RESTRICTEDWORLD TRADE
ORGANIZATIONIP/C/W/272/Add.1
20 July 2001
(01-3606)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION
Responses from the Philippines to the questions posed by the United States
Addendum
By means of a communication from the Permanent Mission of the Philippines dated 18 June
2001, the Secretariat has received copies of the following responses to the questions posed by the
United States, as circulated in document IP/C/W/268.
_______________
A. GENERAL
1. Please describe, in relation to each form of intellectual property covered by the TRIPS
Agreement, including plant variety protection, the manner in which nation treatment and most
favoured nation treatment are provided to nationals of other WTO Members.
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 tointellectual 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 the
Intellectual Property Code.
1
Trademarks, Service Marks, Tradenames, and Marked or Stamped Containers
An application for registration of a mark filed in the Philippines by a person referred to above,
and who previously filed an application for registration of the same mark in one of those countries,shall be considered filed as of the day the application was first filed in the foreign country.
2  An
application claiming priority right must be filed within six (6) months from the date the earliest
foreign application was filed. A certified copy of the corresponding foreign application together with
an English translation must be filed within three (3) months from the date of filing in the Philippines.3
                                                     
1 Republic Act No. 8293, Sec. 3.
2 Rules and Regulations on Trademarks, Service Marks, Tradenames, and Marked or Stamped Containers,
Rule 202 (a).
3 Rules and Regulations on Trademarks, Service Marks, Tradenames, and Marked or Stamped Containers,
Rule 203.IP/C/W/272/Add.1
Page 2
Any foreign national or juridical person whether or not engaged in the business in the
Philippines may bring a petition for opposition, or cancellation provided, that the country of which
he/she/it is a national, or domiciled, or has a real and effective industrial establishment is a party to
any convention, treaty, or agreement relating to intellectual property right or the repression of unfair
competition, to which the Philippines is also a party, or extends reciprocal rights to nationals of
Philippines by law.4
Utility Models and Industrial Design
An application for utility model filed by any person who has previously applied for the same
utility model in another country which by treaty, convention, or law affords similar privileges to
Filipino citizens, shall be considered filed as of the date of filing the foreign application, provided,
that (a) the local application expressly claims prior ity; (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.5
An application for design filed by any person who has previously applied for the same design
in another country which by treaty, convention, or law affords similar privileges to Filipino citizens,
shall be considered filed as of the date of filing the foreign application, provided, that (a) the local
application expressly claims priority; (b) it is filed within six (6) months from the earliest filing date
of the corresponding foreign application; 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.6
Any foreign national or juridical person whether or not engaged in business in the Philippines
may bring a petition for cancellation or compulsory licensing, provided, that the country of which
he/she/it is a national, or domiciled, or has a real and effective industrial establishment is a party to
any convention, treaty, or agreement relating to intellectual property right or the repression of unfaircompetition, to which the Philippines is also a party, or extends reciprocal rights to nationals of
Philippines by law.
7
Inventions
An application for patent filed by a 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 filed as of the date of filing of  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.8
Any foreign national or juridical person whether or not engaged in business in the Philippines
may bring a petition for cancellation or compulsory licensing, provided, that the country of which
he/she/it is a national, or domiciled, or has a real and effective industrial establishment is a party to
any convention, treaty, or agreement relating to intellectual property right or the repression of unfair
                                                     
4 Regulations on Inter Partes Proceedings (Petition for Can cellation of a Mark, Patent, Utility Model, Industrial
Design, Opposition to Registration of a Mark, and Compulsory  Licensing), Rule  2, Sec. 4.
5 Rules and Regulations on Utility Models and Industrial Designs, Rule 204.
6 Rules and Regulations on Utility Models and Industrial Designs, Rule 305.
7 Regulations on Inter Partes Proceedings (Petition for Can cellation of a Mark, Patent, Utility Model, Industrial
Design, Opposition to Registration of a Mark, and Compulsory Licensing), Rule 2, Sec. 4.
8 Rules and Regulations on Inventions, Rule 305.IP/C/W/272/Add.1
Page 3
competition, to which the Philippines is also a party, or extends reciprocal rights to nationals of
Philippines by law.9
Copyright and Related Rights
Any person who is a national or who is domiciled or has a real and effective industrial
establishment in the 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 the
Intellectual Property Code.10
Plant Varieties
The pending Senate Bill 1912 provides that any application filed locally for a Certificate of
Plant Variety Protection previously granted to a breeder in another country, which by treaty,
convention, or law affords similar privileges to Filipino citizens, shall be issued a Certificate uponpayment of dues and compliance with all provisions of this proposed law.  This shall also apply to the
nationals of foreign countries that are members of intergovernmental organizations or party to any
multilateral agreement or convention.
11
Geographical Indication 12
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 IPR or
repression of unfair competition, to which the Philippines is also a party, or extends reciprocal rights
to nationals of the Philippines by law, shall be entitled to benefits to the extent necessary to give effectto any provision of such convention, treaty or law, in addition to the rights to which any owner  of an
IPR  is otherwise entitled under the Intellectual Property Code. 
13
Thus, any foreign national or juridical person whether or not engaged in the business in the
Philippines may bring a petition for opposition or cancellation, provided, that the country of which
he/she/it is a national, or domiciled, or has a real and effective industrial establishment is a party toany convention, treaty, or agreement relating to intellectual property right or the repression of unfair
competition, to which the Philippines is also a party, or extends reciprocal rights to nationals of
Philippines by law.
14
                                                     
9 Regulations on Inter Partes Proceedings (Petition for Can cellation of a Mark, Patent, Utility Model, Industrial
Design, Opposition to Registration of a Mark, and Compulsory Licensing), Rule 2, Sec.  4.
10 Copyright Safeguards and Regulations, Rule 18, Sec. 2.
11 Senate Bill 1912, Sec. 24.
12 Defined in Rule 101, (g) of the Rules and Regulations  on Trademarks, Service Marks, Trade Names and Marked
or Stamped Containers in relation to Article 123 (g) of  Republic Act No. 8293. Sections 169 and 170 of Republic Act
No. 8293 provide for the criminal and civil liabilities of persons who misrepresent as regards geographical origins.
13 Republic Act No. 8293, Sec. 3.
14 Regulations on Inter Partes Proceedings (Petition for Can cellation of a Mark, Patent, Utility Model, Industrial
Design, Opposition to Registration of a Mark, and Compulsory Licensing), Rule 2, Sec. 4.IP/C/W/272/Add.1
Page 4
Integrated Circuits
A proposed law15 has been passed by Congress and awaiting approval by the President
providing for the protection of Lay-out Design (Topography) of Integrated Circuits amending certain
provisions of R.A. No. 8293.
The protection of Intellectual Property Right under this amendment would be accorded to 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 Right
or repression of unfair competition, to which the Philippines is also a party, or extends reciprocal
rights to nationals of the Philippines by law, and who shall be entitled to benefits to the extent
necessary  to give effect to any  provision of such  convention, treaty or law, in addition  to the rights
to which any owner  of an Intellectual Property Right  is otherwise entitled under the Intellectual
Property Code.16
Undisclosed Information
The laws of the Philippines protect undisclosed information.17  Protection of undisclosed
information extends to 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 Right or repression of unfair competition, to which the Philippines is also aparty, or extends reciprocal rights to nationals of the Philippines by law, and who shall be entitled to
benefits to the extent necessary to give effect to any provision of such  convention, treaty or law, in
addition to the rights to which any owner of an Intellectual Property Right is otherwise entitled under
the Intellectual Property Code.
18
Protection Against Anti-Competitive Practices in Contractual Licensing
In addition to the Constitutional prohibition on combination in restraint of trade or unfair
competition,19 the Civil Code and Revised Penal Code provision on unfair competition,20 the
Intellectual Property Code and the implementing Rules and Regulations on Voluntary Licensing
enumerate the prohibited clauses in a contract, which have adverse effects on competition and trade.21
As such, the protection in connection with anti-competitive practices, likewise, entitles a
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 Right
or repression of unfair competition, to which the Philippines is also a party, or extends reciprocalrights to nationals of the Philippines by law in addition to the rights to which any owner of an
Intellectual Property Right is otherwise entitled under the Intellectual Property Code.
22
                                                     
15 Senate Bill No. 1989 entitled "An Act Providing for the Protection of Lay-out Design (Topography) of
Integrated Circuits Amending for the Purpose Certain Provisions of Republic Act 8293 Otherwise Known as the Intellectual
Property Code of the Philippines and for Other Purpose" was approved by the Philippine Senate on 5 June, 2001, and due forsigning into law by the President of the Philippines.
16 Republic Act No. 8293, Sec. 3.
17 Revised Penal Code of the Philippines, Articles 229, 230, 291 and 292; Book IV of the Civil Code of the
Philippines providing for the obligations, liabilities and remedies under contractual and non-contractual situations; and
Section 150.2 of Republic Act No. 8293 providing for the confid entiality of the contents of license contracts submitted to the
IPO all protect undisclosed information.
18 Republic Act No. 8293, Sec. 3.
19 Philippine Constitution, Article XII, Sec. 1.
20 Revised Penal Code of the Philippines, Article 186; Civil Code of the Philippines, Article 28 on Unfair
Competition.
21 Republic Act No. 8293, Sec. 87.
22 Republic Act. No. 8293, Sec. 3.IP/C/W/272/Add.1
Page 5
Others
As to other groups of intellectual property rights which have not been specifically provided
for in the implementing rules and regulations, the ca tch-all provision of the Intellectual Property Code
on International Convention and Reciprocity,23 stated in the first paragraph above, applies. Please note
that the Philippines adopts the generally accepted principles of international law as part of the law ofthe land and adheres to the policy of amity with all nations.
24 By signing the Agreement on Trade
Related Aspects of Intellectual Property Rights, the Philippines has effectively adopted all the
provisions of said international agreement as "p art of the law of the land."  Under the doctrine of
incorporation, which the Judiciary consistently upheld,25 international law is made part of Philippine
laws without the necessity for an implementing municipal law.
B. COPYRIGHT AND RELATED RIGHTS
2. Please explain how the copyright law of th e Philippines  protects computer programs as
literary works  and complications of data as required by Article 10 of the TRIPS Agreement.
Philippine law includes computer programs in the enumeration of "literary and artistic works"
protected by copyright.26  These works are protected from the moment of creation by the sole fact of
their creation, irrespective of their mode or form of expression, as well as their content, quality and
purpose.27
Notwithstanding exclusive reproduction right, the reproduction in one (1) back-up copy or
adaptation of a computer program shall be permitted, without the authorization of the author of, or
other owner of copyright in, a computer program, by the lawful owner of that computer program:
Provided, that the copy or adaptation is necessary for: (a) The use of the computer program in
conjunction with a computer for the purpose, and to the extent, for which the computer program has
been obtained; and (b) for archival purposes, and, for the replacement of the lawfully owned copy of
the computer program in the event that the lawfully obtained copy of the computer program is lost,
destroyed or rendered unusable.28 Any such copy or adaptation of the computer program shall be
destroyed in the event that continued possession thereof ceases to be lawful.29
Philippine law protects by copyright "compilations of data and other materials which are
original by reason of the selection or coordination or arrangement of their contents" as derivative
works.30  However, such new work shall not affect the force of any subsisting copyright upon the
original works employed or any part thereof, or be  construed to imply any right to such use of the
original works, or to secure or extend copyright in such original works.31
The author of a copyrightable computer program and compilation of data enjoys economic
rights as well as moral rights during the life of the author and for fifty (50) years after his death.32
3. Article 11 of the TRIPS Agreement requires that rental rights for computer programs and
cinematographic works be available.  Please cite to the corresponding provision of the copyright law
of the Philippines.
                                                     
