WORLD TRADE  
ORGANIZATION  IP/Q/PHL/1 
IP/Q2/PHL/1 
IP/Q3/PHL/1 
IP/Q4/PHL/1 
18 February 2004 
 (04-0634) 
Council for Trade-Related Aspects of Intellectual Property Rights Original:  English 
 
 
 
REVIEW OF LEGISLATION 
 
PHILIPPINES
1  
 
 
 The present document reproduces the introductory statement made by the delegation of the Philippines, the questions put to it and the responses given in connection with th e review of legislation 
undertaken at the Council's m eeting of 18-22 June 2001.
2 
 
_______________ 
 
 
I. INTRODUCTORY STATEMENT 
A. IPRS IN THE PHILIPPINES BEFORE THE TRIPS AGREEMENT  
Except for new intellectual property rights that  derive from developments in the areas of 
information and communication technology and genetic engineering, most of the intellectual property 
rights that we recognize today have been protect ed by Philippine laws even before the TRIPS 
Agreement came into effect.  Particularly,  
1. Inventions, utility models and industrial designs were granted patents under Rep. Act 
No. 165 since 1947; 
 2. Technology Transfer Agreements were registered under Presidential Decree No. 1520 
since 1975; 
 
3. Trademarks, trade names, and other mark s including geographical indications were 
protected under Rep. Act No. 166 since 1947; 
 4. Copyright and related rights including co mputer software were protected under 
Presidential Decree No. 49 since 1974; 
 
5. Videograms were given strong protecti on under Presidential Decree 1987 since 1985; 
 6. Undisclosed information received protec tion under the Revised Penal Code of the 
Philippines (1930) and the Civil Code of the Philippines (1949); 
 
7. Unfair competition or passing off, infringem ent and false designations of origin were 
penalized under the Revised Penal Code (1930). 
                                                     
 
1 As regards laws and regulations notified by the Philippines under Article 63.2 of the Agreement, 
reference is made to documents IP/N/1/PHL/1, 2 and Ad d.1, IP/N/1/PHL/C/1, 1/Add.1 and 2-6, IP/N/1/PHL/I/1, 
1/Add.1 and 2-9, IP/N/1/PHL/L/1, IP/N/1/PHL /P/1, 2 and 2/Add.1, and IP/N/1/PHL/T/1. 
2 The minutes of this meeting have been circulated as document IP/C/M/32. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 2 
 
 
Furthermore, a well-developed judicial system has been in existence since the 16th century.  
Decisions rooted in the Constitution, laws, and deci sions of the Supreme Court under the principle of 
stare decisis  and regulations are promulgated in writing clear ly stating the legal basis and the facts as 
shown by the evidence.  The Supreme Court has th e ultimate authority to review decisions of all 
inferior courts.  And all its decisions are published. 
 Civil and criminal procedures including provisi onal remedies for enforcement of all protected 
intellectual property rights were available under the Rules of Court.  Administrative procedures and border control measures were available under Presi dential Decree No. 1987 (1985), Executive Order 
No. 913 (1983) and Customs Administrative Order No. 7-93 (1993). 
 On its part, the Supreme Court designated Cour ts specifically to hear intellectual property 
rights cases within 60 days and decide the same in 30 days without postponement except on meritorious grounds (Supreme Court Administrative Order 113-95). 
 
Inter partes procedures such as opposition, revocation and cancellation were available since 
1947 under Rep. Act Nos. 165 and 166 and the corresponding Rules of Practice in Patents and 
Trademarks Cases.  Decisions in such cases were in writing, clearly stating the legal and factual bases, 
copies of which were provided to the parties who could subject the same to review by the courts 
including and up to the Supreme Court. 
 
To further coordinate enforcement efforts of  the enforcement agencies, the Presidential 
Inter-Agency Committee on IPR was created initially  numbering 14.  The total membership was 
increased to 19 in November 2000.  
Protection and enforcement of intellectual pr operty rights draws firm foundation and support 
from no less than the Constitution (1987) which explicitl y mandates the State to protect and secure the 
exclusive rights of scientists, inventors, artists and other gifted citizens to their intellectual property 
creation for such periods as may be provided by law. 
 With its legal, judicial and administrative stru cture, the Philippines was ready for membership 
in a multilateral organization invol ving intellectual property rights. 
 B. T
HE PHILIPPINES JOINED WTO  AND THE TRIPS AGREEMENT BECAME PART OF THE LAW OF 
THE LAND   
The Philippines, through the Secretary of Trade and Industry signed the Uruguay Round Final 
Act on 15 April 1994 and the Senate adopted Senate  Resolution No. 97 on 15 December of the same 
year expressing concurrence in the ratification of the VVT0 Agreement by the President of the Philippines, who signed the instrument of ra tification the next day, 16 December 1994. 
 The legal system described earlier continues to th is day.  Furthermore, in compliance with its 
obligation under the WTO Agreement, particular ly under the TRIPS Agreement, the Philippines 
enacted Rep. Act No. 8293 otherwise known as the In tellectual Property Code of the Philippines, 
creating the Intellectual Property Office of the Philippines, and, thereby introduced additional 
enhancements.  The law took effect on 1 January 1998. 
 The IP Code consolidated the salient laws a nd amendments relating to  intellectual property 
rights, and defined Intellectual Property Rights as:  Copyright and Related Rights, Trademarks and 
Service Marks, Geographic Indications, Industrial Designs, Patents, Layout-Designs (Topographies) 
of Integrated Circuits, and Protection of Undisclosed Information. 
 IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 
Page 3 
 
 
While the Philippines has no previous experience in the areas of layout-designs of integrated 
circuits and new plant variety protection, the b ill on layout-designs has been passed by Congress and 
is expected to be enacted by the President shortly wh ile the bill on new plant varieties is in advanced 
stages of discussion in Congress. 
 
C. THE PATENT SYSTEM :  BEFORE AND AFTER  
Under the old law, the Philippines followed the "f irst to invent" system.  We changed that to 
the "first to file" system under the IP Code.  Wh ile inventions received protection for 17 years from 
the grant of patent under the old regime, we have  extended that to 20 years from filing date.  For 
utility models, protection was for five years plus two renewals of five years each under the old law.  
We changed that to a term of seven years without renewal.  For industrial designs, we maintained the 
protection period of five years plus  two renewals of five years each. 
 While the old law provided mandatory substantiv e examination of inventions, utility models 
and industrial designs, the new regime made exam ination optional or upon request for invention, 
while registration is prescribed for utility models and industrial designs.  Layout-designs, under the 
bill passed by Congress, will be protected by regist ration.  The new law specified publication to be 
made after 18 months from filing date or priority date in contrast to the old regime of publication only 
after grant.  The IP Code increased the penalty for repetition of infringement from Ten Thousand Pesos (Php 10,000) and/or five years of imprisonment under the old law to One Hundred Thousand 
Pesos (P100,000) to Three Hundred Thousand Peso s (Php 300,000) and/or imprisonment of six 
months to three years and made prescription of the criminal action three years in lieu of the former two years under the old law. 
 Finally, in order to further enhance its patent  system, the Philippines ratified and became the 
112th member of the Patent Cooperation Treaty which shall enter into effect with respect to the 
Philippines on 17 August 2001. 
 
