RESTRICTEDWORLD TRADE
ORGANIZATIONIP/C/W/272
5 June 2001
(01-2755)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION
Responses from the Philippines to the questions posed by Canada, Japan and Switzerland
By means of communications from the Permanent Mission of the Philippines dated
28 May 2001, the Secretariat has received copies of the following responses to the questions posed by
Canada, Japan and Switzerland, as circulated in documents IP/C/W/261, 258 and 263, respectively.
_______________
CANADA
1. What recourse do right holders have in respect of wilful trademark counterfeiting or
copyright piracy on a commercial scale, as required by Articles 61 of the TRIPS Agreement andthroughout?
In compliance with Article 61, Philippine law provides for criminal procedures and penalties.
Intellectual property right holders may file criminal  action for trademark counterfeiting or copyright
piracy whether or not on a commercial scale.
Independent of the civil and administrative sanctions imposed by law, a criminal penalty of
imprisonment from two (2) years to five (5) years and a fine ranging from Fifty thousand pesos
(P50,000) to Two hundred thousand pesos (P200,000), shall be imposed on any person who is found
guilty of committing infringement of trademark.
1
Any person infringing copyright 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 offence.
(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 offence.
(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 offences.
(d) In all cases, subsidiary imprisonment in case of insolvency.
2
                                                     
1 Rep. Act No. 8293 (1998) , Sec.170.
2 Rep. Act No. 8293 (1998) , Sec. 217.1.IP/C/W/272
Page 2
In determining the number of years of imprisonment and the amount of fine, the court shall
consider the value of the infringing materials that the defendant has produced or manufactured and the
damage that the copyright owner has suffered by reason of the infringement.3
When the civil aspect of the case is deemed instituted with the criminal case, the following
provisional remedies may be granted by the court:
Preliminary Attachment
At the commencement of the action or at anytime before entry of judgment, a plaintiff or any
proper party may have the property of the adverse party attached as security for the satisfaction of anyjudgment that may be recovered. 
4
Attachment is considered an advance execution of judgment to prevent ineffective victory.
Preliminary Injunction
This is an order granted at any stage of an action or proceeding prior to the judgment of final
order, requiring a party or a court, agency or a person to refrain from a particular act or acts.  It may
also require the performance of a particular act or acts, in which case it shall be known as preliminary
mandatory injunction.5
Impounding and destruction
On the application of the complainant the court may impound during the pendency of the
action, sales invoices and other document evidencing sales. 6
Infringing goods are likewise subject to destruction without any compensation while the case
is pending.7
Seizure and impounding
The court is empowered to order the seizure and impounding of any articles which may serve
as evidence in the court proceeding.
2. What protection does your Copyright le gislation afford to “foreign works”?
The Philippines observes the principle of reciprocity in adhering to international conventions
such that 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 unf air 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 theIntellectual Property Code.
8
                                                     
3 Rep. Act No. 8293 (1998) , Sec. 217.2.
4 Rules of Civil Procedure (1997), Rule 57, Sec. 1.
5 Rules of Court (1964), Rule 58, Sec. 1.
6 Rep. Act No. 8293 (1998), Sec. 156.2.
7 Rep. Act No. 8293 (1998) , Sec. 216.1 (d).
8 Rep. Act No. 8293, Sec. 3IP/C/W/272
Page 3
Accordingly, any condition, restriction, limitation, diminution, requirement, penalty or any
similar burden imposed by the law of a foreign country on a Philippine national seeking protection of
intellectual property rights in that country, shall reciprocally be enforceable upon nationals of thatcountry, within Philippine jurisdiction.
9
A non-resident applicant shall appoint a resident agent, by special power of attorney, who
shall be authorized to pursue the application for copyright registration and deposit for his/her/its
behalf with the National Library and/or the Supreme Court Library and to receive service of notice or
other legal processes relating to the application and the copyright. In the event of death, absence or
incapacity of the resident agent, the applicant shal l appoint a new resident agent, by special power of
attorney with revocation of the prior special power of attorney, and file notice and a copy thereof with
the National Library and/or the Supreme Court Library.10
The foregoing provision was promulgated to facilitate and help ensure service of notices and
legal processes to non-residents.
Copyright may be enforced by the filing of judicial and administrative actions.  The judicial
action may be civil, criminal, or both.  These actions are not mutually exclusive and may be
prosecuted together or independently of each other.
Any person infringing copyright and neighboring rights shall be liable: 
(a) To an injunction restraining such infrin gement.  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 provesales 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 makingsuch 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 ofacquittal in a criminal case.
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.
11
                                                     