23 Republic Act. No. 8293, Sec. 3.
24 Philippine Constitution, Article II, Sec. 2.
25 Kuroda v. Jalandoni 42 OG 4282; Co Kim Chan v. Valdez Tan Keh 75 Phil. 113.
26 Sec. 172.1, Rep. Act No. 8293, The Inte llectual Property Code of the Philippines.
27 Sec. 172.2, Rep. Act No. 8293, The Inte llectual Property Code of the Philippines.
28 Sec. 189.1, Rep. Act No. 8293, The Inte llectual Property Code of the Philippines.
29 Sec. 189.2, Rep. Act No. 8293, The Inte llectual Property Code of the Philippines.
30 Sec. 173.1(b), Rep. Act No. 8293, The In tellectual Property Code of the Philippines.
31 Sec. 173.2, Rep. Act No. 8293, The Inte llectual Property Code of the Philippines.
32 Sec. 213.1, Rep. Act No. 8293, The Inte llectual Property Code of the Philippines.IP/C/W/272/Add.1
Page 6
Section 177.4 of the Intellectual Property Code provides that copyright or economic rights
shall consist of the exclusive right to carry out, authorize or prevent the rental of the original or a copy
of an audiovisual or cinematographic work, or a computer program, irrespective of the ownership of
the original or the copy which is the subject of the rental.
4. Please describe the protection the copyright law of the Philippines provides for performers,
and the term of the protection.
Philippine law grants to performers exclusive rights of authorizing: (a) the broadcasting and
other communication to the public of their performance and the fixation of their unfixed
performance33; (b) the direct or indirect reproduction of their performances fixed in sound recordings,
in any manner or form34; (c) the first public distribution of the original and copies of their
performance fixed in the sound recording through sale or rental or other forms of transfer of
ownership35; (d) the commercial rental to the public of the original and copies of their performances
fixed in sound recordings, even after distribution of them by, or pursuant to the authorization by the
performer36; and (e) the making available to the public of their performances fixed in sound
recordings, by wire or wireless means, in such a way that members of the public may access them
from a place and time individually chosen by them.37 The rights granted in (a) are maintained and
exercised by the performer's heirs (or the government in the absence of heirs) fifty (50) years after hisdeath.
38
However, the above-cited economic rights cease once the performer has authorized the
broadcasting or fixation of his performance.39
Independently of the performer’s economic rights, performers enjoy moral rights over live
aural performances or performances fixed in sound re cordings: (a) to claim to be identified as the
performer of his performances; and (b) to object to any distortion, mutilation or other modification of
his performances that would be prejudicial to his reputation.40
Philippine law also grants to performers, in every communication to the public or broadcast of
a performance subsequent to the first communication or broadcast thereof by a broadcasting
organization, the right to an additional remuneration equivalent to at least five percent (5%) of theoriginal compensation he received fo r the first communication or broadcast.
41 Nevertheless,
performers have the right to agree on more favorable terms and conditions in their contracts with
respect to any use of their performance.42
The rights granted to performers of sound recordings expire fifty (50) years from the end of
the year in which the performance took place or the fixation was made.43
5. Article 14.2 of the TRIPS Agreement provides that producers of phonograms are to enjoy the
right to authorize or prohibit the direct or indirect reproduction of their phonograms.  Article 14.2
requires that producers of phonograms are to have the right to authorize or prohibit the commercial
rental to the public of originals or copies of their phonograms.  Please describe how the copyright
                                                     
33 Sec. 203.1(a) and (b), Rep. Act No. 8293, The Intellectual Property Code of the Philippines.
34 Sec. 203.2, Rep. Act No. 8293, The Inte llectual Property Code of the Philippines.
35 Sec. 203.3, Rep. Act No. 8293, The Inte llectual Property Code of the Philippines.
36 Sec. 203.4, Rep. Act No. 8293, The Inte llectual Property Code of the Philippines.
37 Sec. 203.5, Rep. Act No. 8293, The Inte llectual Property Code of the Philippines.
38 Sec. 204.2, Rep. Act No. 8293, The Inte llectual Property Code of the Philippines.
39 Sec. 205.1, Rep. Act No. 8293, The Inte llectual Property Code of the Philippines.
40 Sec. 204.1, Rep. Act No. 8293, The Inte llectual Property Code of the Philippines.
41 Sec. 206, Rep. Act No. 8293, The Intellectual Property Code of the Philippines.
42 Sec. 207, Rep. Act No. 8293, The Intellectual Property Code of the Philippines.
43 Sec. 215.1(a) and (b), Rep. Act No. 8293, The Intellectual Property Code of the Philippines.IP/C/W/272/Add.1
Page 7
law of the Philippines implements these obli gations and indicate the term of protection.
Philippine law grants to producers of sound recordings exclusive rights: (a) to authorize the
direct or indirect reproduction of their sound record ings, in any manner or form; the placing of these
reproductions in the market and the right of rental or lending; and (b) to authorize commercial rental
to the public of the original and copies of their sound recordings, even after distribution by them by orpursuant to authorization by the producer.
44
The term of protection for the rights granted to producers is fifty (50) years from the end of
the year in which the performance took place or the fixation was made.45
C. TRADEMARKS
6. Please describe the subject matter that can comprise a trademark under the trademark law ofthe Philippines.
Mark means any visible sign. It can be a word, name, symbol, emblem, sign or device.
46
7. Please describe the procedure that must be followed to register a trademark in the
Philippines, citing the relevant provisions of the law, and describe the rights that the owner of aregistered mark can exercise.
Procedure:
An applicant shall fill up the application form and must comply with the following
requirements to be entitled to a filing date:
1. An express or implicit indication that the registration of a mark is sought;
2. The identity of the applicant;
3. Indication sufficient to contact the applicant or his representative, if any;
4. A reproduction of the mark whose registration is sought;
5. The list of the goods or services for which the registration is sought;
6. Payment of the required fee. 47
The office assigns an application number and the filing date of the application once the
requirements are complied with.48   The application undergoes search process on similar marks, after
which, it shall be subjected to substantive examination to determine whether or not the mark is
registrable.49  Once found allowable, the trademark will be published in the Intellectual Property
Office Official Gazette for opposition.50
A mark is registered only if no opposition is filed against its registration. If an opposition is
filed with the Bureau of Legal Affairs, the registration may be granted only if the evidence supports
                                                     
44 Sec. 208.1 and 208.3, Rep. Act No. 8293, The Intellectual Property Code of the Philippines.
45 Sec. 215.1 (a) and (b), Rep. Act No. 8293, The Intellectual Property Code of the Philippines.
46 R.A.8293 Sec.121.1, Sec 121.2, Rule 100 par. (I) of the Trademark Regulations.
47 R.A.8293 Secs.124.1, Sec.127.1, Sec.127.2, Rules 400, 500 & 501 of the Trademark Regulations.
48 R.A.8293 Sec.132.
49 R.A.8293 Sec.133.1, Rule 600, Rule 605 of the Trademark Regulations.
50 R.A.8293 Sec 133.2, Rule 700 of the Trademark Regulations.IP/C/W/272/Add.1
Page 8
the grant and only after the decision in favor of the applicant has become final and executory.51
Thereafter, a certificate of registration is issued and the mark is included in the publication of
registered marks.52
A certificate of registration of a mark is a prima facie evidence of the validity of the
registration, the registrant's ownership of the mark, and of the registrant's exclusive right to use the
same in connection with the goods or services and those that are related thereto specified in thecertificate.
53  Based on the exclusive right to use the mark, the right owner may prevent or stop other
parties from using the same as a business identifier or even as a corporate name.
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 sim ilar to those in respect of which the trademark is
registered where such use would result in a likelihood of a confusion.  In case of the use, of anidentical sign for identical goods or services, a likelihood of confusion shall be presumed.
54
8. Please provide the length and terms of protection the trademark law of the Philippines
provides for a trademark.
A certificate of registration remains in force for ten (10) years55 and may be renewed for
periods of ten (10) years at its expiration.56 The registrant shall file a declaration of actual use and
evidence to that effect within one (1) year from the fifth (5th) anniversary of the date of the registration
of mark.57
D. GEOGRAPHICAL INDICATIONS
9 . Please describe in detail how the laws of the Philippines provide for the recognition and
protection of geographical indications required by Article 22.2 of the TRIPS Agreement, citing to the
relevant provisions of law or regulation, and provide examples of geographical indications so
protected.
Under Philippine laws, a mark cannot be registered if it is likely to mislead the public,
particularly as to the nature, quality, characteristics or geographical origin of the goods or services.
Geographical indications are indications which identify a good as originating in the territory of a
country which is a member of, or a region or locality in that territory, where a given quality,reputation or other characteristic of the good is essentially attributable to its geographical origin.
58
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, in commercial advertising or promotion,
misrepresents the geographic origin of his or her or another person’s goods, services, or commercial
activities, shall be liable to a civil action for damages and injunction by any person who believes that
he or she is or likely to be damaged by such act,59 as well as criminal penalty of 2-5 years and fine
50,000-200,000.60
                                                     