D. T
HE TRADEMARK SYSTEM :  BEFORE AND AFTER  
 The repealed law governing Trademarks required "actual use" before filing local applications, 
but did not require the same if the application was based on a foreign registration.  The IP Code 
eliminated use as a requirement for applicati ons.  Under the old law, protection was 20 years 
renewable for 20-year periods.  Unde r the new regime, the term is only for ten years renewable for ten 
year periods.  Further, Affidavit of Use (or Non- Use) was required on the fifth, tenth and fifteenth 
anniversaries under the repealed law.  At present, Proof of Use must be fîled within three years from the filing of application.  Affidavit of Use mu st be submitted within one year from the fifth 
anniversary. 
  The IP Code eliminated the Supplemental Register under the old law wherein marks not 
registrable in the principal register were regist ered without opposition a nd were published only after 
registration.  It also increased penalties for in fringement, unfair competition, false designation of 
origin, false description or representation, from th e old Five Hundred Pesos to Two Thousand Pesos 
(Php 500-2,000) to Fifty Thousand Pesos to Two Hundred Thousand Pesos (Php 50,000-200,000).  
Likewise, imprisonment was lengthened from six months  to three years and four months under the old 
law to two to five years under the new law.  While the criminal penalty under the old law could be a 
fine or imprisonment or both at the discretion of  the court, the IP Code imposed both fine and 
imprisonment. 
 IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 4 
 
 E. C
OPYRIGHT :  BEFORE AND AFTER  
 The new law requires deposit of certain works only for the purpose of completing the records 
of the National Library and the Supreme Court Librar y.  Under the old law, deposit with the National 
Library was a requirement for recovery of damages in case of infringement. 
 
 The IP Code repealed Presidential Decree No .285 on compulsory licensing or reprinting of 
educational, scientific or cultural books and materi als whenever the prices thereof became exorbitant 
as to be detrimental to the national interest.  
 The IP Code increased the penalty for infringeme nt.  Under the old law, penalty was Php 200 
to Php 2,000 and/or imprisonment of one year.  No w, penalty for the first offence is Php 50,000 to 
Php 150,000 and imprisonment of one to three y ears.  For a second offence, the penalty is 
Php 150,000 to Php 500,000 and three to six years im prisonment.  For third a nd subsequent offences, 
penalty ranges from Php 500,000 to Php 1.5 million a nd imprisonment of six to nine years.  The 
penalty of fine and imprisonmen t is prescribed for each act of infringement, with subsidiary 
imprisonment in case of insolvency.   The E-Commerce Act which took effect last year penalized cybercrimes such as hacking, 
introduction of computer viruses, and copyright in fringement using telecommunications networks 
such as the Internet with both fines (minimum  Php 100,000 and maximum commensurate with the 
damage incurred) and mandatory imprisonment of six months to three years. 
 F. E
NFORCEMENT OF IPR LAWS IN THE PHILIPPINES  
 Intellectual property rights are sufficiently protected under Philippine laws.  In fact, even the 
Supreme Court recognized the importance of IPRs in  the new economic order such that it designated 
certain Regional Trial Courts to try IPR cases.  The Committee on Revision of Rules of the Supreme 
Court is likewise studying the possibility of amending the Rules of Court to explicitly provide for preventive/provisional measures in infringement cases that will apply to civil actions giving due 
regard to the constitutional right to due processes, e qual protection, and the right of the people to be 
secure in their persons, houses, papers and effects against unreasonable searches ad seizures of whatever nature and for any purpose. 
 
 There are five agencies involved in the enfo rcement of the laws in cluding IPR laws, namely, 
the Bureau of Customs, the National Bureau of Investigation, the Philippine National Police, the 
Videogram Regulatory Board, and the Department of Justice.  
 Together with the Department of Trade and Industry, the Chief Presidential Legal Counsel, 
the Department of Finance, the Intellectual Propert y Office, and ten other agencies, these enforcement 
agencies are members of the Presidential Inter-a gency Committee on IPRs wh ere enforcement efforts 
are coordinated.   The Department of Justice Task Force on Anti-In tellectual Property Piracy consists of at least 
18 prosecutors and some support staff. 
  The National Bureau of Investigation, an agen cy of the Department of Justice, has its own 
IPR Division.  Under its new management, this Di vision will have exclusive jurisdiction in handling 
investigation of IPR violations.  And all the IPR c ases will be consolidated in the IPR Division where 
additional investigators will be assigned with provisi on for further training on the intricacies of IPR 
investigation for improved competence and effectiveness.  IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 
Page 5 
 
 
 In addition to the existing civil, criminal  and administrative procedures, the IP Code 
mandated the Intellectual Property Office to hear ad ministrative complaints for IPR violation with 
authority to grant provisional remedies provided in  the Rules of Court and power to hold and punish 
for contempt all those who disregard others or writs issued in the course of its proceedings.  Decisions 
of the IPO in such complaints are appealable to the Court of Appeals and the Supreme Court. 
  Furthermore, the Intellectual Property Office is  mandated to resolve disputes relating to the 
terms of licence involving the author's rights to public performance or other communication of his work.  Decisions of the IPO in such disputes are appealable to the Secretary of Trade and Industry 
whose decisions in turn are reviewable by the courts .  It is to be noted that in preparation for the 
country's possible membership in the WIPO Internet  Treaties, the IP Code already provided authors 
and performers the right of making available to the pub lic of the work in such a way that members of 
the public may access the work from a place and at a time individually chosen by them. 
 
 As part of our continuing efforts to improve enforcement of IPR, an improved version of the 
bill regulating optical discs is expected to be re filed in the twelfth Congress that will convene next 
month.  It is also expected that the WIPO In ternet Treaties will be s ubmitted to the Senate for 
ratification.  G. O
UTLOOK  
 As a developing nation, we have great expect ations in the advent of this knowledge-based 
global economy.  We are hopeful of harnessing the great  potential of our youth, particularly, in the 
areas of intellectual properties deriving from info rmation and communication technology, and using 
the same to bring our nation into the economic mainstream.  
 
II. RESPONSES TO QUESTIONS POSED BY CANADA 
1. What recourse do right holders have in respect of wilful trademark counterfeiting or 
copyright piracy on a commercial scale, as re quired by Articles 61 of the TRIPS Agreement and 
throughout? 
 
In compliance with Article 61, Philippine law provides for criminal procedures and penalties. 
Intellectual property right holders may file crimin al action for trademark counterfeiting or copyright 
piracy whether or not on a commercial scale.  
Independent of the civil and administrative sanc tions imposed by law, a criminal penalty of 
imprisonment from two (2) years to five (5) years and a fine ranging from Fifty thousand pesos 
(P50,000) to Two hundred thousand pesos (P200,000),  shall be imposed on any person who is found 
guilty of committing infringement of trademark.
3 
 
Any person infringing copyright or aiding or abetting such infringement shall be guilty of a 
crime punishable by: 
(a) Imprisonment of one (1) year to three (3) years plus a fine ranging from Fifty thousand 
pesos (P50,000) to One hundred fifty thousand pesos (P150,000) for the first offence. 
 (b) Imprisonment of three (3) years and one (1) day to six (6) years plus a fine ranging 
from One hundred fifty thousand pesos (P150,000) to Five hundred thousand pesos 
(P500,000) for the second offence. 
                                                     
 
 3 Rep. Act No. 8293 (1998) , Sec.170. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 6 
 
  
(c) Imprisonment of six (6) years and one (1) day to nine (9) years plus a fine ranging from 
Five hundred thousand pesos (P500,000) to One million five hundred thousand pesos 
(P1,500,000) for the third and subsequent offences. 
 
(d) In all cases, subsidiary impris onment in case of insolvency.
4 
 
In determining the number of years of imprison ment and the amount of fine, the court shall 
consider the value of the infringing materials that  the defendant has produced or manufactured and the 
damage that the copyright owner has suffered by reason of the infringement.5 
  
 When the civil aspect of the case is deemed instituted with the criminal case, the following 
provisional remedies may be granted by the court:  
Preliminary Attachment
 
 
At the commencement of the action or at anytim e before entry of judgment, a plaintiff or any 
proper party may have the property of the adverse party attached as security for the satisfaction of any 
judgment that may be recovered. 6 
 
Attachment is considered an advance execution of judgment to prevent ineffective victory. 
 
