Intellectual Property Code of the Philippines

Republic Act No. 8293 (“RA 8293”), as Amended

I. Introduction

A. Declaration of State Policy1.

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.

B. Intellectual Property Rights2.

The term “intellectual property rights” consists of:

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.

II. Law on Patents

A Patent is a grant issued by the government through the Intellectual Property Office
of the Philippines. It is an exclusive right granted for a product, process or an
improvement of a product or process which is new, inventive and useful. This
exclusive right gives the inventor the right to exclude others from making, using, or
selling the product of his invention during the life of the patent.

A patent has a term of protection of twenty (20) years providing an inventor

significant commercial gain. In return, the patent owner must share the full
description of the invention. This information is made available to the public in the
form of the Intellectual Property Official Gazette and can be utilized as basis for
future research and will in turn promote innovation and development.3

A. Patentable Inventions4

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.

1. Classes of Patentable Inventions

a. A useful machine

1
Section 2, RA 8293, as amended.
2
Section 4, RA 8293, as amended.
3
http://www.ipophil.gov.ph/services/patents/about-patents.
4
Section 21, RA 8293, as amended.

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 b. A product or composition
c. A method or process, or
d. An improvement of any of the foregoing
e. Microorganism
f. Non-biological & microbiological process

2. Requisites for Patentability

a. Novelty5 - An invention shall not be considered new if it forms part

of a prior art.

Prior art shall consist of:

i. Everything which has been made available to the public

anywhere in the world, before the filing date or the priority
date6 of the application claiming the invention; and

ii. The whole contents of an application for a patent, utility

model, or industrial design registration, published, filed or
effective in the Philippines, with a filing or priority date that
is earlier than the filing or priority date of the application7

b. Inventive Step8 - An invention involves an inventive step if, having

regard to prior art, it is not obvious to a person skilled in the art at
the time of the filing date or priority date of the application
claiming the invention.

i. Obviousness
 Not beyond normal progress of technology
 Follows plainly or logically from the prior art
 Does not require any skill or ability beyond that to be
expected of the person skilled in the art

ii. Skilled Person

 Ordinary practitioner who is Aware of common general
knowledge in specific art
 Has access to everything disclosed as the state of the art
 Observes developments in related technical field

c. Industrial Applicability9 - An invention that can be produced and

used in any industry shall be industrially applicable.

B. Non-Patentable Inventions10.

1. Discoveries.

2. Scientific theories and mathematical methods.

3. In the case of drugs and medicines

a. the mere 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, or
b. the mere discovery of any new property or new use for a known
substance, or
c. the mere use of a known process unless such known process results
in a new product that employs at least one new reactant.

5
Section 23, RA 8293, as amended.
6
Priority date means the date of filing of the foreign application for the same invention.
(Section 20, RA 8293, as amended.)
7
Section 24, RA 8293, as amended.
8
Section 26, RA 8293, as amended.
9
Section 27, RA 8293, as amended.
10
Section 22, RA 8293, as amended.

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 4. Schemes, rules and methods of
a. performing mental acts,
b. playing games,
c. doing business, and
d. programs for computers.

5. Methods for treatment of the human or animal body by surgery or

therapy and diagnostic methods practiced on the human or animal body.

6. Plant varieties or animal breeds or essentially biological process for the

production of plants or animals.

7. Aesthetic creations.

8. Anything which is contrary to public order or morality.

C. Rights to a Patent

1. Right to a Patent11. - The right to a patent belongs to the inventor, his

heirs, or assigns. When two (2) or more persons have jointly made an
invention, the right to a patent shall belong to them jointly.

2. First to File Rule12. - If two (2) or more persons have made the invention
separately and independently of each other, the right to the patent shall
belong to the person who filed an application for such invention, or where
two or more applications are filed for the same invention, to the applicant
who has the earliest filing date or, the earliest priority date.

3. Right of Priority. - An application for patent filed by any person who has
previously applied for the same invention in another country which by
treaty, convention, or law affords similar privileges to Filipino citizens,
shall be considered as filed as of the date of filing the foreign application:
Provided, That:

a. the local application expressly claims priority;

b. it is filed within twelve (12) months from the date the earliest
foreign application was filed; and
c. a certified copy of the foreign application together with an English
translation is filed within six (6) months from the date of filing in
the Philippines.

D. Term of Patent13. - The term of a patent shall be twenty (20) years from
the filing date of the application.

E. Rights Conferred by Patent14.

1. A patent shall confer on its owner the following exclusive rights:

a. Where the subject matter of a patent is a product, to restrain,

prohibit and prevent any unauthorized person or entity from
making, using, offering for sale, selling or importing that product;

b. Where the subject matter of a patent is a process, to restrain,

prevent or prohibit any unauthorized person or entity from using
the process, and from manufacturing, dealing in, using, selling or
offering for sale, or importing any product obtained directly or
indirectly from such process.