9 Rep. Act No. 8293, Sec. 231; Copyright Safeguards and Regulations, Rule 18
10 Copyright Safeguards and Regulations, Rule 5, Sec.3
11 Rep. Act No. 8293, Sec. 216IP/C/W/272
Page 4
Any person infringing copyright or neighboring rights 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) forthe first offence. 
(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 offence. 
(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 fivehundred thousand pesos (P1,500,000) for the third and subsequent offences. 
(d) In all cases, subsidiary imprisonment in cases of insolvency.
In determining the number of years of imprisonment and the amount of fine, the court
shall consider the value of the infringing materials that the defendant has produced or
manufactured and the damage that the copyright owner has suffered by reason of the
infringement.
12
Administrative actions are also available for protection of copyright.
Department of Trade and Industry
The Department of Trade and Industry (DTI) has jurisdiction over complaints regarding
violations of intellectual property rights irrespecti ve of the total amount of damages claimed, or if no
damages are claimed.13
Intellectual Property Office
An IP owner may file administrative complaints before the Intellectual Property Office (IPO)
where the total damages claimed is not less than Two Hundred Thousand Pesos (P 200,000.00).14
Videogram Regulatory Board
The Videogram Regulatory Board (VRB) has jurisdiction over violations of law involving
videograms regardless of amount  of damages involved.15
Bureau of Customs
Upon written request to the Commissioner of Customs, the Bureau of Customs may suspend
the release of goods, which are imported in violation of the law.16
                                                     
12 ibid, Sec. 217
13 Dept. Administrative Order No.1 (2000).
14 Rep. Act No. 8293 (1998) Sec. 10.
15 Pres. Decree No. 1987 (1985).
16  Customs Administrative Order No. 7-93 (1993) II.3; Rep. Act No. 1937, Sec. 10.1 (k) .IP/C/W/272
Page 5
The administrative remedies include:
1. A fine of not less than Six Thousand Pesos (P6,000.00) but not more than One Hundred
Thousand Pesos (P100,000.00) and a non-monetary penalty consisting of closure, revocation
of licence or permit and confiscation of videograms involved in the violation which the
Videogram Regulatory Board may impose.17
2. Administrative penalties which the Secretary of Trade and Industry and the Director of the
Bureau of Legal Affairs of the Intellectual Property Office may impose:
• Cease and desist order
• Acceptance of voluntary compliance or discontinuance
• Condemnation or seizure of products subject of the offence
• Forfeiture of paraphernalia, real or personal properties
• Administrative fines
• Cancellation of permits licenses or registration granted
• Withholding of any permit, license or registration being secured
• Damages
• Censure
• Other analogous penalties and sanctions 18
3. Provisional remedies provided in the Rules of Court which may be granted by the Director of
the Bureau of Legal Affairs of the Intellectual Property Office such as preliminary
attachment,19 injunction.20
4. Preliminary order21 and other preliminary measures which the Secretary of Trade and Industry
may impose.22
                                                     
17 VRB Revised Rules and Regulations, Sec. 21.
18   Executive Order No. 913 (1983), Art. III Sec. 6; Rep. Act No. 8293, Sec. 10.2 (b).
19 Rep. Act No. 8293 (1998), Sec. 10, IRR on Administrative Complaints, Rule 5, Secs. 1 & 3
20 Rep. Act No. 8293 (1998), Sec. 10, IRR on Administrative Complaints, Rule 5, Secs. 1 & 6
21 Trade and Industry Ministry Order No. 69, Rule IX (1983), Sec. 49 (A)
22 Exec. Order No. 913 (1983), Sec. 11IP/C/W/272
Page 6
JAPAN
A. COPYRIGHT AND RELATED RIGHTS
1. Please explain exceptions or exemptions of the National Treatment and Most-Favoured-
Nation Treatment under the Copyright and Neighbou ring Rights Law, if any, as permitted in
Articles 3 and 4 of the TRIPS Agreement.
The Philippines observes the principle of reciprocity in adhering to international conventions
such that 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 unf air 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 tothe 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 the
Intellectual Property Code.
23
Accordingly, any condition, restriction, limitation, diminution, requirement, penalty or any
similar burden imposed by the law of a foreign country on a Philippine national seeking protection of
intellectual property rights in that country, shall reciprocally be enforceable upon nationals of that
country, within Philippine jurisdiction.24
A non-resident applicant shall appoint a resident agent, by special power of attorney, who
shall be authorized to pursue the application for copyright registration and deposit for his/her/its
behalf with the National Library and/or the Supreme Court Library and to receive service of notice or
other legal processes relating to the application and the copyright.  In the event of death, absence or
incapacity of the resident agent, the applicant shal l appoint a new resident agent, by special power of
attorney with revocation of the prior special power of attorney, and file notice and a copy thereof withthe National Library and/or the Supreme Court Library.
25
The foregoing regulation was promulgated to facilitate and help ensure service of notices and
legal processes to non-residents.
B. ENFORCEMENT
2. Please indicate the remedies which the judi cial authorities order regarding copyright and
neighbouring rights, including injunctions, damages, destruction or disposal of infringing goods,
materials or implements for their production.  Please also explain the criteria and the methods of
calculating the amount of such damages.
Any person infringing copyright and neighboring rights shall be liable: 
(a) To an injunction restraining such infr ingement.  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
                                                     