51 R.A. 8293 Sec.134 Rule 703 of the Trademark Regulations, Rule 7 on Inter Partes Proceeding.
52 R.A.8293 Sec.136, 138&139, Rule703 of the Trademark Regulations.
53 R.A.8293 Sec.138.
54 R.A.8293 Sec.147, Rule 800 of the Trademark Regulations.
55 R.A.8293 Sec.145, Rule 801 of the Trademark Regulations.
56 R.A.8293 Sec.146, Rule 917, 918 of the Trademark Regulations.
57 R.A.8293 Sec.145, Rule 801 of the Trademark Regulations.
58 R.A.8293 Sec 123.1, Rule 101 par.(g) of the Trademark Regulations.
59 R.A.8293 Sec.169.1.
60 R.A.8293 Sec.170.IP/C/W/272/Add.1
Page 9
Any goods marked or labelled misrepresenting the geographic origin shall not be imported
into the Philippines or admitted entry at any customhouse of the Philippines.61
Furthermore, the Minimum Labeling Requirement for Consumer Products requires inclusion
of the address of the manufacturer, importer, repacker, of the consumer product in the Philippines;
country of manufacture, if imported.62
10. Please describe in detail the manner in which the higher level of protection required forwines and spirits under Article 23.2 of the TRIPS Ag reement is implemented, citing to the relevant
provisions of law or regulation, and provide examples of geographical indications for such products.
The Protection of geographical indications specifically in respect to wines and spirits pursuant
to Article 23.2 of the TRIPS Agreement is provided under the existing trademark law regimeconsidering that trademarks and geographic indications perform similar functions: as source
identifiers, indicators of quality and promote goods and services.
An administrative remedy of cancellation of mark is available in case the registrant misleads
the public as to the geographic origin of the goods or services.
63
E. INDUSTRIAL DESIGNS
11. Please describe the procedure that must be followed to obtain protection for textile designs
and cite to the relevant provisions of law or regulation.
Textile designs can be protected by industrial design registration64. The industrial design
application shall contain the following elements, to wit:
(a) a completely filled-out request form containing the name and address of the applicant
or where the applicant is not the designer, a statement indicating the origin of the
right to the industrial design; and, indicating that the design shall be applied to textile;
(b) A representation of the article of manufacture or handicraft by way of drawings,
photographs or other adequate graphic representation of the design as applied to the
article of manufacture or handicraft which clearly and fully discloses those features
for which design protections is claimed65;
(c) the prescribed filing fee.
    Upon completion of the aforesaid requirements, the application will be given a filing date and
application number, and the same will be assigned to the patent examiner for formality examination66.
The filing fee may be paid within one (1) month from the date the application was received by
the office67.
     
If the application meets the requirement for registrability, the examiner shall forward to the
applicant a notice of registrability requiring the payment for the issuance and publication fees. Upon
                                                     
61 R.A.8293 Sec.169.2.
62 R.A.7394 Consumer Act of the Philippines, [Art.77 par.(d) viii].
63 R.A.8293 Sec.151, Rule 8 on Inter Partes Proceeding.
64 Rule 309 of the IRR for Utility Models and Industrial Designs.
65 Rep. Act No. 8293, Sec. 114, paragraph (d).
66 Rules 307 and 308 of the IRR for Utility Models and Industrial Designs.
67 Rule 310 of the IRR for Utility Models and Industrial Designs.IP/C/W/272/Add.1
Page 10
payment of the required fees, a certificate of registra tion shall be issued to the applicant.  In case the
application fails to meet the requirements for registrability, the examiner shall submit to the applicant
a formality examination report pointing out the informalities and defects thereof.
The applicant may respond to the examiner’s formality examination report by (1) voluntarily
withdrawing the applic ation, (2) amending the application, or (3) upon payment of the required fee,
requesting for a registrability report.  The registrability report shall contain citations of relevant priorart documents with appropriate indications as to thei r degree of relevance, which will serve as an aid
to determine the validity of the industrial design in respect to newness.
The applicant shall be given a time limit of six (6) months to respond to the examiner’s
formality examination report
68.  If the applicant fails to prosecute his application within the required
time, the application shall be deemed withdrawn. An application deemed withdrawn for failure to
prosecute may be revived as a pending application within a period of four (4) months from mailing
date of the notice of withdrawal69.
    
Textile designs are also protected under the Philippine Law on Copyright.70
F. PATENTS
12. Please describe in detail the way in which the patent law of the Philippines implements
Article 27 of the TRIPS Agreement, indicating any exceptions provided for, and including details
regarding the protection for micro-organisms and no n-biological and microbiological processes and
plant varieties.  Please cite to the relevant provisions of the law.
A comparison of Article 27 of the TRIPS Agreement and Philippine Law will show how the
Philippine patent law complies with Article 27.
TRIPS Agreement,
Article 27Philippine Patent Law,
Sections 21 and 22, Rules 200 and 202
1. Patents may be available for any
invention whether products or processes,
in all fields of technology…
…provided that they are new, involve an
inventive step or are capable of industrial
application.(Patentable and Non-patentable
inventions)
Patents may be granted to any technical
solution to a problem in any field of
human activity which may relate to a
product, or a process , or an improvement
of any of the foregoing71…
…which is new, involves an inventive
step and is industrially applicable72
                                                     
68 Rule 452 of the IRR for Utility Models and Industrial Designs.
69 Rule 453 of the IRR for Utility Models and Industrial Designs.
70 Rep. Act No. 8293, Sec. 172, paragraph (h).
71 Rep. Act No. 8293, Sec. 21, Rule 200.
72 Rep. Act No. 8293, Sec. 21, Rule 200.IP/C/W/272/Add.1
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2. Members may exclude from
patentability inventions, the prevention
within their territory of the commercial
exploitation of which is necessary toprotect ordre public or morality…..The following shall be excluded from
patent protection:
a) anything which is contrary to public
order or morality
73
3. Members may exclude frompatentability:
a) diagnostic, therapeutic and surgical
methods for the treatment of humans or
animals;
b)  plants and animals other than micro-
organisms, and essentially biological
processes for the production of plants or
animals, other than non-biological and
microbiological processes.
However, Members shall provide for the
protection of plant varieties either by
patents or by an effective sui generis
system or by any combination thereof.b)  methods of treatment of the human  or
animal body by surgery or therapy and
diagnostic methods practiced on thehuman or animal body  except products
and compositions for use in any of these
methods 
74
c)  plant varieties or animal breeds oressentially biological processes for the
production of plants or animals. This
provision shall not apply to micro-
organisms and non-biological and
microbiological processes
75
     This section shall not precludeCongress to consider enacting  a law
providing sui generis  protection of plant
varieties.
76
     [The proposed sui generis  system for
the protection of plant varieties is
pending in Congress77.]
13. Please describe in detail the rights provided patent holders under the patent law of thePhilippines and cite to the relevant provisions of law.
The exclusive rights conferred to the owners of the patent are
78:
- the making, using, offering for sale, selling and importing a patented product, or a
product obtained directly or indirectly from a patented process or the use of a
patented process79
- to assign or transfer by succession the patent and to conclude licensing contracts for
                                                     
73 Rep. Act No. 8293, Sec. 22.6, Rule 202 (f).
74 Rep. Act No. 8293, Sec. 22.3, Rule 202 (c).
75 Rep. Act No. 8293, Sec. 22.4, Rule 202 (d).
76 Rep.Act No.8293, Sec.22.4.
77 House Bill No.1070; Senate Bill No.1912.
78 Rep.Act 8293, Sec.71.
79 Rep.Act No.8293, Sec71.1(a) and (b).IP/C/W/272/Add.1
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sale80.
14. Please describe in detail any provisions in the laws of the Philippines permitting
unauthorized use of a patent, citing to the relevant provisions of law, and describe in detail the
conditions under which such use can occur.
Exceptions to the exclusive rights of owners of patent are:
- where the exploitation of the patent is done privately and on a non-commercial scale
or for a non-commercial purpose81
- where the act of making or using the patent is for the sole purpose of scientific
research and experiment82
- where the patented product was put on the market  in the Philippines  by the owner of
the patent or with his authorization. Putting on the market means sale (includes
renting and gift).  By this sale, the buyer may use the product or possibly resell it
within the Philippines without violating the exclusive right of the owner of the patent.Sale outside of the Philippines of the patented product does not "exhaust" the patent
rights in the Philippines.  Therefore, the owner of the patent may prohibit the
importation into the country of the patented products ( known as parallel imports)
83
- where the act consists of the preparation for individual cases, in a pharmacy or by
medical professional, of a medicine in accordance with a medical prescription84
- where the use of the patented product occurs in vehicles in transit in the country85.
Unauthorized use of a patent in the Philippines is permissible in the following cases:- where a person other than the applicant, who had started using in good faith, the
invention in the  Philippines, or undertaken serious preparations to use the same.
before the filing date or priority date of the application shall have the right to continue
the use thereof (Section 73.1) but this right may only be transferred or assignedfurther with his enterprise or business.
86
- where a Government agency or a third person authorized by the Government exploit
the invention in the interest of public, particularly, national security, nutrition, health
or the development of other sectors, as determined by the appropriate agency of the
Government (Section 74.1(a) ); where the manner of exploitation by the owner of the
patent is anti-competitive (Sec. 74.2)
The Intellectual Property Code provides for a whole chapter enumerating the details and
conditions under which a compulsory license may be granted.
                                                     
80 Rep. Act No.8293, Sec.71.2.
81 Rep. Act No.8293, Sec.72.2.
82 Rep. Act No.8293, Sec 72.3.
83 Rep. Act No.8293, Sec.72.1.
84 Rep. Act. No. 8293, Sec. 72.4.
85 Rep. Act No. 8293, Sec. 72.5.
86 Rep. Act No. 8293, Sec. 73.2.IP/C/W/272/Add.1
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1. Valid grounds must exist-
Compulsory licensing may be granted under any of the following circumstances: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 determined by 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, thatthe importation of the patented article shall constitute working or suing the patent.
 87
2. Petitioner must make efforts to obtain authorization from patent owner-
The license 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 have not been successful within a reasonable period of time.88
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 practicedetermined 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 patentin 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. 
89
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;
                                                     
