as :
2. access
3. collection
4. translation of national laws and regulation