23 Rep. Act No. 8293, Sec. 3
24 Rep. Act No. 8293, Sec. 231; Copyright Safeguards and Regulations, Rule 18
25 Copyright Safeguards and Regulations, Rule 5, Sec.3IP/C/W/272
Page 7
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 suchinfringing 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 ofacquittal in a criminal case.
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.
26
Any person infringing copyright or neighboring rights 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) forthe first offence. 
(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 offence. 
(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 fivehundred thousand pesos (P1,500,000) for the third and subsequent offences. 
(d) In all cases, subsidiary imprisonment in cases of insolvency.
In determining the number of years of imprisonment and the amount of fine, the court
shall consider the value of the infringing materials that the defendant has produced or
manufactured and the damage that the copyright owner has suffered by reason of the
infringement.
27
                                                     
26 Rep. Act No. 8293, Sec. 216
27 ibid, Sec. 217IP/C/W/272
Page 8
SWITZERLAND
A. TRADEMARKS
1. Please indicate whether your legislation establishes specific rules concerning the size of a
trademark to be used on a pharmaceutical product.  If so, please explain how this is compatible with
Article 20 of the TRIPS Agreement.
Philippine legislation does not specify the size of a trademark to be used on a pharmaceutical
product.
B. GEOGRAPHICAL INDICATIONS
2. Please explain in detail how your legislation provides protection for geographical
indications.
A mark cannot be registered if it is likely to mislead the public, particularly as to its nature,
quality, characteristics or geographical origin of the goods or services or consists exclusively of signsthat are generic for the goods or services that it seek to identify.
28
Any person who, on or in connection with any g oods or services, or any container for goods,
uses in commerce any false designation of origin shall be liable to a civil action for damages and
injunction29.
He shall likewise suffer criminal penalty of 2 to 5 years and a fine ranging from Fifty
thousand pesos (P50,000) to Two hundred thousand pesos (P200,000).  When the civil aspect of the
case is deemed instituted with the criminal case, the following provisional remedies may be granted
by the court:
Preliminary Attachment
At the commencement of the action or at anytime before entry of judgment, a plaintiff or any
proper party may have the property of the adverse party attached as security for the satisfaction of any
judgment that may be recovered. 30
Attachment is considered an advance execution of judgment to prevent ineffective victory.
Preliminary Injunction
This is an order granted at any stage of an action or proceeding prior to the judgment of final
order, requiring a party or a court, agency or a person to refrain from a particular act or acts.  It may
also require the performance of a particular act or acts, in which case it shall be known as preliminary
mandatory injunction. 31
Impounding and Destruction
On the application of the complainant the court may impound during the pendency of the
action, sales invoices and other document evidencing sales. 32
                                                     
28 Rep. Act No. 8293 (1998), Sec. 123, paragraphs (g) and (h).
29 Rep. Act No. 8293 (1998), Sec. 169 .1 (b).
30 Rules of Civil Procedure (1997), Rule 57, Sec. 1.
31 Rules of Court (1964), Rule 58, Sec. 1.
32 Rep. Act No. 8293 (1998), Sec. 156.2.IP/C/W/272
Page 9
Infringing goods are likewise subject to destruction without any compensation while the case
is pending. 33
Seizure and Impounding
The court is empowered to order the seizure and impounding of any articles which may serve
as evidence in the court proceeding.
The following Administrative penalties may also be imposed by the Secretary of the Trade
and Industry and the Director of the Bureau of Legal Affairs of the IP Office:
• Cease and desist order
• Acceptance of voluntary compliance or discontinuance
• Condemnation or seizure of products subject of the offence
• Forfeiture of paraphernalia, real or personal properties
• Administrative fines
• Cancellation of permits licenses or registration granted
• Withholding of any permit, license or registration being secured
• Damages
• Censure
• Other analogous penalties and sanctions 34
In addition, provisional remedies provided in the Rules of Court may be granted by the
Director of the Bureau of Legal Affairs of the Intellectual Property Office such as preliminary
attachment,35 injunction,36 while the Secretary of Trade and Industry may issue preliminary order37
and other preliminary measures.38
Goods with false designation of origin shall not be imported into the Philippines or admitted
entry at any customhouse of the Philippines.39
Further, the address of the manufacturer, importer, repacker of the consumer product in the
Philippines or country of manufacture, if imported are included in the list of Minimum Labelling
requirements for consumer products.40
                                                     