Preliminary Injunction  
 
This is an order granted at any stage of an ac tion or proceeding prior to the judgment of final 
order, requiring a party or a court, agency or a person  to refrain from a particul ar act or acts.  It may 
also require the performance of a particular act or  acts, in which case it shall be known as preliminary 
mandatory injunction.7 
 Impounding and destruction 
 
 
On the application of the complainant the court may impound during the pendency of the 
action, sales invoices and other document evidencing sales. 8 
 
Infringing goods are likewise subject to destru ction without any compensation while the case 
is pending.9 
 
Seizure and impounding  
 
The court is empowered to order the seizure and impounding of any articles which may serve 
as evidence in the court proceeding.  
                                                     
 
 4 Rep. Act No. 8293 (1998) , Sec. 217.1. 
 5 Rep. Act No. 8293 (1998) , Sec. 217.2. 
6 Rules of Civil Procedure (1997), Rule 57, Sec. 1. 
7 Rules of Court (1964), Rule 58, Sec. 1. 
8 Rep. Act No. 8293 (1998), Sec. 156.2. 
9 Rep. Act No. 8293 (1998) , Sec. 216.1 (d). IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 
Page 7 
 
 
2. What protection does your Copyright legislation afford to "foreign works"? 
 
The Philippines observes the principle of reciproc ity in adhering to international conventions 
such that any person who is a national or who is domiciled or has a real and effective industrial 
establishment in a country which is a party to any convention, treaty, or agreement relating to 
intellectual property rights or the repression of unfair competition, to which the Philippines is also a 
party, or extends reciprocal rights to nationals of th e 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 in tellectual property right is otherwise entitled by the 
Intellectual Property Code.10 
 
 Accordingly, any condition, restriction, lim itation, diminution, requirement, penalty or any 
similar burden imposed by the law of a foreign count ry on a Philippine national seeking protection of 
intellectual property rights in that country, shall r eciprocally be enforceable upon nationals of that 
country, within Philippine jurisdiction.11 
  A non-resident applicant shall appoint a reside nt agent, by special power of attorney, who 
shall be authorized to pursue the application fo r copyright registration and deposit for his/her/its 
behalf with the National Library and/or the Suprem e Court Library and to receive service of notice or 
other legal processes relating to the application and the copyright. In the ev ent of death, absence or 
incapacity of the resident agent, the applicant shall appoint a new resident agent, by special power of 
attorney with revocation of the prior special power of  attorney, and file notice and a copy thereof with 
the National Library and/or the Supreme Court Library.
12 
 
The foregoing provision was promulgated to facilita te and help ensure service of notices and 
legal processes to non-residents.  
Copyright may be enforced by the filing of judicial and administrative actions.  The judicial 
action may be civil, criminal, or both.  These actions are not mutually exclusive and may be 
prosecuted together or independently of each other. 
  Any person infringing copyright and neighbouring rights shall be liable:  
(a) To an injunction restraining such infring ement.  The court may also order the 
defendant to desist from an infringement, among others, to prevent the entry 
into the channels of commerce of  imported goods that involve an 
infringement, immediately after customs clearance of such goods. 
(b) Pay to the copyright proprietor or his assigns or heirs such actual damages, 
including legal costs and other expenses, as he may have incurred due to the 
infringement as well as the profits the infringer may have made due to such 
infringement, and in proving profits the plaintiff shall be required to prove 
sales only and the defendant shall be requi red to prove every element of cost 
which he claims, or, in lieu of actua l damages and profits, such damages 
which to the court shall appear to be ju st and shall not be regarded as penalty. 
 
                                                     
 
10 Rep. Act No. 8293, Sec. 3 
11 Rep. Act No. 8293, Sec. 231; Copyright Safeguards and Regulations, Rule 18 
12 Copyright Safeguards and Regulations, Rule 5, Sec.3 IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 8 
 
 
(c) Deliver under oath, for impounding dur ing the pendency of the action, upon 
such terms and conditions as the court may prescribe, sales invoices and other 
documents evidencing sales, all articles and their packaging alleged to 
infringe a copyright and implements for making them.  
(d) Deliver under oath for destruction without any compensation all infringing 
copies or devices, as well as all plates, moulds, or other means for making 
such infringing copies as the court may order. 
(e) Such other terms and conditions, including the payment of moral and 
exemplary damages, which the court may deem proper, wise and equitable 
and the destruction of infringing copies of the work even in the event of 
acquittal in a criminal case.  
In an infringement action, the court shall al so have the power to order the seizure and 
impounding of any article which may serve as evidence in the court proceedings.
13 
Any person infringing copyright or neighbouring rights or aiding or abetting such 
infringement shall be guilty of a crime punishable by:   
(a) Imprisonment of one (1) year to three (3) years plus a fine ranging from Fifty 
thousand pesos (P50,000) to One hundred fifty thousand pesos (P150,000) 
for the first offence.   
(b) Imprisonment of three (3) years and one (1) day to six (6) years plus a fine 
ranging from One hundred fifty thousand pesos (P150,000) to Five hundred thousand pesos (P500,000) for the second offence.   
(c) Imprisonment of six (6) years and one (1) day to nine (9) years plus a fine 
ranging from Five hundred thousand p esos (P500,000) to One million five 
hundred thousand pesos (P1,500,000) for th e third and subsequent offences.   
(d) In all cases, subsidiary impris onment in cases of insolvency.  
In determining the number of years of impr isonment and the amount of fine, the court 
shall consider the value of the infringing ma terials that the defendant has produced or 
manufactured and the damage that the copy right owner has suffered by reason of the 
infringement.
14 
 Administrative actions are also available for protection of copyright. 
 
Department of Trade and Industry  
The Department of Trade and Industry (DTI) has jurisdiction over complaints regarding 
violations of intellectual property rights irrespective of the total amount of damages claimed, or if no 
damages are claimed.15 
 
                                                      
13 Rep. Act No. 8293, Sec. 216 
14 ibid, Sec. 217 
15 Dept. Administrative Order No.1 (2000). IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 
Page 9 
 
 
Intellectual Property Office  
 
  An IP owner may file administrative complaints  before the Intellectual Property Office (IPO) 
where the total damages claimed is not less th an Two Hundred Thousand Pesos (P 200,000.00).16 
 
Videogram Regulatory Board  
The Videogram Regulatory Board (VRB) has ju risdiction over violations of law involving 
videograms regardless of amount  of damages involved.17 
 
Bureau of Customs  
Upon written request to the Commissioner of Cu stoms, the Bureau of Customs may suspend 
the release of goods, which are imported in violation of the law.18    
 
The administrative remedies include: 
1. A fine of not less than Six Thousand Pesos (P6,000.00) but not more than One Hundred 
Thousand Pesos (P100,000.00) and a non-monetary  penalty consisting of closure, revocation 
of licence or permit and confiscation of vide ograms involved in the violation which the 
Videogram Regulatory Board may impose.19 
2. Administrative penalties which the Secretary of Trade and Industry and the Director of the 
Bureau of Legal Affairs of the Intellectual Property Office may impose: 
• Cease and desist order 
• Acceptance of voluntary compliance or discontinuance 
• Condemnation or seizure of products subject of the offence 
• Forfeiture of paraphernalia, real or personal properties 
• Administrative fines 
• Cancellation of permits licenses or registration granted 
• Withholding of any permit, license or registration being secured 
• Damages 
• Censure 
• Other analogous penalties and sanctions 20 
                                                      
16 Rep. Act No. 8293 (1998) Sec. 10. 
17 Pres. Decree No. 1987 (1985). 
18 Customs Administrative Order No. 7-93 (1993) II.3; Rep. Act No. 1937, Sec. 10.1 (k) . 
19 VRB Revised Rules and Regulations, Sec. 21. 
20 Executive Order No. 913 (1983), Art. III Sec. 6; Rep. Act No. 8293, Sec. 10.2 (b). IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 10 
 
 3. Provisional remedies provided in the Rules of Court which may be granted by the Director of 
the Bureau of Legal Affairs of the Intellectual Property Office such as preliminary attachment,
21 injunction.22 
 
4. Preliminary order23 and other preliminary measures which the Secretary of Trade and Industry 
may impose.24  
 
3. What procedures are available for provisional  measures, in particular civil ex parte 
remedies, pursuant to Article 50 of the TRIPS Agreement? 
  The following provisional measures are ava ilable pursuant to Article 50 of the TRIPS 
Agreement:  (a) Preliminary attachment
 