87 Rep. Act No. 8293 (1998), Sec. 93.
88 Rep. Act No. 8293 (1998), Sec. 95.
89 Rep. Act No. 8293 (1998), Sec. 98.IP/C/W/272/Add.1
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b. The license shall be non-exclusive;
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 the patentee's manner ofexploiting 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 wasgranted 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. 
90
15. What term of protection does the patent law of the Philippines provide for patents?  Pleasedescribe any provisions for extension of the term of protection and cite to the relevant provisions ofthe law.
The term of a patent shall be twenty (20 ) years from the filing date of the application
91.
To maintain the patent, an annual fee shall be paid upon the expiration of four (4) years from
the date the application was published and on each subsequent anniversary of such date92, otherwise,
the application is deemed withdrawn or that patent considered lapsed 93.
Payment may be made within three (3) months before the due date.  The obligation to pay the
annual fees shall terminate should the application be withdrawn, refused, or cancelled94.  A grace
period of six (6) months shall be granted for the payment of annual fee, upon payment of the
prescribed surcharge for delayed payment95.
G. LAYOUT -DESIGNS (TOPOGRAPHIES ) OF INTEGRATED CIRCUITS
16. Please describe in detail the protection for layout-designs of integrated circuits provided
under the laws of the Philippines, including the term  of protection, and cite to the relevant provisions
of law.
The Bill for the Protection of Layout-Designs for Integrated Circuits though still pending has
already been approved by both houses of the Philippine Congress.  It could be signed by the President
shortly.
                                                     
90 Rep. Act No. 8293 (1998), Sec. 100.
91 Rep. Act No. 8293, Sec. 54, Rule 1100.
92 Rep. Act No. 8293, Sec. 55.1, Rule 1101.
93 Rep. Act No. 8293, Sec. 55.2, Rule 1103.
94 Rep. Act No. 8293, Sec. 55.1, Rule 1101.
95 Rep. Act No. 8293, Sec. 55.3, Rule 1104.IP/C/W/272/Add.1
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A layout-design of integrated circuits to be registrable must be original.  A lay-out design
shall be considered original if it is the result of the creator’s own intellectual effort and is not
commonplace among creators of layout-designs and manufacturers of integrated circuits at the time of
its creation.  A layout-design consisting of a combination of elements and interconnections that are
commonplace shall be protected only if the combination, taken as a whole, is original96.
Registration of layout-design of integrated circuits shall be valid for a period of ten (10) years,
without renewal, and such validity to be counted from the date of commencement of the protection of
a layout-design accorded to the layout-design97.  The protection of a layout-design shall commence:
(a) on the date of the first commercial exploitation, anywhere in the world, of the layout-
design by or, with the consent of the right holder provided that an application for
registration is filed within two (2) years from such date of commercial exploitation, or
(b) on the filing date accorded to the application for registration of the layout-design if
the layout-design has not been previously exploited commercially anywhere in the
world.
H. PROTECTION OF UNDISCLOSED INFORMATION
17. Please describe in detail how the laws of the Philippines provide for the protection of
undisclosed information as required by Article 39.2 of the TRIPS Agreement and provide citations to
the relevant provisions of law.
Protection of undisclosed information is one of the categories of intellectual property rights
along with patents, trademarks and copyright.98 It is defined as information that is secret in the sense
that it is not, as a body or in the precise configuration and assembly of its components, generally
known among, or readily accessible to persons within the circles that normally deal with the kind of
information in question, has commercial value because it is secret and has been subject to reasonable
steps under the circumstances to keep it secret, by the person lawfully in control of the information.99
The penalty of imprisonment of up to four (4) years and two (2) months and fine not
exceeding five hundred pesos (P500.00) is imposed upon any person or employee of an industrial
establishment who, to the prejudice of the owner thereof,  shall reveal the secrets of the industry of the
latter.100
Employees of the Bureau of Internal Revenue are prohibited from revealing trade secrets of
persons who transact with their office.  An employee or officer may not divulge to any person the
secrets, style of work, or apparatus of any manufacturer, or confidential information regarding the
business of any taxpayer, knowledge of which was acquired by him in the discharge of his official
duties.  If found guilty, the employee or officer may be required to pay a fine of not less than fifty
thousand pesos (P50,000.00) but not more than one hundred thousand pesos (P100,000.00), or suffer
imprisonment of not less than two (2) years but not more than five (5) years or both.101
Information on fuels and fuel additives registered with the Department of Energy which are
considered trade secrets shall be covered by a non-disclosure and confidentiality agreement between
                                                     
96 Sections 113.3 and 113.4 of the Proposed/Approved Bill for the Protection of the Layout-Designs of Integrated
Circuits.
97 Sec. 118.5 of the Proposed/Approved Bill for the Protec tion of the Layout-Designs of Integrated Circuits.
98 Rep. Act No. 8293, Sec. 4.1(g).
99 Rules and Regulations on Voluntary Licensing, Rule 1(o).
100 Act No. 3815,  Art. 292.
101 Rep. Act No. 8424, Sec. 270.IP/C/W/272/Add.1
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the company and the Department of Energy for a period of fifteen (15) years.102
18. Please describe in detail the manner in which protection is provided test data regarding
pharmaceutical and agricultural chemical products submitted to the government in order to obtain
marketing approval in the Philippines and cite to the relevant provisions of law.
Test data regarding pharmaceutical and agricultural products are submitted to and evaluated
by the Bureau of Food And Drugs (BFAD) as re quirements for the registration of said products.103
These data are accorded confidentiality and protection as trade secrets.  Hence, the using by any
person to his own advantage, or revealing, other th an to the Secretary or officers and employees of the
Department or to the courts when relevant in any judicial proceeding under this Act, of any
information concerning any method or process which as a trade secret is entitled to protection, is
prohibited.104 Accordingly, any person who commits any of the aforesaid prohibited acts shall, upon
conviction be subject to imprisonment of not less than one (1) year but not more than five (5) years, or
a fine of not less than five thousand pesos (P5,000.00) but not more than ten thousand pesos
(P10,000.00), or both such imprisonment and fine, in the discretion of the court.105
Moreover, government officials and employees are guided by the Code of Conduct and
Ethical Standards for Public Officials and Employ ees.  As such, they are prohibited from using or
divulging confidential or classified information officially known to them by reason of their office and
not made available to the public either to further their private interests, or give undue advantage to
anyone; or to prejudice public interest.106
The following are the imposable penalties for violation of the above prohibition:
a. Fine not exceeding six (6) months salary or suspension not exceeding one (1) year or
removal depending on the gravity of the offence;
b. Imprisonment not exceeding five (5) years, or fine not exceeding five thousand pesos
(P5,000.00) or both, and in the discretion of the court, disqualification to hold office;
c. Private individuals who participate in conspiracy with public officials or employees
shall be subject to the same penal liabilities as the public officials or employees.107
In general, the Revised Penal Code prescribes offences and their corresponding penalties for
the revelation by a public officer of secrets known to him by reason of his official capacity;108
revealing by public officer of secrets known to him by reason of his office109; revelation of secrets by
a manager or employee or servant110; revelation of industrial secrets by the person in charge,
employee, or workman of any manufacturing or industrial establishment111.
19. Are other applicants for marketing approval for their own versions of a previously approved
pharmaceutical or agricultural chemical products pe rmitted to rely on data submitted by the earlier
applicant?  If so, how long a period of exclusivity is given the earlier applicant before such reliance
                                                     
102 Implementing Rules and Regulations of  Rep. Act No. 8749, Rule XXXVII, Sec. 4.
103 Department of Health Administrative Order No. 67, series of 1989, Section 4.
104 Rep. Act. No. 3720 (1963), Section 11(f), as amended by Executive Order No. 175 (1987), Section 7.
105 Rep. Act. No. 3720 (1963), Section 12(a), as amended by Executive Order No. 175 (1987), Section 9.
106 Rep. Act No. 6713 (1989), Section 7(c).
107 Rep. Act No. 6713 (1989), Section 11.
108 Act No. 3815 (1930), Article 229.
109 Act No. 3815 (1930), Article 230.
110 Act No. 3815 (1930), Article 291.
111 Act No. 3815 (1930), Article 292.IP/C/W/272/Add.1
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becomes possible.
No. On the contrary, the rules are explicit that establishments applying to register a drug
product are required to fully disclose all pertinent documentation and information regarding the
product.  Failure to fully disclose material information about the drug product is a ground for
disapproval of registration application and a basis for withdrawal of the establishment's licence tooperate. Specifically, action on registration application shall be based on the complete set of
specifications of the drug product proposed to appear in the label, i.e. formulation, dosage form,
strength, therapeutic indication and manufacturer. Any change in any of the above specifications will
require a new registration.
112
Furthermore, the application for registration shall be in a form promulgated by Bureau of
Food and Drugs and supported by documents and requirements, which include technical datacontaining the physical description of the product; complete formulation and technical specifications
for raw materials and finished product; process of manufacturing including facilities and control used
in manufacturing and packaging the product; description of all quality tests performed including
Dissolution Test, if applicable, and results obtained and; complete stability data.  Sufficient samples
for laboratory analysis are likewise required to be submitted. In addition, specific requirements areprescribed depending on the classification of drugs, i.e., investigational drug, new drug, established
drug, tried and tested drug.
113 These samples shall be tested by the Laboratory Services Division of
the Bureau of Food and Drugs after the documentary requirements have been evaluated.114
To further safeguard that any drug or device is safe, efficacious and of good quality for use,
the law115 requires that the person who manufactures, sells, offers for sale, imports, exports,
distributes or transfers any drug or device be licensed to operate and that said drug or device be
registered in accordance with the rules promulgated by the Secretary of the Department of Health
(DOH).  In this regard, such persons shall subm it to the DOH through the Bureau of Food and Drugs,
among others, the following: 1) full reports of inve stigations which have been made to show whether
or not such drug or device is safe, efficacious and of good quality for use based on clinical studies
conducted in the Philippines; 2) a full description of the methods used in and the facilities and
controls used for the manufacture of such drug or device; and (3) such samples of such drug or device
and of the articles used as components thereof as the Secretary may require.
  In view of the foregoing, new applicants must submit new test data independently of
previously approved data submitted by earlier applicant.  This is in accord with the policy of the State
to insure safe and good quality of food, drug and cosmetic, and to regulate the production, sale and
traffic of the same to protect the health of the people.116
I. ENFORCEMENT
20. Please describe in detail the manner in which the laws of the Philippines provide for effective
action against infringement of intellectual property rights as required by Article 41.1 of the TRIPS
Agreement.
In accordance with Article 41.1 of the TRIPS Agreement, the laws of the Philippines provide
for civil, criminal and administrative action against infringement of intellectual property rights to wit:
                                                     