33 Rep. Act No. 8293 (1998) , Sec. 216.1 (d).
34 Executive Order No. 913 (1983), Art. III Sec. 6; Rep. Act No. 8293, Sec. 10.2 (b).
35 Rep. Act No. 8293 (1998), Sec. 10, IRR on Administrative Complaints, Rule 5, Secs. 1 & 3
36 Rep. Act No. 8293 (1998), Sec. 10, IRR on Administrative Complaints, Rule 5, Secs. 1 & 6
37 Trade and Industry Ministry Order No. 69, Rule IX (1983), Sec. 49 (A)
38 Exec. Order No. 913 (1983), Sec. 11
39 Rep. Act No. 8293 (1998), Sec. 169.2.
40 Rep. Act No. 7394, Art. 77.IP/C/W/272
Page 10
C. PATENTS
3. Does your legislation grant patent protection to all categories of products or are there any
exceptions?  If so, please explain in detail what kind of exceptions exist and how they comply with
Article 27 of the TRIPS Agreement.  In the field of pharmaceutical products are new applications of
known substances patentable in your law?
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.41
The following are excluded from patent protection:
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.  This provision
shall not apply to products and composition for use in any of these methods;
d. Plant varieties or animal breeds or essentially biological process for the
production of plants and animals. This provision shall not apply to micro-
organisms and non-biological and microbiological processes.
e. Aesthetic creations; and
f. Anything which is contrary to public order or morality.42
Article 27.3(b) of the TRIPS Agreement requires member countries to provide for the
protection of plant varieties either by patents or by an effective sui generis system  or by any
combination thereof.  The IP Code specifically stat es that Congress may consider the enactment of a
law providing sui generis  protection of plant varieties and animal breeds and a system of community
intellectual rights protection.43  At present , the proposed sui generis  system for protecting plant
varieties is pending with the Philippine legislatur e, more specifically, under House Bill No. 10654 and
Senate Bill No. 1912.
Pharmaceutical substances are considered as products and are patentable. A pharmaceutical
substance with an improvement introduced thereon becomes a new patentable product. A new
application of a known substance is patentable if it claims any of the following improvements:
• a first medical use of the known substance or composition provided it was not
previously disclosed for use in surgery, therapy or diagnostic methods practiced in thehuman or animal body;
• a composition containing the known compound for second medical use provided the
requirements for novelty and inventive step are met;
                                                     
41 Rep. Act No. 8293 (1998), Sec. 21.
42 Rep. Act No. 8293 (1998), Sec. 22.
43 Rep. Act No. 8293 (1998) , Sec. 22.4.IP/C/W/272
Page 11
• synergistic composition wherein one or both of the components are known and the
use of each of them in therapy has been described, provided that the use of bothcompounds, either simultaneously, separately or sequentially, gives a new and
unexpected therapeutical result;
• the known compound for use in therapy provided the compound was not disclosed as
having in itself, a therapeutic effect but known as a component in a medicinal
composition only in combination with one or more active compounds to treat another
disease;
• use of the known substance as a medicament provided a first medical use is disclosed;
• use of the known substance for the manufacture of a medicament for curing disease.
4. Please indicate whether micro-organisms are patentable in your legislation.  Please explain
in this respect the relevant sections of your legislation.
Microorganisms are patentable.  Microorganisms are products of microbiological processes
and as such are patentable as long as they satisfy the requirements of patentability.
Applications relating to microorganisms are su bject to the special provisions set out in
Rule 408 and 409.  If an invention concerns a microbiological process or the product thereof and
involves or relates to the use of a microorganism or other biological material which is not available to
the public and which cannot be described in the patent application in such a manner to enable the
invention to be carried out by a person skilled in the art, then the disclosure is not considered to have
satisfied the requirements of sufficiency unless the requirements have been met, such as:
• a culture of the biological material must have been deposited with an international
depository institution recognized by the IPO;
• the depository institution and the file number of the culture deposit are stated in the
application;
• the deposited culture is made available upon request to any person from the date of
publication of the application.
If the biological material is not available to the public and if it could not be described in the
application in such a manner as to enable the invention to be carried out by a person skilled in the art,
the applicant must give the relevant information concerning the classification of the biological
material and significant differences from known bi ological material.  The applicant must indicate
every specific morphological and physiological characteristic for recognition and propagation of the
microorganism or other biological material  and the proposed taxonomic classification.
5. Please explain whether or not your legislation provides the possibility of granting of
compulsory licenses. If so, please explain in detail the conditions under which a compulsory license
may be granted.
The Intellectual Property Code provides for a whole chapter enumerating the details and
conditions under which a compulsory licence may be granted.
1. Valid grounds must exist-
Compulsory licensing may be granted under any of the following circumstances:IP/C/W/272
Page 12
a. National emergency or other circumstances of extreme urgency;
b. Where the public interest, in particular, national security, nutrition, health or
the development of other vital sectors of the national economy as determinedby the appropriate agency of the Government, so requires; or
c. Where a judicial or administrative body has determined that the manner of
exploitation by the owner of the patent or his licensee is anti-competitive; or
d. In case of public non-commercial use of the patent by the patentee, without
satisfactory reason;
e. If the patented invention is not being worked in the Philippines on a
commercial scale, although capable of being worked, without satisfactory
reason:  Provided, That the importation of the patented article shall constitute
working or using the patent.
44
2. Petitioner must make efforts to obtain authorization from patent owner-
The licence will only be granted after the petitioner has made efforts to obtain authorization
from the patent owner on reasonable commercial terms and conditions but such efforts havenot been successful within a reasonable period of time.
45
3. There must be public non-commercial use in case of semi-conductor technology-
In the case of compulsory licensing of patents involving semi-conductor technology, the
license may only be granted in case of public non-commercial use or to remedy a practice
determined after judicial or administrative process to be anti-competitive.
4. Petition must be in writing, verified and fee paid-
The petition for compulsory licensing must be in writing, verified by the petitioner and
accompanied by payment of the required filing fee.  It shall contain the name and address of
the petitioner as well as those of the respondents, the number and date of issue of the patent in
connection with which compulsory license is sought, the name of the patentee, the title of the
invention, the statutory grounds upon which compulsory license is sought, the ultimate facts
constituting the petitioner's cause of action, and the relief prayed for. 46
5. License must comply further with other statutory conditions-
If the petition is approved by the Director of Legal Affairs, the following conditions
shall be further imposed:
a. The scope and duration of such license shall be limited to the purpose for
which it was authorized;
b. The license shall be non-exclusive;
                                                     