 
 At the commencement of the action or at any tim e before the entry of judgment, a plaintiff or 
any proper party may have the propert y of the adverse party attached as security for the satisfaction of 
any judgment that may be recovered.25 
  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 part y or hearing of the application is required as the 
time 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 is issued.
26 
 (b) Preliminary injunction/temporary restraining order
 
 
 This is an order granted at any stage of the 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 may also 
require the performance of a particular act or acts, in which case, it is called a preliminary mandatory 
injunction.27 
 
 Any aggrieved party may apply for preliminary injunction by filing a verified complaint with 
the proper court showing the grounds relie d upon and the filing of the required bond.28 
  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 irre parable damage to the applicant.  Within that 
period, the court must conduct a hearing to determin e the propriety of the injunction.  Ordinarily, a 
preliminary injunction has a lifetime of twenty (20) days and 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 
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.
29 
                                                      
 21 Rep. Act No. 8293 (1998), Sec. 10, IRR on Administrative Complaints, Rule 5, Secs. 1 & 3 
22 Rep. Act No. 8293 (1998), Sec. 10, IRR on Administrative Complaints, Rule 5, Secs. 1 & 6 
23 Trade and Industry Ministry Order No. 69, Rule IX (1983), Sec. 49 (A) 
24 Exec. Order No. 913 (1983), Sec. 11 
25 Revised Rules of Civil Procedure (1997), Rule 57, Sec. 1 
26 Revised Rules of Civil Procedure (1997), Rule 57, Sec. 3 
27 Revised Rules of Civil Procedure (1997), Rule,58, Sec. 1 
28 Revised Rules of Civil Procedure (1997), Rule 58, Sec. 3 
29 Revised Rules of Civil Procedure (1997), Rule 58, Sec. 5 IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 
Page 11 
 
 
  Procedures common to the above remedies
 
  Both preliminary attachment and preliminar y injunction/temporary restraining order are 
initiated by filing a verified petition with  the proper court and posting of bond.
30  The petitioner must 
show facts entitling him to the relief demanded.   In both cases, the bond posted by the applican t serves as security for the adverse party and 
answers for damages and costs, which may be ad judged to the adverse party arising from and by 
reason of the provisional remedy. 
 (c) Impounding and destruction
 
 
On the application of the complainant th e court may impound during the pendency of the 
action, sales invoices and other documents evidencing sales.31 
  Infringing goods are likewise subject to destru ction without any compensation while the case 
is pending.
32 
 (d) Seizure and impounding
 
 
 The court is empowered to order the seizure and impounding of any article which may serve 
as evidence in court proceedings.33 
 (e) Proposed revision of rules
 
 
 The Committee on Revision of Rules of the Supreme Court is likewise studying the possibility of amending  the Rules of Court to e xplicitly provide for preventive/provisional measures 
in infringement cases that will apply to civil actions giving due regard to the constitutional right to 
due process, equal protection, and the right of the people to be secure in their persons, houses, papers 
and effects against unreasonable searches and seizu res of whatever nature and for any purpose. 
 
4. How are plant varieties protected in th e Philippines, and how does such protection 
accord with TRIPS obligations?  
 Identical bills (House Bill No. 10654 and Se nate Bill No. 1912) which aim to provide 
sui generis  protection to plant varieties, taking into consideration our TRIPS obligations, are in 
advanced discussion in Congress.  
 
5. How are integrated circuit topographies pr otected in the Philippines, and how does such 
protection accord with TRIPS obligations? 
  Congress has approved the bill on protection of  integrated circuit topographies which is 
expected to be signed by the President shortly. Pr otection for a period of ten years without renewal is 
obtained by registration, counted from either:  (1) date of first commercial exploitation anywhere in 
the world provided the application is filed within two years, or (2) date of filing if not yet previously 
exploited.  The bill was drafted in consultation with the World Intellectual Property Organization 
taking into account the TRIPS Agreement and the cited IPIC Treaty provisions. 
                                                     
 
30 Revised Rules of Civil Procedure (1997), Rule 57, Sec. 1 & 3; Rule 58, Sec. 4 
31 Rep. Act No. 8293, Secs. 156.2 
32 Rep. Act No. 8293, Sec. 216.1 (d) 
33 Rep. Act No. 8293, Sec. 216.2 IP/Q/PHL/1, IP/Q2/PHL/1 
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III. RESPONSES TO QUESTIONS POSED BY  THE EUROPEAN COMMUNITIES AND 
THEIR MEMBER STATES 
A. G
ENERAL PROVISIONS  
1. Please describe if your legislation includes measures necessary to protect public health 
and nutrition, and to promote the public interes t in sectors of vital importance to your socio-
economic and technological development as mentioned under Article 8 of the TRIPS Agreement.  If yes, please explain how such me asures are consistent with the provisions of the 
TRIPS Agreement. 
 
Philippine legislations pursuant to the TR IPS Agreement include measures necessary to 
protect public health and nutrition, and  promote the public interests in sectors of vital importance to socio-economic and technological development as me ntioned under Article 8 thereof. Republic Act 
No. 8293 otherwise known as the "Intellectual Prope rty Code of the Philippines" provides for the 
compulsory licensing to exploit a patented invention,  even without the agreement of the patent owner, 
in favour of any person who has shown his capability  to exploit the invention in case where public 
interest, in particular, national security, nutrition, h ealth or the development of other vital sectors of 
the national economy as determined by the appropr iate agency of the government, so requires.
34 The 
application for compulsory licensing on said ground may be filed anytime.35 
The license will be granted only after the petitione r had made efforts to obtain authorization 
from the patent owner on reasonable commercial te rms and conditions but without success within a 
reasonable period of time.36 Said requirement, however, will not  apply where the petition seeks to 
remedy a practice determined by the judicial or administrative process to be anti-competitive37, or in 
situations of national em ergency or other circumstances of extreme urgency38, and in cases of public 
non-commercial use.39 
This above-described measure is in consonance with the "desire" of the member countries as 
embodied in the TRIPS Agreement "to reduce distorti ons and impediments to in ternational trade, and 
taking into account the need to promote effectiv e and adequate protection of intellectual property 
rights, and to ensure that measures and procedures  to enforce intellectual property rights do not themselves become barriers to legitimate trade".  
Moreover, the measure is also in accordance with the principl e enunciated in the Agreement 
that  "the protection and enforcement of intellectua l property rights should contribute to the promotion 
of technological innovation and to the transfer and dissemination of technology, to the mutual 
advantage of producers and users of technological k nowledge and in a manner  conducive to social  
and economic welfare, and to a ba lance of rights and  obligations."
40 
Indeed, without such measure, intellectual property rights may be abused by the holders 
thereof to the detriment of national interest a nd exigencies and the common good.  A right holder may 
be tempted to withhold his creation  which could be crucial to public health and nutrition and in the 
                                                      