11
Section 28, RA 8293, as amended.
12
Section 29, RA 8293, as amended
13
Section 54, RA 8293, as amended.
14
Section 71, RA 8393, as amended.

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 2. Patent owners shall also have the right to assign, or transfer by
succession the patent, and to conclude licensing contracts for the same.

III. Law on Trademarks

A trademark is a tool used that differentiates goods and services from each other. It
is a very important marketing tool that makes the public identify goods and
services. A trademark can be one word, a group of words, sign, symbol, logo, or a
combination of any of these. Generally, a trademark refers to both trademark and
service mark, although a service mark is used to identify those marks used for services
only.

Trademark is a very effective tool that makes the public remember the quality of
goods and services. Once a trademark becomes known, the public will keep on
patronizing the products and services.

Utilized properly, a trademark can become the most valuable business asset of an
enterprise. In addition to making goods and services distinctive, the owner of a mark
may earn revenues from the use of the mark by licensing its use by another or though
franchising agreements.15

A. Definition of Terms16

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.

B. How Marks are Acquired17

The rights in a mark shall be acquired through registration made validly in

accordance with the provisions of this law.

Registration gives the trademark owner the exclusive right to use the mark and to
prevent others from using the same or similar marks on identical or related goods
and services.

C. Non-registrable Marks18

A mark cannot be registered if it:

1. Descriptive – 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;

These are marks that describe the characteristics of the goods or services.
Examples are “DURABLE” for shoes (describes the quality), “A LITER” for

15
http://www.ipophil.gov.ph/services/trademark/about-trademark
16
Section 121, RA 8293, as amended.
17
Section 122, RA 8293, as amended.
18
http://www.ipophil.gov.ph/services/trademark/about-trademark; Section 123, RA 8293, as
amended.

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 cooking oil (quantity), and so is “KITCHEN” for cooking utensils
(intended purpose).

2. Misleading – Those which likely mislead the public, particularly as to

the nature, quality, characteristics or geographical origin of the goods or
services;

Marks that are likely to deceive or have the tendency to misinform the
consumers about the actual characteristics of the goods or services like
“BOLPENS” for pencils, “COLA” for alcoholic beverages, “BULAKAN” for
sweets not originating from or produced in Bulacan.

3. Generic - Generic marks are names of products they seek to identify. For
instance, “KAP KEYK” for cupcakes, ”CAFFE” for coffee and “MAKINAH”
for machines.

4. Customary to Trade - 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;

Marks and indications that have become common in everyday language

or usage cannot be registered. They no longer distinguish the goods and
services because they are used so often to refer to the goods and services.
Example of this is “VCO” for virgin coconut oil, “DIAMOND PEEL” for
services involving cosmetic procedure.

5. Contrary to Public Order or Morality- Marks that are against the

common standard of morality. An example is “PRO-TERRORISM” for
clothing.

6. Names, Portraits of Persons - Consists of a name, portrait or signature

identifying a particular living individual except by his written consent, or
the name, signature, or portrait of a deceased President of the
Philippines, during the life of his widow, if any, except by written consent
of the widow;

Marks that contain names or portraits of living individuals may be

rejected unless the individual gives written consent. For instance, no one
can use the picture of Manny Pacquiao as a trademark unless he is Mr.
Pacquiao himself or he was duly authorized by Mr. Pacquiao.

7. Maps, Flags and 0ther Political Symbols - 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.

8. Shape - 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;

Shapes must be distinctive from the usual shape of goods or containers

of the goods, in order to be considered a trademark.

9. Color - Color alone is not accepted unless it is defined by a given form.

10. Marks that may cause confusion - Those 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

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 11. Identical with, or confusingly similar to WELL-KNOWN MARKS –
Those identical with, or confusingly similar to, or constitutes a
translation of a mark which is considered by the competent authority of
the Philippines to be well-known internationally and in the Philippines,
whether or not it is registered here, as being already the mark of a person
other than the applicant for registration, and used for identical or similar
goods or services: Provided, That in determining whether a mark is well-
known, account shall be taken of the knowledge of the relevant sector of
the public, rather than of the public at large, including knowledge in the
Philippines which has been obtained as a result of the promotion of the
mark.

D. Duration19. - A certificate of registration shall remain in force for ten (10)

years: Provided, That the registrant shall file a declaration of actual use
and evidence to that effect, or shall show valid reasons based on the
existence of obstacles to such use, as prescribed by the Regulations,
within one (1) year from the fifth anniversary of the date of the
registration of the mark. Otherwise, the mark shall be removed from the
Register by the Office.

E. Renewal20. - A certificate of registration may be renewed for periods of

ten (10) years at its expiration upon payment of the prescribed fee and
upon filing of a request.