44  Rep. Act No. 8293 (1998), Sec. 93.
45 Rep. Act No. 8293 (1998), Sec. 95.
46 Rep. Act No. 8293 (1998), Sec. 98.IP/C/W/272
Page 13
c. The license shall be non-assignable, except with that part of the enterprise
or business with which the invention is being exploited;
d. Use of the subject matter of the license shall be devoted predominantly for
the supply of the Philippine market: Provided, That this limitation shall not
apply where the grant of the license is based on the ground that thepatentee's manner of exploiting the patent is determined by judicial or
administrative process, to be anti-competitive.
e. The license may be terminated upon proper showing that circumstances
which led to its grant have ceased to exist and are unlikely to recur:
Provided, That adequate protection shall be afforded to the legitimate
interest of the licensee; and
f. The patentee shall be paid adequate remuneration taking into account the
economic value of the grant or authorization, except that in cases where the
license was granted to remedy a practice which was determined after
judicial or administrative process, to be anti-competitive, the need to
correct the anti-competitive practice may be taken into account in fixing the
amount of remuneration. 
47
6. Please explain how in your legislation the notion of "anti-competitive practice" is defined, as
referred to in Article 31 of TRIPS Agreement.  Are there any judicial or administrative decisions
referring to the interpretation of this expression?  If so, please indicate these decisions and comment
them briefly.
The Philippines is a market economy. As such, competition, not monopoly, is the norm in
trade and commerce.  The notion of "anti-competitive practices" in Philippine law, though not
expressly defined, has been made sufficiently clear by the enumeration of certain acts which are
restrictive of or undermines competition.
The spirit of competition has been enshrined in the 1987 Philippine Constitution itself as can
be gleaned from the following provisions:
"The State recognizes the indispensable role of the private sector, encourages private
enterprise, and provides incentives to needed investments."48
"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."49
The Revised Penal Code  (Act No. 3815)   punishes anti-competitive practice as monopolies
and combinations in restraint of trade, committed as follows:
1. Any person who shall enter into any contract or agreement or shall take part in any
conspiracy of combination in the form of trust or otherwise, in restraint of trade orcommerce to prevent by artificial means free competition in the market.
2. Any person who shall monopolize any merchandize or object of trade or commerce,
or shall combine with any other person or persons to monopolize said merchandize or
                                                     