34 Rep. Act No. 8293 (1998), Sections 93, 93.2 ; Regulations on Inter Partes Proceedings, Rule 6,  
Section 3 (b). 
35 Rep. Act No. 8293, Sec. 94.2 ; Regulations on Inter Partes Proceedings,  Rule 6, Section 2. 
36 Rep. Act No. 8293, Sec. 95.1 ; Regulations on Inter Partes Proceedings,  Rule 6, Section 4. 
37 Rep. Act No. 8293, Sec. 95.2 (a), ; Regulations on Inter Partes Proceedings, Rule 6, Section 5 (a).  
38 Rep. Act No. 8293, Sec. 95.2 (b); Regulations  on Inter Partes Proceedings, Rule 6, Section 5 (b). 
39 Rep. Act No. 8293, Sec. 95.2 (c) ; Regulations on Inter Partes Proceedings, Rule 6, Section 5 (c). 
40 TRIPS Agreement,  Article 7. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 
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promotion of public interest in technological deve lopment so vital to the socio-economic progress of 
the country.  The measure is likewise consistent w ith the TRIPS Agreement in that the protection of 
the intellectual property right holders is not compro mised with the existence of procedure requiring 
notice and hearing where any interested party may participate.41 Moreover, the intellectual property 
right owner shall be paid adequa te remuneration taking into account the economic value of the grant 
or authorization. However, where the license is gran ted to correct a practice which, after judicial or 
administrative process, is found to be anti-compet itive, the need to co rrect the anti-competitive 
practice may be taken into account in  fixing the amount of remuneration.42 Moreover, the license may 
be amended, cancelled or surrendered. 43 
There are other Philippine laws and regula tions providing measures contemplated under 
Article 8 of the TRIPS Agreement as regards public health and nutrition. The Department of Health, 
pursuant to its mandate under the law44, may authorize the importation of a pharmaceutical product 
with a registered counterpart brand in the Philippin es to make it more affordable and available to the 
public, especially the marginalized.45 On the matter of disclosure of information, the Department of 
Health, through the Bureau of  Food and Drugs , requires the registration by the seller and 
manufacturer of drugs or devices requiring them to s ubmit full reports of investigation to show  that 
the drug or device is safe,  and full description of  the methods, facilities  and controls used as 
components thereof as the Secretary of Health may require.46 The disclosed information, however, is 
protected.  
B. C OPYRIGHT AND RELATED RIGHTS  
2. Please state how your legislation provides for the protection of the exclusive rights of 
authors in relation to their literary and artistic works, as specified in Article 9 of the TRIPS 
Agreement which requires Members to comply with  Articles 1-21 of the Berne Convention and 
the Appendix to the Berne Convention (1971)).  
 The Philippines is a member of the Berne Conve ntion, recognizes and protects the exclusive 
rights of the authors with respect to their literary an d artistic works, to carry out, authorize or prevent 
the following acts:  
a. Reproduction of the work or substantial portion of the work; 
 
b. Dramatization, translation, adaptati on, abridgement, arrangement or other 
transformation of the work; 
 c. The first publication of the original and each copy of the work by sale or other forms 
of transfer of ownership; 
 
d. Rental of the original or a copy of an audiovisual or cinematographic work, a work 
embodied in a sound recording, a computer program, a compilation of data and other 
materials or a musical work in graphic form, irrespective of the ownership of the original or the copy which is the subject of the rental; 
 
e. Public display of the original or a copy of the work; 
                                                     
 
41 Rep. Act No. 8293, Sec.  99 ; Regulations on Inter Partes Proceedings, Rule 6, Sections 6 & 10. 
42 Rep. Act No. 8293, Sec. 100 ; Regulations on  Inter Partes Proceedings, Rule 6, Section 13 
43 Rep. Act No. 8293,Sec. 101; Regulations on Inter Partes Proceedings, Rule 6, Sections 14, 15 & 16.  
44 Executive Order No.  292, otherwise known as the Administrative Code of 1987. 
45 Administrative Order No. 85, series of 2000. 
46 Rep. Act No. 3720 (1963), otherwise known as the Food, Drug and Cosmetic Act. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 14 
 
 
 f. Public performance of the work; and  
g. Other communication to the public of the work.
47 
  
Any person infringing any right of the author may be liable to an injunction restraining such 
infringement; to pay the copyright proprietor or his assigns or heirs, actual damages and other 
expenses; to deliver the infringing articles, among others, for impounding and destruction; and to pay 
moral and exemplary damages, as ma y be determined by the court.48 
 
 Criminal penalties may likewise be imposed on persons liable for infringement or any person 
aiding or abetting such infringement. These may include imprisonment ranging from one (1) year to nine (9) years and/or fine from Fifty Thousand Pesos (P50,000) to  One Million Five Hundred Thousand Pesos (P1,500,000).
49 
 3. Please describe the protection accorded to authors of computer programs, databases or 
compilations of data. 
 
 Philippine law includes computer programs in th e enumeration of "literary and artistic works" 
protected by copyright.
50 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.51 
  Notwithstanding exclusive reproduction right, th e 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 necessar y 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, fo r 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.
52 Any such copy or adaptation of the computer program shall be 
destroyed in the event that continue d possession thereof ceases to be lawful.53 
 
 Philippine law protects by copyright "compila tions of data and other materials which are 
original by reason of the selection or coordinati on or arrangement of their contents" as derivative 
works.54 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 exte nd copyright in such original works.55   
  The author of a copyrightable computer pr ogram 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.
56 
 
                                                      
47 Rep. Act No. 8293, Sec. 177 
48 Rep. Act No. 8293, Sec. 216 
49 Rep. Act No. 8293, Sec. 217 
50 Rep. Act No. 8293, Sec. 172.1 
51 Rep. Act No. 8293, Sec. 172.2 
52 Rep. Act No. 8293, Sec. 189.1  
53 Rep. Act No. 8293, Sec. 189.2 
54 Rep. Act No. 8293, Sec. 173.1(b) 
55 Rep. Act No. 8293,Sec. 173.2 
56 Rep. Act No. 8293, Sec. 213.1 IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 
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4. Please state whether your legislation provides for a rental right and, if so, the works to 
which it applies.  
 Yes, the Philippines provides for rental right in its legislation. As part of the author's 
copyright or economic rights, he shall have the exclusive right to carry out, authorize or prevent the 
rental of the original or a copy of:  
a. An audiovisual or cinematographic work, 
 
b. A work embodied in a sound recording, 
 c. A computer program, 
 d. A compilation of data and  
 
 Other materials or a musical work in graphic form.
57 
 
5. Please describe the rights granted to p erformers, producers of phonograms (sound 
recordings) and broadcasting organizations under your legislation.  
(a) Performers enjoy both economic and moral rights as regards their performances. The 
performers have the right to authorize: 
a. The broadcasting and other communication to the public of their performances; 
 b. The fixation of their unfixed performance; 
 
c. The direct or indirect reproduction of thei r performances fixed in sound recordings in 
any manner or form; 
 d. The first public distribution of the original and copies of their performance;  
 
e. 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 performer;  and  
 f. The making available to the public of their performances fixed in sound recordings, 
by wire or wireless means.
58 
 
In addition, the performer shall, as regards his live aural performance s or performances in 
sound recordings have the right: 
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. 59 
 
 The performer shall likewise be entitled to an additional remuneration for every 
communication to the public subsequent to the firs t communication to the public or broadcast thereof 
                                                      
57 Rep. Act No. 8293, Sec. 177.4 
58 Rep. Act No. 8293, Sec. 203 
59 Rep. Act No. 8293, Sec. 204 IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 16 
 
 equivalent to at least five percent (5%) of the original compensation for the first communication or 
broadcast.
60 
  
(b) Producers of sound recordings, on the other hand, enjoy the following exclusive rights: 
 
a. The right to authorize the direct or indirect reproduction of their sound recordings, in 
any manner or form; the placing of these reproductions in the market and the right of rental or lending; 
 
b. The right to authorize the first public distri bution of the original and copies of their 
sound recordings through sale or rental or ot her forms of transferring ownership;  and 
 c. The right to authorize the co mmercial rental to the public.
61 
 
Producers of sound recordings and performers sha ll likewise be entitled to a single equitable 
remuneration for broadcasting or other communication to the public of the sound recording that was 
used for profit.62 
 
(c) As far as broadcasting organizations are concer ned, their exclusive rights extend to the right 
to carry out, authorize or prevent the following acts: 
 
a. The rebroadcasting of their broadcasts; 
 b. The recording in any manner, including the making of films or the use of video tape, 
of their broadcasts for the purpose of communication to the public of television 
broadcasts of the same;  and 
 c. The use of such records for fresh tr ansmissions or for fresh recording.
63 
 
The rights granted to performers and producers of  sound recordings expire fifty (50) years 
from the end of the year in which the pe rformance took place in case of performances not 
incorporated in recordings, and fifty (50) years fro m the end of the year in  which the recording took 
place for sound or image and sound recordings and fo r performances incorporated therein. In case of 
broadcasts, the term shall be twenty (20) years from the date the broadcast took place.64 
 
6. Please state whether your legislation provides for any limitation or exception in relation 
to each of the rights described above in acco rdance with the relevant provisions of the Berne 
and Rome Conventions and in light of Arti cles 13 and 14.6 of the TRIPS Agreement. 
 