112 Department of Health Administrative Order No.67, series of 1989, Section 2.
113 Department of Health Administrative Order No. 67, series of 1989, Section 4 & Annex I.
114 Memorandum Circular no. 11, series of 1992.
115 Rep. Act. No. 3720 (1963), Sec. 21 as amended by Executive Order No. 175 (1987), Secs. 14 & 15.
116 Rep. Act. No. 3720 (1963), Section 2.IP/C/W/272/Add.1
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Civil action
In cases of patent infringement, the patentee or anyone possessing any right, title or interest in
and to the patented invention, may bring a civil action before a court of competent jurisdiction, to
recover from the infringer such damages sustained thereby, plus attorney's fees and other expenses of
litigation, and to secure an injunction for the protection of his rights.  The court may, at its discretion,also order that the infringing goods, materials and implements predominantly used in the infringement
be disposed of outside the channels of trade or destroyed without compensation.
117
In trademark infringement cases, the owner of a registered mark may recover damages from
any person who infringes his rights.  Such damages may be doubled by the court in cases where actual
intent to mislead the public or to defraud the co mplainant is shown.  Upon proper showing, injunction
may also be granted to the trademark owner and the may order that infringing material be disposed of
outside the channels of commerce or destroyed without compensation.  On application of thecomplainant, the court may impound during the pendency of the action sales invoices and other
documents evidencing sales.
118
In copyright infringement cases, the copyright owner may file a civil action before a court of
competent jurisdiction and any person found guilty thereof shall be liable to (a) an injunction
restraining such infringement, (b) pay to the copyri ght 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, (c) deliver for impounding,
during the pendency of the action, sales invoices and other documents evidencing sales, all articles
and their packaging alleged to infringe a copyright and implements in making them, and (d) deliver
for destruction, without any compensation, all infringing copies or devices, as well as all plates,moulds or other means for making such infringing copies as the court may order.  An a copyright
infringement action, the court also has the power to order the seizure and impounding of any article
which may serve as evidence in the court proceedings.
119
Decisions of the Regional Trial Court civil cases for infringement are appealable to the Court
of Appeals and the Supreme Court.120
Criminal action
In patent infringement cases, if infringement is repeated by the infringer or any person in
connivance with the infringer after finality of the judgment of the court against the infringer, the
offenders shall, without prejudice to the institution of a civil action for damages, be criminally liable
therefore and upon conviction shall suffer imprisonment for the period of not less than six (6) monthsbut not more than three (3) years and/or a fine of not less than one hundred thousand pesos
(Php 100,000.00) but not more than three thousand pesos (Php 300,000.00), at the discretion of the
court.  The criminal action prescribes in three (3) years from the commission of the crime.
121
In cases of trademark infringement, a criminal penalty of imprisonment from two (2) years to
five (5) years and a fine ranging from fifty thousand pesos (Php 50,000.00) to two hundred thousand
pesos (Php 200,000.00) shall be imposed on any person who is found guilty of trademark
infringement, unfair competition and false designation of origin.122
                                                     
117 Rep. Act No.8293, Secs.76.2 and 76.5.
118 Rep.Act No.8293, Secs.76.2 and 76.5.
119 Rep.Act No.8293, Secs 216.1 and 216.2.
120 Rules 41 and 56,  Rules of Court.
121 Rep. Act No. 8293, Sec. 84.
122 Rep. Act No. 8293, Sec. 170.IP/C/W/272/Add.1
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In copyright infringement cases, the copyright infringer or anyone aiding or abetting such
infringer 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 (P hp 50,000.00) to one hundred fifty thousand pesos
(Php 50,000.00) for the first offense; (b) Imprisonment of three (3) years and one (1) day to six (6)
years plus a fine ranging from one hundred fifty thousand pesos (Php 150,000.00) to five hundred
thousand pesos (Php 500,000.00) for the second offense; (c) Imprisonment of six (6) years and one (1)day to nine (9) years plus a fine ranging from five hundred thousand (Php 500,000.00) to one million
five hundred thousand pesos (Php 1,500,000.00) for the third and subsequent offenses; and (d) In all
cases, subsidiary imprisonment in case of insolvency.
123
Decisions of the Regional Trial Court criminal cases for infringement are appealable to the
Court of Appeals and the Supreme Court.124
Administrative action
Administrative cases involving intellectual property rights violation may be filed with the
following administrative agencies:
a) The Intellectual Property Office (IPO), through the Bureau of Legal Affairs (BLA) exercises
original jurisdiction in administrative complaints fo r intellectual property violation where the total
damages claimed are not less than two hundred thou sand pesos attachment and preliminary injunction
and/or temporary restraining order may be granted during the proceedings.  The Director of Legal
Affairs shall have the power to p unish for contempt all those who disregard orders or writs issued in
the course of the proceedings.125
After formal investigation, the Director of Legal Affairs may impose one (1) or more of the
following administrative penalties: (i) the issuance of a cease and desist order specifying the acts that
the respondent shall cease and desist from; (ii) the acceptance of a voluntary assurance of complianceor discontinuance as may be imposed; (iii) the condemnation or seizure of products which are subject
of the offense; (iv) the forfeiture of paraphernalia and all real and personal properties which have been
used in the commission of the offense; (v) the imposition of administrative fines in such amount
deemed reasonable by the Director of Legal Affairs, which shall in no case be less than five thousand
pesod (Php 5,000.00) nor more than one hundred fifty thousand pesos (Php 150,000.00) plus anadditional fine of one thousand pesos (Php 1,000.00) per day of continuing violatrion; (vi) the
cancellation of any permit, license, authority or registration which is being secured by the respondent
from the office; (vii) the withholding of any permit, license, authority, or registration which is being
secured by the respondent from the office; (viii) the assessment of damages; (ix) censure; and (x)
other analogous penalties or sanctions.
126
Decisions of the Director BLA in administrative cases involving intellectual property
violation are appealable to the IPO Director General.127 Decisions of the IPO Director General are
appealable to the Court of Appeals and finally to the Supreme Court.128
b) The Department of Trade and Industry (DTI) which has original jurisdiction over complaints
involving violations of intellectual property rights, irrespective of the total amount of damages
                                                     
123 Rep. Act No. 8293, Sec. 217.1.
124 Rules 124 and 125,  Rules of Court.
125 Rep. Act No. 8293, Sec. 10.2[a].
126 Rep. Act No.  8293, Sec. 10.2[b].
127 Rep. Act No. 8293, Sec. 7[b].
128 Rules 42 and 45, Rules of Court.IP/C/W/272/Add.1
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claimed or if no such damages are claimed.  The DTI Secretary has the power to punish direct and
indirect contempt and to issue subpoena duces tecum and subpoena ad testificandum.129
After formal investigation, the DTI Secretary may impose one (1) or more of the following
administrative penalties: (i) the issuance of a cease and desist order specifying the acts that the
respondent shall cease and desist from; (ii) the acceptance of a voluntary assurance of compliance or
discontinuance as may be imposed; (iii) the condemnation or seizure of products which are subject ofthe offence; (iv) the forfeiture of paraphernalia and all real and personal properties which have been
used in the commission of the offense; (v) the imposition of administrative fines in such amount
deemed reasonable by the Director of Legal Affairs, which shall in no case be less than five thousand
pesos (Php 5,000.00) nor more than one hundred fifty thousand pesos (Php 150,000.00) plus an
additional fine of one thousand pesos (Php 1,000.00) per day of continuing violation; (vi) the
cancellation of any permit, license, authority or registration which is being secured by the respondent
from the office; (vii) the withholding of any permit, license, authority, or registration which is being
secured by the respondent from the office; (viii) the assessment of damages; (ix) censure; and (x)
other analogous penalties or sanctions.
130
Decisions of the Secretary of the DTI are appealable to the Office of the President.131
c) The Videogram Regulatory Board VRB) which has jurisdiction over violations of laws
involving videograms, including those involving copyright violation.132
Any person found guilty of copyright violation shall be imposed the following administrative
penalties:  (i) closure, revocation of commercial lic ense and/or commercial permit and confiscation of
videograms involved in the violations; and (ii) a fine of not less than six thousand pesos
(Php 6,000.00) but not more than one hundred thousand pesos (Php 100,000.00).133
Decisions of the VRB are appealable to the Office of the President.134
21. Article 43.1 of the TRIPS Agreement requires that judges be authorized to order productionof evidence necessary to substantiate a party’s claims where that party has been unable to obtain
such evidence from the opposing party.  Please describe how the laws or regulations of the
Philippines provide this authorization, citing to the relevant provisions of law or regulation.
At the request of an opposing party, judicial authorities may order the issuance of a subpoena
ad testificandum  requiring the other party to appear and testify in court, and/or subpoena duces tecum
requiring the other party to produce and submit documentary evidence, which lies within his control.The court, however, may not so order where the evidence is incriminatory, confidential, privileged,
immaterial or irrelevant.
135
The court may order the issuance of a subpoena at the request of a party that the testimony of
the other party be taken by deposition upon or al examination or written interrogatories136  T h e
deponent may be examined regarding any matter that is  relevant to the action, including the existence,
nature, or location of any documents and identity of persons having knowledge of relevant facts.137
                                                     