47 Rep. Act No. 8293 (1998), Sec. 100.
48 Constitution (1987), Art. II, Sec. 20.
49 Constitution (1987) , Art. XII, Sec.19.IP/C/W/272
Page 14
object in order to alter the price thereof by spreading false rumors or making use of
any other article to restrain free competition in the market.
3. Any person who, being a manufacturer, producer or processor of any merchandize or
object of commerce from any foreign country, either as principal or agent, wholesaler
or retailer, shall combine, conspire or agree in any manner with any person likewise
engaged in the manufacture production, processing, assembling or importation of
such merchandize or object of commerce or with any other person not so similarly
engaged for the purpose of making transactions prejudicial to lawful commerce, or of
increasing the market price in any part of the Philippines, or any such merchandize or
object of commerce manufactured, produced, processed, assembled in or imported
into the Philippines, or of any article in the manufacture of which such manufactured,
produced, processed, or imported merchandize or object of commerce is used. " 50
To date, there is no judicial or administrative decision involving anti-competitive practices in
intellectual property rights cases.
7. Please explain whether your legislation prov ides for judicial review or other independent
review of the legal validity of any decision by administrative authorities relating to the authorisation
of use as mentioned in Article 31 of the TRIPS Agreement.
The decision of the Director of the Bureau of Legal Affairs (BLA) of the Intellectual Property
Office (IPO), in cases involving petitions for com pulsory licensing, may be appealed to the Director
General of the IPO.  The decision of the Director General may  be appealed with the Court of Appeals
and, finally, to the Supreme Court.51
8. Does your legislation, in accordance with Article 27.1 in combination with Article 31 of theTRIPS Agreement, consider impor tation as "working" a patent (and therefore preclude compulsory
licensing, if a product is being imported)?
Yes, importation of the patented article shall constitute working or using the patent.
52
9. Does your legislation provide for the principle of the reversal of burden of proof in a process
patent litigation?  Please cite the relevant provisions of law.
Yes.  The IP Code provides:
"If the subject matter of a patent is a process for obtaining a product, any identical product
shall be presumed to have been obtained through the use of the patented process if the product
is  new or there is substantial likelihood that the identical product was made by the process
and the owner of the patent has been unable despite reasonable efforts, to determine theprocess actually used.  In ordering the defendant to prove that the process to obtain the
identical product is different from the patented process, the court shall adopt measures to
protect, as far as practicable, his manufacturing and business secrets."
53
D. PROTECTION OF UNDISCLOSED INFORMATION
10. Please explain in detail if your legislation ensures that undisclosed test or other data
submitted by an applicant to the responsible State agency in the procedure for market authorisation of
                                                     
50 Act No. 3815 (1930), as amended,  Art. 186.
51 Rep. Act No. 8293 (1998), Section 7.1 (b); Rules of Court, Rules, 43, 45 and 65.
52 Rep. Act No. 8293 (1998) , Sec. 93.5.
53 Rep. Act No. 8293 (1998), Sec.78.IP/C/W/272
Page 15
a pharmaceutical or of an agricultural chemical product is protected against disclosure and against
unfair commercial use by a competitor, for example by prohibiting a second applicant from relying
on, or from referring to the original data of the first applicant, when applying subsequently for market
authorisation for his own product.  Does your legisl ation provide for exceptions to this? If yes, under
what conditions would such exceptions apply?  Does your legislation set a specific term of protectionfor undisclosed test or other data of the first applicant?
The Food, Drug and Cosmetic Act enumerates several prohibited acts, among which is an act
violative of the protection of undisclosed information, to wit:
"The using by any person to his own advantage, or revealing, other than to the Secretary of
Health or officers or employees of the Departme nt of Health or to the courts when relevant
in any judicial proceeding under this Act, any  information acquired under authority of
Section Nine, or concerning any method or process which as a trade secret is entitled to
protection."
54
As an exception, the Secretary of Health  may cause to be disseminated information regarding
food, drugs, devices, or cosmetics in situations involving the imminent danger to health, or gross
deception of the consumer. The Secretary of Health shall not be prohibited from collecting, reporting
and illustrating the results of the investigations of the Department of Health.55
Recently, the Bureau of Food and Drugs (BFAD)  ordered all its employees to observe strict
confidentiality in the handling of documents.  Administrative sanctions may be imposed on violatorsand there is possibility of criminal prosecution.
56
Moreover, the protection given to undisclosed information also finds its bases in the general
laws of the Philippines which provides that:
"The State 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 period as may be provided by law."57
The Revised Penal Code also penalizes the infidelity of public officers in the custody of
documents, as can be seen in the following provisions:
"Revelation of secrets by an officer.- Any pub lic officer who shall reveal any secret known
to him by reason of his official capacity, or shall wrongfully deliver papers or copies ofpapers of which he may have charge and which should not be published …."
58
"Public officer revealing secrets of private individual.- Any public officer to whom the
secrets of any private individual shall become known by reason of his office who shall reveal
such secrets … ."59
Private persons may also be criminally liable for revelation of secrets :
"Revealing secrets with abuse of office. … an y manager, employee, or servant who, in such
capacity, shall learn the secrets of his principal or master and shall reveal such secrets."60
                                                     