Limitations on Copyright  
 
Notwithstanding the copyrights or economic rights enjoyed by authors of literary and artistic 
works, the law allows the use and reproduction of  copyrighted works in certain special cases, 
provided that such reproduction does not conflict wi th the normal exploitation of the work and does 
not unreasonably prejudice the legitimate interest of the author.65 
                                                      
60 Rep. Act No. 8293, Sec. 206 
61 Rep. Act No. 8293, Sec. 208 
62 Rep. Act  No. 8293, Sec. 209 
63 Rep. Act No. 8293, Sec. 211 
64 Rep. Act No. 8293, Sec. 215 
65 Rep. Act 8293, Sec. 184.2 IP/Q/PHL/1, IP/Q2/PHL/1 
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Permitted Use  
The following special ca ses shall not constitute infringement of copyright and serve as  
limitations on copyright 66: 
(a) The recitation or performance of a work, once it has been lawfully made 
accessible to the public, if done privately and free of charge or if made 
strictly for a charitable or religious institution or society; 
(b) The making of quotations from a published work if they are compatible with 
fair use and only to the extent justified for the purpose, including quotations 
from newspaper articles and periodicals in the form of press summaries: 
Provided, That the source and the name of the author, if appearing on the 
work, are mentioned;  
(c) The reproduction or communication to the public by mass media of articles 
on current political, social, economic, scientific or religious topic, lectures, 
addresses and other works of the same natu re, which are delivered in public if 
such use is for information purposes and has not been expressly reserved: 
Provided, That the source is clearly indicated;  
(d) The reproduction and communication to the public of literary, scientific or 
artistic works as part of reports of cu rrent events by means of photography, 
cinematography or broadcasting to th e extent necessary for the purpose;  
(e) The inclusion of a work in a publication, broadcast, or other communication 
to the public, sound recording or film, if such inclusion is made by way of 
illustration for teaching purposes and is co mpatible with fair use: Provided, 
That the source and of the name of the author, if appearing in the work, are 
mentioned; 
(f) The recording made in schools, univers ities, or educational institutions of a 
work included in a broadcast for the use of such schools, universities or 
educational institutions: Provided, That  such recording must be deleted 
within a reasonable period after they we re first broadcast: Provided, further, 
That such recording may not be made from audiovisual works which are part 
of the general cinema repertoire of f eature films except for brief excerpts of 
the work; 
(g) The making of ephemeral recordings by a broadcasting organization by 
means of its own facilities and for use in its own broadcast;  
(h) The use made of a work by or under the direction or control of the 
Government, by the National Library or  by educational, scientific or 
professional institutions where such use is in the public interest and is 
compatible with fair use; 
(i) The public performance or the communication to the public of a work, in a 
place where no admission fee is charged in respect of such public 
performance or communication, by a club or institution for charitable or 
educational purpose only, whose aim is not profit making, subject to such 
other limitations as may be provided in the Regulations; 
                                                      
66 Rep. Act 8293, Sec. 184.1 IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 18 
 
 
(j) Public display of the original or a copy of the work not made by means of a 
film, slide, television image or otherwise on screen or by means of any other 
device or process: Provided, That either the work has been published, or, that original or the copy displayed has been sold, given away or otherwise transferred to another person by th e author or his successor in title; and 
(k) Any use made of a work for the purpose of any judicial proceedings or for the 
giving of professional advi ce by a legal practitioner. 
Fair Use
 
 
As a further limitation on copyright, the law a llows fair use of a copyrighted work for 
criticism, comment, news reporting, teaching, including multiple copies for classroom use, 
scholarship, research, and similar purposes.  Fa ir use also includes decompilation, which is 
understood as the reproduction of the code and transl ation of the forms of the computer program to 
achieve the inter-operability of an independently created computer program with other programs.67   
The rules on fair use shall also apply to unpublished works.68 
 
Work of Architecture  
 Copyright in work of architecture does not incl ude the right to control the reconstruction or 
rehabilitation in the same style as the original of a building to which the copyright relates.
69 
 
Reproduction of Published Works  
 The private reproduction of a published work in a single copy, where the reproduction is 
made by a natural person exclusively for research a nd private study, shall be permitted, without the 
authorization of the owner of copyright except in cases provided for by law.
70  
 
Reprographic Reproduction by Libraries  
  Reprographic reproduction of a single copy by a non-profit library or archive even without 
the authorization of the author or copyright owner is allowed in the following instances
71: 
 
(a) Where the work by reason of its fragile character or rarity cannot be lent to 
user in its original form; 
 (b) Where the works are isolated articles contained in composite works or brief 
portions of other published works and th e reproduction is necessary to supply 
them; when this is considered expedien t, to person requesting their loan for 
purposes of research or study instead of lending the volumes or booklets which contain them;  and 
 (c) Where the making of such a copy is in order to preserve and, if necessary in 
the event that it is lost, destroyed or rendered unusable, replace a copy, or to 
replace, in the permanent collection of another similar library or archive, a copy which has been lost , destroyed or rendered unusable and copies are not 
available with the publisher." 
                                                     
 
67 Rep. Act 8293, Sec. 185.1 
68 Rep. Act 8293, Sec. 185.2 
69 Rep. Act 8293, Sec. 186 
70 Rep. Act 8293, Sec. 187.1 
71 Rep. Act 8293, Sec. 188.1 IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 
Page 19 
 
 
However, the reproduction of a volume of a work  published in several volumes or to produce 
missing tomes or pages of magazines or similar works is not allowed unless the volume, tome or part is out of stock.   Except for special reasons, a lib rary entitled by law to receive copies of a printed 
work, is entitled to reproduce a copy of a pub lished work which is considered necessary for the 
collection of the library but which is out of stock.
72 
 
Reproduction of Computer Programs  
  The authorization of the owner of copyright in a computer program is not necessary for the 
reproduction of a computer program in a single back-up copy provided that the reproduction is done 
by the lawful owner of that computer program and is necessary for:
73 
(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)  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. 
The single back up copy shall be used only for the purposes determined above or compatible 
with fair use, and any such copy or adaptation shall be destroyed in th e event that continued 
possession of the copy of the computer program ceases to be lawful.74 
 Importation for Personal Use
 
 
The importation of a copy of a work, by an  individual for his pe rsonal purposes shall be 
permitted without the authorization of the owner of  copyright in the work provided its use will not 
violate the rights of owner of copyright or annul or limit the protection secured by law75 under the 
following circumstances:76 
(a) When copies of the work are not available in the Philippines and: 
(i) Not more than one (1) copy at one time is imported for 
strictly individual use only;   or 
(ii) The importation is by authority of and for the use of the 
Philippine Government;  or 
(iii) The importation, consisting of not more than three (3) such 
copies or likenesses in any one invoice, is not for sale but for the use only of any religious, charitable, or educational 
society or institution duly incorporated or registered, or is for the encouragement of the fine arts, or for any state school, 
college, university, or free public library in the Philippines. 
                                                     
 
72 Rep. Act 8293, Sec. 188.2 
73 Rep. Act 8293, Sec. 189.1 
74 Rep. Act 8293, Sec. 189.2 & 189.3 
75 Rep. Act 8293, Sec. 190.2 
76 Rep. Act 8293, Sec. 190.1 IP/Q/PHL/1, IP/Q2/PHL/1 
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(b) When such copies form parts of lib raries and personal baggage belonging to 
persons or families arriving from fore ign countries and are not intended for 
sale, provided, that such copies do not exceed three (3). 
 