129 Executive Order 913 [1983] Article III, Secs. 4 & 5; Department Administrative Order 01 [2000].
130 Executive Order 913, Sec. 6.
131 Executive Order 913, Sec. 13.
132 Presidential Decree 1987, Chapter IX, Sec. 21A[2].
133 Presidential Decree 1987, Sections 21A[1] and 21B[1].
134 Memorandum Circular No. 98-00, Rule IX, Sec. 1.
135 Revised Rules of Procedure [1997] Rule 21, Sec. 1; Rule 23, Sec. 2.
136 Revised Rules of Civil Procedure [1997] Rule 23, Sec. 1.
137 Revised Rules of Civil Procedure [1997] Rule 23, Sec. 2.IP/C/W/272/Add.1
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The court may also issue an order for the production or inspection of documents or things
upon motion of any party.  The order may require the other party to produce and permit the inspection
and copying of any designated documents or papers in his possession that are not privileged and
which are material to the action.138
On application of the complainant during the pendency of an action involving trademark
infringement, the Court may issue an order for the seizure and impounding sales invoices and other
documents evidencing sales.139
During the pendency of an action involving copyright infringement, the court may also order
the impounding of sales invoices and other documents evidencing sales, all articles and their
packaging alleged to infringe a copyright and implements in making them.140
22. Please describe in detail all of the civil remedies that are available to right holders under thelaws of the Philippines, citing to the relevant provisions of law or regulation.
Judicial authorities may order the following remedies in cases involving violations of
intellectual property rights:
Damages
In patent infringement, the court may award damages not exceeding three (3) times the
amount of the actual damages sustained.  If damages cannot be readily ascertained, the court may
award damages equivalent to reasonable royalty.141
In trademark infringement, the court may award damages equivalent to the reasonable profit,
or the profit that the 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 the
defendant.  Damages may be doubled if there is actual intent to mislead the public or to defraud thecomplainant.
142
In copyright infringement, the court may award actual damages sustained including the profits
that the infringer may have made due to the infringement, or such damages as may be just under the
circumstances.1437
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.144
Injunction
The court may order an injunction restraining infringement of intellectual property rights.145
                                                     
138 Revised Rules of Civil Procedure [1997] Rule 27, Sec. 1.
139 Rep. Act No. 8293, Sec. 156.2.
140 Republic Act No.8293, Sec.216.1[c].
141 Rep.Act No.8293, Sec.76.4.
142 Rep.Act No.8293, Secs.156.1 & 156.3.
143 7 Rep.Act No.8293, Sec.216.
144 Rep.Act No.8293, Sec.216[e] & Sec. 76.2.
    Rep.Act No.386, Arts.2216-2235.
145 Rep.Act No.8293, Secs.216[a], 76.2 & 156.4.IP/C/W/272/Add.1
Page 22
Injunction may be granted upon a showing that the invasion of the right is material, the right
of the applicant is clear, and there is an urgent ne cessity for the writ to prevent serious damage to the
applicant.146
The injunction may be refused if the court finds that the complaint is insufficient.  It may also
be dissolved if the defendant files a counter bond and presents evidence that he would sustain great
damage.  Plaintiff may be compensated for damages he may suffer if the injunction is dissolved.147
Destruction of infringing goods
The court may order that the infringing goods and materials be disposed of outside the
channels of trade to avoid causing harm to the right holder, or destroyed without compensation.148
23. Please describe in detail the provisional procedures and remedies available to right holders
under the laws of the Philippines, citing to the relevant provisions of law and regulation, and indicate
any condition under which a right holder may avail itself of those procedures and remedies.
The provisional procedures and remedies that are available to right holders are as follows:
Preliminary attachment
At the commencement of the action or at any time before the 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.1493
The only requisites for the issuance of the writ of preliminary attachment are the affidavit and
bond of the applicant.  No notice to the adverse party or hearing of the application is required as thetime which the hearing would entail could be enough to enable the defendant to abscond or dispose of
his property before the writ of preliminary attachment issues.
150
Preliminary injunction / Temporary restraining order (TRO)
This is an order granted at any stage of an action or proceeding prior to the judgment or final
order, requiring a party or a court, agency or person to refrain from a particular act or acts.  It mayalso require the performance of a particular act or acts, in which case, it is called a preliminary
mandatory injunction.
151
Any aggrieved party may apply for preliminary injunction by filing a verified complaint with
the proper court showing the grounds relied upon and the filing of the required bond.152
The court may issue ex parte  a temporary restraining order to be effective for a period of
seventy two (72) hours from notice to the party or person sought to be enjoined on matters of extreme
urgency that may result in a grave injustice and irreparable damage to the applicant.  Within that
period, the court must conduct a hearing to determine the propriety of the injunction.  Ordinarily, a
preliminary injunction has a lifetime of twenty (20) days, which cannot be issued in the absence of a
hearing.  The twenty (20) days period is inclusiv e of the seventy two (72) hours restraining order.
However, if issued by the Court of Appeals, the temporary restraining order shall be effective for                                                     
146 Revised Rules of Civil Procedure [1997] Rule 58, Sec.3.
147 Revised Rules of Procedure[1997] Rule 58, Sec.4.
148 Rep.Act No.8293, Secs 76.5, 1577 216[d].
149 3 Revised Rules of Civil Procedure [1997] Rule 57, Sec.1.
150 Revised Rules of Civil Procedure [1997] Rule 57, Sec. 3.
151 Revised Rules of Civil Procedure [1997].
152 Revised Rules of Civil Procedure [1997] Rule 58 Sec.3.IP/C/W/272/Add.1
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sixty (60) days from notice to the party sought to be enjoined.  A restraining order issued by the
Supreme Court shall be effective until further orders.153
Seizure and impounding
To ensure the preservation of evidence necessary for the prosecution of cases involving
intellectual property violation, the Supreme Cour t is considering the following proposed addition to
the Rules of Court:
"PROVISIONAL AND PREVENTIVE MEASURES IN
INFRINGEMENT ACTIONS
SECTION 1. Provisional And Preventive Measures.  The court shall have the authority to
order prompt and effective provisional measures:
a. To prevent an infringement of any intellectual property right from occurring, and in
particular, to prevent the entry into the channels of commerce in their jurisdiction of
goods, including imported goods immediately after customs clearance;
b. To preserve relevant evidence in regard to the alleged infringement.
The order granting provisional and preventive measures shall include, but not limited
to the confiscation and impounding of infringing articles and instruments used in the
infringement of intellectual property rights.
SECTION 2. Application and  Issuance of Order.  The court shall rule within 24 hours
from the filing of a verified Application and order provisional and preventive measures
inaudita altera part e where appropriate, in particular, where any delay is likely to cause
irreparable damage to the right holder or where there is demonstrable risk of evidence beingdestroyed.
SECTION 3. Affidavit and Bond Required .  The applicant and/or his witness or witnesses
must show and provide in  his affidavit any reasonably available evidence in order to satisfy a
sufficient degree of certainty that the applicant is the right holder and that the applicant’s rightis being infringed or that such infringement is  imminent.  The applicant shall  be required to
supply the court with other information necessary for the identification of the goods
concerned by the sheriff or other government authority that will execute the order.
The applicant shall likewise post a cash bond which may also be in the form of a
cashier’s or manager's check, the amount of which shall be determined by the court,
conditioned that the latter will pay all the costs which may be adjudged to the adverse partyand all damages which he may sustain by reason of the order, if the court shall finally adjudge
that the applicant is not entitled thereto.
A pauper applicant, however, may post a surety bond instead of a cash bond.
SECTION 4. Order Issued Inaudita Altera Parte.  Where the order is issued inaudita
altera parte , the parties affected shall be given a copy of the Order simultaneously with the
execution thereof.  The sheriff or other government authority who executed the order shall
within five (5) days make a return thereon to the court from which the order was issued, and
in cases where articles are confiscated and impounded, to make a full statement of the
                                                     
153 Revised Rules of Civil Procedure [1997] Rule 58 Sec.5.IP/C/W/272/Add.1
Page 24
proceedings undertaken and the complete inventory of the articles confiscated and
impounded.
A determination on whether the order shall be modified, revoked or confirmed may
be heard upon motion by the defendant.
SECTION 5. Revocation of the Order .  Without prejudice to the second paragraph of the
immediately preceding Section, the order shall, upon motion by the defendant, be revoked or
otherwise cease to have effect and the article confiscated and impounded shall be immediately
returned if no case is filed in the appropriate court or with the competent authority within
thirty-one (31) calendar days  from the date of issuance of the  order.
SECTION 6. Recovery On the Bond .  Where the provisional and preventive measures are
revoked or where they lapsed due to any act or omission by the applicant, or where it is
subsequently found that there has been no infringement or threat of infringement of an
intellectual property right, the court upon motion of the defendant and after hearing, shall
have the authority to order the applicant to compensate the defendant, upon the bond filed by
the applicant, for any injury or damage caused by the issuance and execution of the order."
J. SPECIAL REQUIREMENTS RELATED TO BORDER MEASURES
24. Please describe in detail the procedures under the laws of the Philippines that provide for
border enforcement at least for trademark counte rfeiting and copyright piracy, identifying the
competent authority and citing to the relevant provisions of law or regulation.
The Bureau of Customs is the competent authority in border enforcement.  The applicable law
is the Tariff and Customs Code of the Philippines and Customs Administrative Order No. 7-93 which
was promulgated for the prevention of importation of infringing goods or products.
Philippine law provides that no article of imported merchandise which shall copy or simulate
the name of any domestic product, or manufacturer, or dealer, or which shall copy or simulate a mark
registered in accordance with the provisions of this Act, or shall bear a mark or trade name calculated
to induce the public to believe that the article is manufactured in the Philippines, or that  it is
manufactured in any foreign country or locality where it is in fact manufactured, shall be admitted toentry at any customhouse of the Philippines.  In or der to aid the officers of the customs service in
enforcing this prohibition any person who is entitled to the benefits of this act, may require that his
name and residence, and the name of the locality in which his goods are manufactured, a copy of the
certificates of registration of his mark or trade name, to be recorded in books which shall be kept for
this purpose in the Bureau of Customs, under such regulations as the Collector of Customs with the
approval of the Secretary of Finance shall prescribe, and may furnish to the said Bureau facsimiles of
his name and the locality in which his goods are manufactured, or his registered mark or trade name,and thereupon the Collector of Customs shall cause one (1) or more copies of the same to be
transmitted to each collector  or to other proper office of the Bureau of Customs.
154
Furthermore, Customs regulations provide the following salient points:155
- What may be prohibited from importation:
The following goods or merchandize shall be barred  or prohibited from entry or
being imported into the country, to wit:
                                                     