54 Rep. Act No. 3720 (1963), Chapter VI, Sec. 11.
55 Rep. Act. No. 3720 (1963) ,Chapter XI, Sec. 29.
56 BFAD Order No. 27-A, series of 2001.
57 Constitution (1987), Article XIV, Section 13.
58 Revised Penal Code, Article 229.
59 Revised Penal Code , Art.230.IP/C/W/272
Page 16
"Revelation of industrial secrets. … the pe rson in charge, employee or workman of any
manufacturing or industrial establishment who, to the prejudice of the owner thereof, shall
reveal the secrets of the industry of the latter."61
E. ENFORCEMENT
11. Please indicate remedies provided by your legislation, which constitute effective deterrents to
infringements of intellectual property rights.
The Philippines legal system recognizes the rights of inventors, artists and other gifted citizens
to their intellectual creations and provides criminal, civil and administrative procedures and remedies
that effectively deter infringement of intellectual property rights.
The 1987 Constitution
Philippine Constitution mandates the State to 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 period as may be provided by law.62
Republic Act No. 8293
The IP Code established the Intellectual Property Office that administers and implements
State policies related to the protection of intellectual property rights.  The Intellectual Property Officealso coordinates with other government agencies and private sectors in formulating and implementing
plans and policies to strengthen the protection of intellectual property rights.
The IP Code allows the institution of criminal, civil and administrative actions for acts of
infringement.  The provisional remedies of preliminary attachment, preliminary injunction,impounding and destruction, seizure and impounding may be availed pending the resolution of the
action.
In criminal actions, penalties of imprisonment, fines of as high as One million five hundred
thousand pesos (P1,500,000.00), and subsidiary imprisonment in cases of insolvency may be imposed.
In civil actions for patent infringement, the court may award damages not exceeding three (3)
times the amount of actual damages sustained. If damages cannot be readily ascertained, the court
may award damages equivalent to reasonable royalty.
In trademark infringement, the court may award damages equivalent to the reasonable profit, or
the profit which defendant actually made out of the infringement. If damages cannot be readily
ascertained, the court may award damages equivalent to a percentage of the gross sales of thedefendant.  Damages may be doubled if there is actual intent to mislead the public or defraud
complainant.
In copyright infringement, the court may award actual damages sustained including the profits,
which the infringer may have made due to such infringement, or such damages as may be just under
the circumstances.
                                                                                                                                                                    