Limitations on Neighbouring Rights
 
 The rights enjoyed by performers shall ceas e once the performer has authorized the 
broadcasting or fixation of his performance
77 except for the performer's right for additional 
remuneration for subsequent communications or broadcast of his performance.78 Likewise, the 
performer's right is subject to the limita tions on copyright protection and fair use.79 
 Likewise, the rights enjoyed by producer of sou nd recordings is also subject to the limitations 
on copyright protection and fair use.
80 
 
The law further states that performers, producers of sound recording and broadcasting 
organization may not object to the use of their pe rformances, sound recordings and broadcast relating 
to:81 
 
(a) The use by a natural person exclusiv ely for his own personal purposes;  
(b) Using short excerpts for reporting current events;  
(c) Use solely for the purpose of teaching or for scientific research;  and  
(d) Fair use of the broadcast subject to the conditions under section 185. 
 
7. Please state the terms of protection of ea ch right described above and the work or 
subject matter to which it applies. 
 Term of Protection for Literary and Artistic Works
 
  Literary and artistic works and its derivatives sh all be protected during the life of the author 
and for fifty (50) years after his death. Th is rule also applies to posthumous works.
82 
 
 In case of works of joint authorship, the economic rights shall be protected during the life of 
the last surviving author and for fifty (50) years after his death.83  
  In case of anonymous or pseudonymous works, th e copyright shall be protected for fifty (50) 
years from the date on which the work was first lawful ly published.  If unpublished shall be protected 
for fifty (50) years counted from the making of the work.  In case before the expiration of the said 
period, the author's identity is revealed or is no longer in doubt the term of protection enjoyed by  authors whose identity is known shall apply.
84  
 
                                                      
77 Rep. Act 8293, Sec. 205.1  
78 Rep. Act 8293, Sec. 206 
79 Rep. Act 8293, Sec. 205.2 
80 Rep. Act 8293, Sec. 210 
81 Rep. Act 8293, Sec. 212 
82 Rep. Act 8293, Sec. 213.1 
83 Rep. Act 8293, Sec. 213.2 
84 Rep. Act 8293, Sec. 213.3 IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 
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 In case of works of applied art, the protection sh all be for a period of twenty-five (25) years 
from the date of making.85  
  In case of photographic works, the protection shall be for fifty (50) years from publication of 
the work and, if unpublished, fifty (50) years from the making.
86  
 
In case of audio-visual works including tho se produced by process analogous to photography 
or any process for making audio-visual recordings, th e term shall be fifty (50) years from date of 
publication, and, if unpublished, from the date of making.87 
 
Term of Protection for Performers, Producers and Broadcasting Organizations  
  The rights granted to performers and pro ducers of sound recordings shall expire:
88 
 
 (a) For performances not incorporated in reco rdings, fifty (50) years from the end of the 
year in which the performance took place;  and 
  (b) For sound or image and sound recordings and for performances incorporated therein, 
fifty (50) years from the end of the year in which the recording took place.  
 
In case of broadcasts, the term shall be twenty (20) years from the date the broadcast took 
place. The extended term shall be applied only to old works with subsisting protection under the prior 
law.
89  
 
8. Please state how your legislation grants the retroactive protection provided pursuant to 
Article 18 of the Berne Convention (the obligation of which derives from Article 9 of the TRIPS 
Agreement) and Article 14.6 of the TRIPS Agreement.  
 The retroactive protection provided pursuant to Article 18 of the Berne Convention (the 
obligation which derives from Article 9 of the TR IPS Agreement) and Article 14.6 of the TRIPS 
Agreement is recognized through a provision in th e Intellectual Property Code that the protection 
afforded to by the Law on Copyright shall also a pply to copyrightable works, performers, producers 
of sound recordings and broadcasti ng organizations that are to be protected by virtue of and in 
accordance with any international convention or other international agreement to which the 
Philippines is a party.
90 
 
C. T RADEMARKS  
9. Please give the definition of a sign under your national legislation and explain under 
what conditions it is protectable.  
Sign forms part of the definition of a mark, viz: "mark" means any visible sign capable of 
distinguishing the goods (trademarks) or  services (service mark) of an enterprise.
91 
 
                                                      
85 Rep. Act 8293, Sec. 213.4 
86 Rep. Act 8293, Sec. 213.5 
87 Rep. Act 8293, Sec. 213.6 
88 Rep. Act 8293, Sec. 215.1 
89 Rep. Act. 8293, Sec 215.2 
90 Rep. Act. 8293, Sec. 221.2 & 224.2 
91 Rep. Act 8293,  Section 121.1  IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 22 
 
 
A sign may be a written word, name, symbol, emblem, device, design or logo or any 
combination thereof. 
A sign or mark is protectable when the same is  registered in the Intellectual Property Office, 
and when a Declaration of Actual Use is filed within three (3) years from filing date
92 and within one 
(1) year from the fifth anniversary of the date of registration of the mark.93  Internationally well-
known marks are also protectable whether registered or not, the advantage of registration being that, 
protection can be claimed with regard to goods th at are not similar to those which registration is 
applied for.94 
 
10. Please confirm whether or not services are a protectable subject matter in your 
trademark law.  Please confirm if signs, such as  trade names, are protectable.  Please describe if 
elements such as sound, perfumes and containers are protectable.  
 In addition to trademarks, service marks, tradenames and stamped or marked container of goods are also protected.
95 
  Olfactory and auditory marks are not protected  because the law limits the definition of  
"mark" to visual marks only. 
 
11. Please explain what the requirements of use are, if any, as a condition for a trademark 
registration.  Please explain the definition of  use and the conditions of maintenance of a 
registration in that respect.  
 Actual use of mark is not required upon filing of application, as mere intent to use the same is 
sufficient. However, a declaration of actual use of the mark in commerce is re quired within three (3) 
years from the filing date of the application.
96  A certificate of registration shall remain in force for ten 
(10) years, provided, that the registrant shall file a declaration of actual use and evidence to that effect 
within one (1) year from the fifth anniversary of the date of the registration of the mark.97 
 
12. Please confirm whether or not your legislation permits that the registration of 
trademarks be indefinitely renewable. 
  A Certificate of Registration may be renewed fo r periods of ten (10) years at its expiration 
upon payment of the prescribed fee and upon filing a request. Although the duration of registration is 
10 years, no limit is set for the number of renewals.
98 
 13. Please describe the special requirements, if any, prescribed by your legislation 
concerning the use of a trademark. 
 
There is no special requirement under Philippi ne legislation on the use of trademarks. 
 
                                                     
 
92 Rep. Act 8293,  Section 124.2; Trademark Rules and Regulations, Rules 204, 618,801 
93 Rep. Act 8293, Section 145, Trademark Rules and Regulations , Rule 801 
94 Rep. Act 8293, Section 123 (f); Trademark Rules and Regulations, Rule 101 
95 Rep. Act 8293, Section 121.1 
96 Rep. Act 8293, Section 124.2 
97 Rep. Act 8293, Section 145 
98 Rep. Act 8293, Section 146; Trademark Rules and Regulations, Rule 917 IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 
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D. G EOGRAPHICAL INDICATIONS  
14. Please explain whether or not your tr ademark registration authority refuses a 
trademark application if it contains a geographical indication.  
 Under Philippine laws, a mark cannot be registered if it is likely to mislead the public, 
particularly as to the nature, quality, characteris tic or geographical origin of the goods or services.
99 
 
15. Please give the definition of a geographical indication in your legislation. 
 
 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.100 
 
16. Please describe and explain the provisions of your legislation establishing a link, if any, 
between the characteristics of an indication and its geographical origin. 
 