F. Rights conferred by Registration of Trademark21. - The owner of a

registered mark shall have the exclusive right to prevent all third parties
not having the owner’s consent from using in the course of trade identical
or similar signs or containers for goods or services which are identical or
similar to those in respect of which the trademark is registered where
such use would result in a likelihood of confusion. In case of the use of an
identical sign for identical goods or services, a likelihood of confusion
shall be presumed.

IV. Law on Copyright

Copyright is the legal protection extended to the owner of literary and artistic works
which are original intellectual creations in the literary and artistic domain and
protected from the moment of their creation22.
Works are protected by the sole fact of their creation, irrespective of their mode or
form of expression, as well as their content, quality and purpose23. Thus, it does not
matter if, in the eyes of some critics, a certain work has little artistic value. So long as
it has been independently created and has a minimum of creativity, the same enjoys
copyright protection.

A. Rights Accorded by a Copyright

1. Economic rights24 - enable the creator to obtain remuneration from the

exploitation of his works by third parties
a. Reproduction;
b. Transformation (e.g. dramatization, translation, adaptation,
abridgment, arrangement);
c. First public distribution – refers to the first public distribution of the
original and each copy of the work by sale or other forms of transfer
of ownership;
d. Rental;
e. Public display;
f. Public performance;

19
Section 145, RA 8293, as amended.
20
Section 146, RA 8293, as amended.
21
Section 147, RA 8293, as amended.
22
Section 172, RA 8293, as amended.
23
Section 172.2, RA 8293, as amended.
24
Section 177, RA 8293, as amended.

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 g. Other communication to the public of the work.

2. Moral rights25- makes it possible for the creator/author to undertake

measures to maintain and protect the personal connection between the
author and his work.
a. Right of Attribution – refers to the right of the author to require that
the authorship of the works be attributed to him; in particular, the
right that the his name, as far as practicable, be indicated in a
prominent way on the copies, and in connection with the public use
of his work;
b. Right of Alteration – refers to the right to make any alterations of his
work prior to, or to withhold it from publication;
c. Right of Integrity (object to any prejudicial distortion) – refers to the
right to object to any distortion, mutilation or other modification of,
or other derogatory action in relation to, his work which would be
prejudicial to his honor or reputation;
d. Right to restrain use of his name – refers to the right to restrain the
use of his name with respect to any work not of his own creation or in
a distorted version of his work.

3. Resale right26 - In every sale or lease of an original work of painting or

sculpture or of the original manuscript of a writer or composer, subsequent
to the first disposition thereof by the author, the author or his heirs shall have
an inalienable right to participate in the gross proceeds of the sale or lease to
the extent of five percent (5%). This right shall exist during the lifetime of the
author and for fifty (50) years after his death.

B. Copyright Ownership27

Generally, the natural person who created the literary and artistic work owns the
copyright to the same.

1. For works of joint authorship: the co-authors shall be the original owners of
the copyright and in the absence of agreement, their rights shall be governed
by the rules on co-ownership. If, however, a work of joint authorship consists
of parts that can be used separately and the author of each part can be
identified, the author of each part shall be the original owner of the copyright
in the part that he has created.

2. For work created during or in the course of employment (works for hire):
a. Employee - if the work is not part of his regular duties, even if he used
the time, facilities and materials of the employer;
b. Employer - if the work is the result of the performance of his regularly
assigned duties, unless there is an express or implied agreement to the
contrary.

3. For commissioned works: the person who commissioned the work owns the
work but the copyright thereto remains with the creator, unless there is a
written agreement to the contrary.

4. For audiovisual works: the producer, the author of the scenario, the composer
of the music, the film director, and the author of the work so adapted.

5. For letters: the copyright shall belong to the writer.

C. Term of Protection28

25
Section 193, RA 8293, as amended.
26
Section 200, RA 8293, as amended.
27
https://www.ipophil.gov.ph/services/copyright/ownership-and-rights
28
Section 213, RA 8293, as amended.

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In general, the term of protection of copyright for original and derivative works is the
life of the author plus fifty (50) years after his death.

In calculating the term of protection, the term of protection subsequent to the death
of the author shall run from the date of his death or of publication, but such terms
shall always be deemed to begin on the first day of January of the year following the
event which gave rise to them (i.e. death, publication, making).

1. In case of works of joint authorship, the economic rights shall be protected

during the life of the last surviving author and for fifty (50) years after his
death.
2. In case of anonymous or pseudonymous works, the copyright shall be
protected for fifty (50) years from the date on which the work was first lawfully
published. If such works if not published before shall be protected for fifty
(50) years counted from the making of the work.
3. In case of works of applied art the protection shall be for a period of twenty-
five (25) years from the date of making.
4. In case of photographic works, the protection shall be for fifty (50) years from
publication of the work and, if unpublished, fifty (50) years from the making.
5. In case of audio-visual works including those produced by process analogous
to photography or any process for making audio-visual recordings, the term
shall be fifty (50) years from date of publication and, if unpublished, from the
date of making.