60 Revised Penal Code , Art.291.
61 Revised Penal Code , Art.292.
62 Sec. 13, Art. XIV.IP/C/W/272
Page 17
The court may also award attorney’s fees and other forms of damages such as moral, nominal,
temperate, liquidated and exemplary damages arising from the defendant’s wrongful acts.
In administrative actions, the Intellectual Property Office shall exercise exclusive original
jurisdiction in administrative complaints for violati ons of laws involving intellectual property rights
provided the total damages claimed are not less than Two hundred thousand pesos (P200,000.00).
Republic Act No. 8792
Republic Act No. 8792 which is also known as the Electronic Commerce Act provides for the
recognition and use of electronic commercial and non-commercial transactions and imposes penalties
for unlawful use thereof.  This law considers the ac t of piracy as including the unauthorized copying,
reproduction, dissemination, distribution, importation, use, removal, alteration, substitution,
modification, storage, uploading, downloading, co mmunication, making available to the public, or
broadcasting of protected material, electronic signature or copyrighted works including legallyprotected works, through the use of telecommunicati on networks, such as but not limited to internet,
in a manner that infringes intellectual property rights.
Executive Order No. 60
Executive Order No. 60 created the Inter-Agency Committee on Intellectual Property Rights
whose functions include the following:
a. Recommend policies and coordinate the policy making process in the Executive
Branch of the Government vis-a-vis protection and enforcement of intellectual
property rights;
b. Coordinate with the different agencies of the Executive, Legislative and Judicial
Branches of the Government in order to effectively address the problem areas arising
from infringement and counterfeiting of intellectual property rights;
c. Enlist the assistance of any branch, department, bureau, office, agency or
instrumentality of the Government, including government-owned and controlled
corporations, in the anti-piracy and counterfeiting drive, which may include the use of
its personnel, facilities and resources for a more resolute prevention, detection and
investigation of violations of laws enumerated in paragraph (d) hereof, and
prosecution of criminal and administrative cases;
d. Cause and direct the immediate investigation and speedy prosecution of cases
involving violations of copyright, trademarks, patents and other intellectual property
related laws or such intellectual theft-related cases that is referred to the Committee.
Customs Administrative Order No. 7-93
Customs Administrative Order No. 7-93 provides the rules and regulations for preventing the
importation of goods or products that infringe upon the property rights of patentholders, trademark
and copyright owners protected by laws.
Presidential Decree No. 1987
Presidential Decree No. 1987 which created th e Videogram Regulatory Board (VRB) granted
the VRB the power to supervise, regulate, grant, deny, or cancel permits for the importation,
exportation, production, copying, sale, lease, exhibition or showing of videograms including, amongIP/C/W/272
Page 18
others, videotapes, discs, cassettes or any technical improvement or variation thereof.  The VRB has
jurisdiction over violations involving videograms.
P. D. No. 1987 and its implementing rules and regulations require all persons engaged in the
videogram business of production, reproduction, impor tation, exportation, distribution, sale, rental, or
public exhibition to register with the Board.
In addition, no person may engage in the business of production, reproduction, importation,
exportation, exhibition, distribution, sale, rental or public exhibition of videograms without a
commercial license from the VRB. The commercial license shall be issued to qualified persons
registered with the Board upon payment of the license fee fixed by it and shall be valid for a period as
determined by the VRB.
In the exercise of its regulatory and supervisory powers, the Board or its duly authorized
representative shall be allowed free and unhindered entry into the business premises of all producers,
reproducers, distributors, dealers, retailers, and public exhibitors of videograms, in order to inspect
such videograms and to determine compliance with P.D. 1987 and the pertinent rules and regulations.
House Bill No. 11855
House Bill No. 11855 was a pending legislati on in the Eleventh Congress before its
adjournment last February. This bill which will be re-filed in the Twelfth Congress. seeks to expand
the authority of the VRB and curtail the entertainment media piracy in the Philippines.
Under this bill, entertainment media shall refer to videograms, phonograms, interactive
entertainment software, optical discs, recorded in any format containing audio and/or visual images
and sound of any motion picture or cinematographic art or work, performance, event, musical, literary
or other works.  Entertainment media containing musical works shall include music videos, such asvideoke or karaoke, recorded in any format with or without visual images.
Optical disc shall refer to a type of optical media, including but not limited to compact discs
(CD), CD-Read Only Memory, Digital Versatile Disc (DVD), Video Compact Disc (VCD), laser or
videodiscs and any technical variation now know n or still to be devised in the future.
12. Please describe any new initiatives that are planned to improve enforcement of intellectual
property rights in your country, particularly initiatives related to criminal enforcement.
Philippine government is actively and constantly pursuing new initiatives to address the issue
of enforcement whether by way of new legislations, issuances of rules and regulations or activities
that will support effective enforcement.  A number of these initiatives are:
1. The recently enacted Republic Act No. 8792 or the Electronic Commerce Act
includes increased penalties for IP violation through the use of telecommunication,
and penalties for cyber crimes namely, hacking and piracy.
2. There are pending bills with the Philippine legislature relating to the protection of
intellectual property rights:
a. House Bill No. 9827 and Senate Bill No. 1989 (both approved on third
reading) refer to the protection of layout-designs of integrated circuits as an
intellectual property creation.  The bill was certified for immediate enactmentby President Gloria Macapagal-Arroyo and is expected to be ratified uponIP/C/W/272
Page 19
resumption of the 12th Congress in June 2001 and to be signed immediately
into law by the President.
b. House Bill No. 10654 (approved on third reading) and Senate Bill No. 1912
aim to provide sui generis  protection to plant varieties.
c. House Bill No. 11855 the Entertainment Media Regulatory and Anti-Piracy
Act which expands the powers and jurisdiction of the Videogram Regulatory
Board to cover optical disks and increase penalties for IP violations.
d. House Bill No. 8916 on Cable TV was approved by the House of
Representatives and Senate Committee Report No. 382 recommended the
adoption of the bill.
3. The Intellectual Property Office issued the Rules and Regulations governing
administrative complaints on violations of intellectual property rights and has startedto provide this remedy starting 26 April, 2001, on the occasion of the first World IP
Day.
4. On 28 May 2001, the Intellectual Property Office will start to accept cases for dispute
resolution on technology transfer payment and violations of author’s rights to public
performance or communication of his work.
5. The Intellectual Property Office is aggressively involved in education campaign,
which includes:
- inclusion of IP in education curriculum
- conduct of seminar/workshops all over the country
- media airing of plug-in production against piracy, e.g. radio, television, cable
TV.
6. Dialogue and public sector consultations for effective IP enforcement:
- the Presidential Inter-Agency Committee on IPR conducts inter-action
meetings in the regions and provinces in order to provide a forum for law
enforcers, the business and consumer sectors to share  experiences andconcerns relating to IP enforcement and to increase cooperation and
collaborative efforts in intellectual property protection.
- the Presidential Inter-Agency Committee on IPR allocates a portion of its
monthly meetings for consultations with various IP sectors, e.g. copyright
owners, IP practitioners and shopping mall owners on ways and means to
protect IPRs
7. The Intellectual Property Office provides technical assistance in the formation of
collecting societies to strengthen enforcement of  the economic rights of copyright
and neighbouring rights owners.
8. The Intellectual Property Office seeks assistance from funding institutions and
negotiates for strengthening of IP enforcement in the country, e.g. the proposed
project on the formulation of the Rules and Regulations to further enhance BorderControl Measures.IP/C/W/272
Page 20
9. Membership in international treaties/conventions for the protection of intellectual
property rights, e.g. Patent Cooperation Treaty which will enter into force with
respect to the Philippines on 17 August, 2001 and the WIPO Internet Treaties which
will be submitted to the Philippine Senate for accession.
__________