154 Section 166, Rep. Act 8293.
155 Customs Administrative Order No.7-93, September 3 1993.IP/C/W/272/Add.1
Page 25
a. Those which shall copy or simulate, the name or any domestic product, or
manufacturer, or dealer, or any treaty, convention, or law affords similar privileges to
citizens of the Philippines, or which shall copy or simulate a mark or trade name.
b. Those which bear a mark or trade name calculated to induce the public to believe that
the article is manufactured in any foreign country or locality other that the country orlocality where it is in fact manufactured.
c. Those which constitute an unauthorized copy or piratical copy or likeliness or any
work, whether published or unpublished, on which a Philippine copyright subsists.
d. Those which constitute a substantial simulation of any machine, article, product of
substance duly patented under the patent law.
- Who may request prohibition:
The rightful holder who has valid grounds for suspecting that counterfeit trademark or
pirated copyright goods will be imported may take place  may lodge an application in writingwith the Commissioner of the Bureau of Customs for the issuance of a hold order on the
release of such goods.
Additionally, the holder should show proof that he owns the protected intellectual
property.
Registry Books for Trademarks, Patents, and CopyrightsFor the effective implementation of the rules and regulations, the Bureau of Customs
shall maintain and keep custody of registry books for trademarks, patents and copyrights,where copies of registered trademarks, pate nts and copyrights may be filed, where other
information pertinent to their rights may be listed, and where sufficiently detailed description
of the goods are recorded to make them identifiable by the Bureau of Customs.
The same Regulation has set the procedure as follows:
1. A patent holder, trademark or copyright owner, his assign, or his duly authorized
agent or representative, desiring to prevent the or prohibit the entry or importation of
any cargo or shipment that may infringe upon his property rights, shall file a written
requests to the Commissioner of Customs  attaching thereto duly authenticated copies
of the certificate of patent, trademark or copyright registration and facsimiles of his
name, name of the locality in which the goods are manufactured, or of this registered
mark or trade name.  He shall also furnish the following information:
a) Name and Address of the patent holde r, trademark, or copyright owner;
b) Name of the locality in which his goods or products are manufactured;
c) Name and address of the agent or representative;
d) Sufficiently detailed description of the goods, products or services of the
patent holder, trademark or copyright owners to make them readilyrecognizable by Customs authorities.IP/C/W/272/Add.1
Page 26
2. Upon receipt of the written request, the Commissioner of Customs shall direct the
Legal Service to record the patent, trademark or copyright certificate and the
foregoing information in the books kept for such purpose.
3. After proper evaluation and due recording in the registry, the Commissioner of
Customs shall issue a Memorandum Circular addressed to all Collectors of Customs,
Customs Examiners/Appraisers and Hearing Officers of the Law Division, informingthem of the request, directing them to stri ctly monitor and enforce the prohibition and
attaching to such circular a copy of the request, the patent, trademark or copyright
certificates of registration , the facsimiles and all the pertinent information thereto.
4. Upon receipt of the Memorandum Circular, all Collectors of Customs, Customs
Examiners/Appraisers and Hearing Officers, on their part, shall maintain and keep
their own file of all such requests that will provide basis for monitoring or prohibiting
the entry or importation of any incoming cargo or shipment that may infringe uponthe property rights of the patent trademark or copyright owners, and for notifying
such owners or their authorized agent or representative to witness the examination of
the said cargo or shipment.
5. In the performance of their duties, the Customs Examiners/Appraisers shall conduct
an actual examination of the suspected cargo or shipment and shall immediatelysubmit a recommendation to the Collector of  Customs for the issuance of a Warrant
of Seizure and Detention against such cargo or shipment if there is prima facie  case of
infringement.
6. During the seizure proceeding of such goods, the patent, trademark or copyright
owners or their duly authorized agents shall be notified so that they may participate asintervenor and present evidence to prove infringement on its patent, trademark or
copyright.
7. Goods finally found in seizure proceedings to be infringing shall be forfeited in favor
of the government and shall be destroyed, unless used as evidence in court
proceedings.
- During Seizure Proceeding, the following rules shall be followed:
1. The Collector of Customs, upon making the seizure, shall issue a warrant for the
detention of the property.
156  A warrant of seizure and detention is issued by the
Collector whenever there is violation of either Section 101 (prohibitedimportations)
157 or Section 2053 (undervaluation, misclassification, or
misdeclaration)158 of the Tariff and Customs Code, as the case may be.
2. The Collector shall give the owner or importer of the property or his agent a written
notice of the seizure and shall give him an opportunity to be heard in reference to the
delinquency which was the occasion of such seizure.159
3. If the owner is unknown, such notice shall be made by posting the same for fifteen
(15) days in the public corridor of the customhouse of the district in which the seizurewas made, and in the discretion of the Commissioner, by publication in a newspaper
                                                     
156 Section 2053, Book II, Title VI, Tariff and Customs Code of the Philippines .
157 Section 101(k), Tariff and Customs Code of the Philippines.
158 Section 2053, Book II, Title VI, Tariff and Customs Code of the Philippines.
159 Section 2303, Book II, Title VI, Tariff and Customs Code of the Philippines.IP/C/W/272/Add.1
Page 27
or by such other means as he shall consider desirable.160
4. If, within fifteen (15) days after notice, or  no owner or agent can be found or appears
before the Collector, the latter shall declare the property forfeited.161
5. After hearing, the Collector shall in writing make a declaration of forfeiture.162
6. Once an article is determined to have been prohibited importation that it cannot be
used for unlawful purpose, it shall be destroyed in such manner as the Collector shall
direct.163
Also, after due hearing, the condemnation or seizure of the products found to have infringed
on the intellectual property rights of the holder could also be ordered by the Bureau of Legal Affairs
of the Intellectual Property Office.164
25. Please indicate if border enforcement is available to owners of other forms of intellectualproperty and, if so, please describe the procedures and remedies available in relation to each form of
intellectual property, citing the relevant provisions of law.
The procedures enumerated in the answers to question no. 24 apply to all forms of intellectual
property.
26. Article 58 of the TRIPS Agreement specifies procedures to be followed where the competent
authorities can act ex officio.  Please explain whether the competent authorities in the Philippines are
empowered to act ex officio and, if so, please iden tify the intellectual property areas subject to ex
officio action.
The Bureau of  Customs, on the basis of  an alert list or written request by the trademark or
copyright owners, shall place under alert orders ship ment known to be infringing intellectual property
rights.
165
However, the Bureau of Customs may stop the entry of the infringing goods even if there is
no alert list or requests because counterfeit shipment falls within the term "prohibited importation."
The  Bureau of Customs has the power to conduct random checks on all imports to determine
whether the goods match the description in the shipping documentation and are not otherwiseinfringing.  It can temporarily hold the release of suspected infringing goods and inform the
intellectual property right holder of the suspension of release of goods.  The intellectual property right
holder in order to have the goods forfeited must officially inform the Bureau of Customs of the
violation of his right and participate and testify in the seizure proceedings.
166
K. CRIMINAL PROCEDURES
27. Please describe in detail how the laws of the Philippines implement Article 61 of the TRIPS
Agreement that requires Members to have criminal  procedures and penalties, including imprisonment
and/or monetary fines sufficient to act as a deterrent, at least for cases of wilful trademark
                                                     
160 Section 2304, Book II, Title VI, Tariff and Customs Code of the Philippines.
161 Section 2306, Book II, Title VI, Tariff and Customs Code of the Philippines.
162 Section 2312, Book II, Title VI, Tariff and Customs Code of the Philippines.
163 Section 2609, Book II, Title VI, Tariff and Customs Code of the Philippines.
164 Section 10.2(b) iii, Rep. Act 8293.
165 Customs Administrative Order No. 7-93, September 3, 1993.
166 Customs Administrative Order No. 7-93, September 3, 1993.IP/C/W/272/Add.1
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counterfeiting and copyright infringement on a commercial scale.  Please cite to the relevant
provisions of law and regulation
A. Criminal actions and penalties are available in the following violation of intellectual property
rights:
• Infringement of Patent, Utility Model and Industrial Design167
• Infringement of Copyright and Related Rights168
• Infringement of Trademarks, Service Marks and Geographical Indications169
• Unfair competition170
• False Designation of Origin/False Description or. Representation171
• Reproduction of cinematographic art172
• Piracy173
• Violation of the Electronic Commerce Act 174
B. Criminal provisions of Republic Act 8293 (Intellectual Property Code of the Philippines)
relative to the prosecution of intellectual property violations and the corresponding penalties are as
follows:
B.1. Under the Law on Patents
If infringement is repeated by the infringer or by anyone in connivance with him after finality
of the judgment of the court against the infringer, the offenders shall, without prejudice to the
institution of a civil action for damages, be criminally liable therefore and, upon conviction, shall
suffer imprisonment for the period of not less than six (6) months but not more than three (3) yearsand/or a fine of not less than One Hundred Thousand Pesos (P100,000.00) but not more than Three
Hundred Thousand Pesos (P300,000.00), at the discretion of the court. The criminal action herein
provided shall prescribed in three (3) years from date of the commission of the crime.
175
B.2. Under the Law on Trademarks, Service Marks and Tradenames
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
(P50,000.00) to Two Hundred Thousand Pesos (P200,000.00 ), shall be imposed on any person who is
found guilty of committing any of the acts mentioned in Section 155 (Infringement), Section 168
(Unfair Competition) and Subsection 169.1 (False  Designation of Origin, False Description or
Representation176
B.3. Under the Law on Copyright
Any person infringing any right secured by provisions of Part IV of this Act (The Law on
Copyright) or aiding or abetting such infringe ment shall be guilty of a crime punishable by:
                                                     
167 R.A. 8293, Sec. 84, Sec. 108,  Sec. 119.
168 R.A. 8293, Sec.217.
169 R.A.8293, Sec.170.
170 R.A.8293, Sec.170.
171 R.A.8293, Sec.170.
172 Pres.Decree 1987, Secs.7,9.
173 R.A.8792, Sec 33(b).
174 R.A.8792.
175 R.A.8293, Sec.84.
176 R.A.8293, Sec, 170.IP/C/W/272/Add.1
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Imprisonment of one (1) year to three (3) years plus a fine ranging from Fifty Thousand Pesos
(P50,000.00) to One Hundred Fifty Thousand Pesos (P150,000.00) for the first offence.
Imprisonment of three (3) years and one (1) day to six (6) years plus a fine ranging from One
Hundred Fifty Thousand Pesos (150,000.00) to Five Hundred Thousand Pesos (P500,000.00) for the
second offence.
Imprisonment of six (6) years and one (1) day to nine (9) years plus a fine ranging from Five
Hundred Thousand Pesos (P500,000.00) to One Million Five Hundred Thousand Pesos
(P1,500,000.00) for the third and subsequent offences.
In all cases, subsidiary imprisonment in cases of insolvency.177
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 infringement178.
Any person who at the time when copyright subsists in a work has in his possession an article
which he knows, or ought to know, to be an in fringing copy of the work for the purpose of:
a. Selling, letting for hire, or by way of trade offering or exposing for sale, or hire, the
article;
b. Distributing the article for purpose of trade,  or for any other purpose to an extent that
will prejudice the rights of the copyright owner in the work; or
c. Trade exhibit of the article in public, shall be guilty of an offence and shall be liable
on conviction to imprisonment and fine as above-mentioned.1793
B.4. Under the Electronic  Commerce Act (R.A. 8792)
The following acts shall be penalized by fine and/or imprisonment as follows:
a) Hacking or cracking which refers to unauthorized access into or interference in a
computer system/server or information and communication system; or any access in
order to corrupt, alter, steal, or destroy using a computer or other similar information
and communication devices, without the knowledge and consent of the owner of the
computer or information and communications system, including the introduction of
computer viruses and the like, resulting in the corruption, destruction, alteration, theft
or loss of electronic data messages or electronic documents shall be punished by amaximum fine of One Hundred Thousand Pesos (P100,000.00) and a maximum
commensurate to the damage incurred and a mandatory imprisonment of six (6)
months to three (3) years;
b) Piracy or the unauthorized copying, reproduction, dissemination, distribution,
importation, use, removal, alteration, substitution, modification, storage, uploading,
downloading, communication, making available to the public, or broadcasting of
protected material, electronic signature or copyrighted works including legally
protected sound recordings or phonograms or information material on protected
works, through the use of telecommunication networks, such as, but not limited to, the
                                                     
177 R.A.8293, Sec.217.1.
178 R.A. 8293, Sec.217.2.
179 3 R. A. 8293, Sec,  217.3.IP/C/W/272/Add.1
Page 30
internet, in a manner that infringes intellectual property rights shall be punished by a
maximum fine of One Hundred Thousand Pesos (P100,000.00) and a maximum
commensurate to the damage incurred and a mandatory of six (6) months to three (3)
years;
c) Violation of Consumer Act or Republic Act No. 7394 and other relevant or pertinent
laws through transactions covered by or using electronic data messages or electronic
documents, shall be penalized with the same penalties as provided in those laws;
d) Other violations of the provisions of this Act, shall be penalized with a maximum
penalty of One Million Pesos (P1,000,000.00) or six (6) years imprisonment.
C. Who may file the criminal complaint for intellectual property rights violation?
Any peace officer or other public officer charged with the enforcement of the law
violated may file a criminal complaint in resp onse to complaints or request for investigation.
Thus, law enforcement agencies such as the Philippine National Police (PNP), the
National Bureau of Investigation (NBI), Department of Justice (DOJ) and the Videogram
Regulatory Board (VRB) may institute criminal proceedings or may file a criminal complaint
which shall be prosecuted under the direction and control of a prosecutor.180
Rights holder, heirs or assigns as offended parties, may file or institute action for
infringement181.
The offended party is authorized to prosecute a criminal action subject to the
direction and control of the public prosecutor182.
D. Criminal prosecution procedure common to crimin al complaints for infringement of patents,
trademarks, service marks and tradenames, copyright and violation of the Electronic Commerce Act
- Application for the issuance of search warrant before the court by law enforcement
agents and the Intellectual Property Owner
- Implementation of search warrant- Filing of the case either with the Department of Justice (DOJ) Task Force on Anti-
Intellectual Property Piracy or with the Prosecution Office which has jurisdiction over
the case
- File the case in court if there is a prima-facie case or dismiss the case if unfounded
- Trial of case within sixty (60) days by the designated Intellectual Property (IP) court
and thirty (30) days within which to resolve (Postponement is not allowed except on
meritorious ground)
                                                     
180 Revised Rules on Criminal Procedure(2000) Rule 110, Sec. 5.
181 R. A. 8293, Secs. 28, 147, 180, 193; Rev. Rules on Crim. Procedure, Rule 110, Sec. 3, 5.
182 Revised Rules on Crim.Procedure, Rule 110, Secs.3, 5; Guevarra vs.del Rosario 77Phil.615.IP/C/W/272/Add.1
Page 31
E. Who has jurisdiction over the criminal complaints for Intellectual Property Rights Violation
The Regional Trial Courts have original jurisdiction to hear and decide cases involving
violations of intellectual property rights regardless of the amount involved.183 Twenty-seven
of these courts are specially designated to hear such cases.184
The decisions of the Regional Trial Court may be brought on appeal or on certiorari
to the Court of Appeals and to the Supreme Court.185
28. Article 61 also requires that remedies in appropriate cases include the seizure, forfeiture and
destruction of infringing goods and any materials and implements the predominant use of which has
been the commission of the offence.  Please describe the provisions in the laws of the Philippines that
provide for such remedies, and describe the circumstances in which those remedies would beimposed, citing to the relevant provisions of law or regulation.
In any action arising under this Act, in which a violation of any right of the owner of the
registered mark is established, the court may order that -
- Infringing goods be destroyed without compensation of any sort, disposed of outside
the channels of commerce in such a manner as to avoid any harm to the right holder;
- All labels, signs, prints, packages, wrappers, receptacles and advertisements in the
possession of the infringer bearing the registered mark or trade name or anyproduction, counterfeit, copy or colorable imitation thereof, all plates, moulds,
matrices and other means of making the same, shall be delivered up and destroyed.
186
In regard to counterfeit goods, the simple removal of the trademark affixed shall not be
sufficient other in exceptional cases which shall be determined by the Regulations, to permit the
release into the channels of commerce.187
A search warrant may be issued for the search and seizure of the personal property:
a. subject of the offence;
b. stolen or embezzled and other proceeds or fruits of the offence;
c. used or intended to be used as the means of committing an offence.188
Goods seized by virtue of a search warrant are kept by the law enforcement agency that
implemented the search warrant.  Disposition of the seized goods shall be ordered by the court.  TheIP owner may agree to an inventory or pictures of the goods seized.
When the civil action is properly instituted in the criminal action, the offended party may
have the property of the accused attached as security for the satisfaction of any judgment that may be
recovered from the accused.
189
                                                     
183 Supreme Court Administrative Order No. 104-96(1996).
184 Supreme Court Administrative Order No. 113-95(1995).
185 Revised Rules on Criminal Procedure (2000) Rule 122, Sec. 2.
186 R. A. 8293, Sec. 157.
187 R. A. 8293, Sec. 157.2.
188 Rule 126, Sec. 3, Revised Rules on Criminal Procedure.
189 Rule 127, Sec.2, Revised Rules on Criminal Procedure.IP/C/W/272/Add.1
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29. Article 61 also indicates that Members may provide for criminal procedures and penalties in
cases of wilful infringement of other forms of intellectual property.  Please describe any provisions of
the laws of the Philippines that provide for such procedures and remedies, citing to the relevant
provisions of law or regulation.
The Revised Rules on Criminal Procedure (Rules 110 to 127, Revised Rules of Court), is the
law being followed in cases of violations of pena l provisions of the Intellectual Property Code as
presented in the answers to question nos. 27 and 28.
L. STATISTICAL QUESTIONS
30. Please provide statistical information related to civil copyright, trademark, geographicalindication, industrial design, patent, integrated circuit layout-design, and trade secret enforcement
for 2000, including the number of cases filed;  injunctions issued;  infringing products seized;infringing equipment seized;  cases resolved (i ncluding settlement); and the amount of damages
awarded.
The Task Force on Anti-Intellectual Property Piracy of the Department of Justice reported
that for the year 2000, there were a total of four hundred fifty-one cases filed and acted upon, ofwhich 85 cases or 18.81% were filed in Court and on-going trial, 75 cases or 16.61% were dismissed,
97 or 21% were still being investigated while 194 cases or 43% were referred to prosecution offices
for various reasons including that they are not intellectual property right violation cases.
31. Please provide statistical information related to  criminal enforcement in the area of copyright
piracy and trademark infringement for 2000, including the number of raids, prosecutions,
convictions, and the amount of fines and/or jail terms (including whether the fines were paid and
whether the jail term was actually served or was suspended) and any other information establishing
that the criminal system operates effectively to deter copyright piracy and trademark counterfeiting.
The Presidential Inter-Agency Committee on Intellectual Property Rights (PIAC-IPR) which
is an interagency committee created under Executive Order No. 60 to coordinate all activities of its 19
member agencies involved in the protection and enforcement of intellectual property rights received
the reports from its law enforcement member agencies namely, the Videogram Regulatory Board,
Department of Justice, Bureau of Customs, National Bureau of Investigation, and Philippine NationalPolice relating to criminal enforcement particularly, as to the number of raids conducted,
prosecutions, cases filed in court and confiscated/surrendered items, showing that for the year 2000
there were 1,313 raids; 3,376 inspection/monitoring made on different establishments; 550 cases were
received;  843 criminal complaints were filed in courts; 128 cases were dismissed and that there are 2,
154 on going cases in various stages.
Likewise for the year 2000, 1,476,061 items were confiscated/surrendered to the various law
enforcement agencies with a total value of P 275,758,350.00.
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