 Any person who, on or in connection with any goods or ser vices, or any container for goods, 
uses in commerce any false designation of origin, wh ich, in commercial advertising or promotion, 
misrepresents the geographic origin of his or he r or another person's goods, services, or commercial 
activities, shall be liable to a civil action for dama ges and injunction by any person who believes that 
he or she is or likely to be damaged by such act.  Independent of the civil and administrative 
sanctions, a criminal penalty of 2-5 years and fi ne P50, 000-P200,000 shall also be imposed upon the 
person found guilty committing the above acts.   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.
101 
 
17. Please describe how additional protection is granted by your legislation to wines and 
spirits.  Please mention other types of products, if any, covered by this additional protection. 
 
 The protection of geographical indications specifi cally in respect to wines and spirits pursuant 
to Article 23.2 of the TRIPS Agreement is provided under the existing trademark law regime 
considering that trademarks and geographic i ndications perform sim ilar 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.
102 
 
18. Please explain how exceptions under Article 24 of the TRIPS Agreement are used in 
your jurisdiction.  Please provide examples of the use of the exceptions by courts or lists of names considered as generic in your jurisdiction. 
  In Philippine jurisdiction, the law on trademarks  provides the legal means to assert and defend 
rights in respect of geographical indications. In case of conflict, the determining factors would 
include: the date of first use of mark/the first u ser of mark, and whether the mark is continuously 
used, and whether use is done in good faith.  
                                                     
 
99 Rep. Act 8293, Section 123.1 
100 Trademark Rules and Regulations, Rule 101 par. (g) 
101 Rep. Act 8293, Sections 169.1,169.2, 170 
102 Rep. Act 77394 (Consumer Act of the Philippines), Article 77 par. (d) viii; Rep. Act 8293, 
Section 151; Rules and Regulations on Inter Partes  Proceedings, Rule 8 IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 24 
 
 E. I
NDUSTRIAL DESIGNS  
19. Please explain whether or not your legislation extends to the protection of designs 
dictated essentially by technical or functional considerations.  Please explain how textile designs 
are protected. 
  Designs dictated essentially by technical or functional considerations  are not protected under 
the law on Industrial Designs. However, they can be protected under the law on Utility Models
103. 
   Textile designs can be protected by industrial design registration
104. 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, i ndicating that the design shall be applied to 
textile;  
  (b)  A representation of the article of ma nufacture or handicraft by way of drawings, 
photographs or other adequate graphic repr esentation of the design as applied to the 
article of manufacture or handicraft which clearly and fully discloses those features for which design protections is claimed
105;  and 
 
  (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 assi gned to the patent examiner for formality 
examination.
106 
 
The filing fee may be paid within one (1) month from the date the application was received by 
the office.107  
 If the application meets the requirement for regi strability, the examiner shall forward to the 
applicant a notice of registrability requiring the pa yment for the issuance and publication fees. Upon 
payment of the required fees, a certificate of registra tion shall be issued to th e applicant.  In case the 
application fails to meet the requirements for regist rability, 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 application, (2) amending the app lication, or (3) upon payment of the required fee, 
requesting for a registrability report. The registrability  report shall contain citations of relevant prior 
art documents with appropriate indications as to thei r degree of relevance, which will serve as an aid 
to determine the validity of the industr ial 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.
108  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 
                                                      
103 Rep. Act 8293, Chapter XII 
104 Rule 309 of the IRR for Utility Models and Industrial Designs  
105 Rep. Act No. 8293, Sec. 114, paragraph (d). 
106 Rules 307 and 308 of the IRR for Utility Models and Industrial Designs. 
107 Rule 310 of the IRR for Utility Models and Industrial Designs.  
108 Rule 452 of the IRR for Utility Models and Industrial Designs. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 
Page 25 
 
 
prosecute may be revived as a pending application w ithin a period of four (4) months from mailing 
date of the notice of withdrawal.109  
 Textile designs, whether or not registrable as industrial design, are also protected under 
Copyright.110 
 20. Please explain how your legislation protects right holders of a design against importing 
of articles bearing embodied or copied design.  
The law on Industrial Design confers to the owne r of an Industrial Design Registration the 
right to restrain, prohibit and prevent any unauthor ized person or entity from making, using, offering 
for sale, selling or importing a product cove red by such Industrial Design Registration.
111 
  
21. Please state whether or not your legislation pr ovides for the right to issue a compulsory 
licence for industrial designs. 
  The provisions on compulsory licensing do not apply to  industrial designs. 
 
22. Please indicate for what period of time your legislation grants protection for industrial 
designs.  
The law provides for a term of protection of fi ve (5) years from the filing date for industrial 
design registration, renewable for not more than tw o (2) consecutive periods of five (5) years each, by 
paying the renewal fee.
112 
 
F. P ATENTS  
23. Please describe how your legislation defines the notions of: novelty, inventiveness and 
industrial application.  
 Novelty.  An invention shall not be consid ered new if it forms part of a prior art.
113  
  Inventive Step.  An invention involves an inventive step if, having regard to prior art, it is not 
obvious to a person skilled in the art at the time of th e filing date or priority date of the application 
claiming the invention.
114 
   Industrial applicability. An invention that can be produced and used in any industry shall be 
industrially applicable.
115 
 24. Please explain whether or not in your legislation, patent or otherwise, patent rights are 
enjoyed without any exclusions.  If exclusions  are provided for, please describe in detail how 
these exclusions are applied in legal as well as practical terms.  
 Under Philippine law, the exclusive rights conf erred to the owners of the patent are: 
 
                                                     
 
109 Rule 453 of the IRR for Utility Models and Industrial Designs. 
110 Rep. Act No. 8293, Sec. 172, paragraph (h). 
111 Rep. Act 8293, Sec. 119 and Sec. 71(a) 
112 Rep. Act 8293, Sec.118. 
113 Rep. Act 8293, Sec. 24. 
114 Rep. Act 8293, Sec. 26. 
115 Rep. Act 8293, Sec. 27. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 26 
 
  - the making, using, offering for sale, selling and importing a patented product, or a 
product obtained directly or indirectly fro m a patented process or the use of a 
patented process;
116  
 
 - to assign or transfer by succession the pate nt and to conclude licensing contracts for 
the same.117 
  Exceptions to these exclusive rights are:  
 - where the exploitation of the patent is  done privately and on a non-commercial scale 
or for a non-commercial purpose;
118  
 
 - where the act of making or using the pa tent is for the sole purpose of scientific 
research and experiment;119  
 
 - where the patented product was put on the market  in the Philippines  by the owner of 
the patent or with his authorization;120 
  - 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 prescription;
121 
 
 - where the use of the patented product occurs in vehicles in transit in the country.122 
 
25. Please explain whether your legislation provid es for the exclusion of inventions from 
patentability based on ordre public or morality.  If so, please explain the relevant section of your 
legislation and explain its formulation.  Please al so explain if it has been applied in practice. 
 
 Philippine law lists, "anything which is cont rary to public order or morality" under Non-
patentable Inventions.123 
 
26. Please explain whether or not diagnostic, th erapeutic and surgical methods are excluded 
from patentability in your legislation. If so, pl ease explain the relevant section of your legislation 
and explain its formulation.  
 The Philippine law lists as non-patentable inven tions : methods of treatment of the human or 
animal body by surgery or therapy and diagnostic methods practiced on the human or animal body 
except products and compositions for use in any of these methods.
124 
 
                                                      
116 Rep. Act 8293, Sec. 71.1(a) & (b). 
117 Rep. Act 8293, Sec. 71.2. 
118 Rep. Act 8293, Sec. 72.2. 
119 Rep. Act 8293, Sec. 72.3. 
120 Rep. Act 8293, Sec. 72.1. 
121 Rep. Act 8293, Sec. 72.4. 
122 Rep. Act 8293, Sec. 72.5. 
123 Rep. Act 8293, Sec. 22.6. 
124 Rep. Act 8293, Sec. 22.3; Rules and Regulations on Inventions, Rule 202 (c ). IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 
Page 27 
 
 
27. Please explain whether or not plants, anim als and essentially biological processes are 
excluded from patentability in your legislation. If so, please explain the relevant section of your legislation and explain its formulation.  
  Philippine law lists as non-patentable inven tions: plant varieties or animal breeds or 
essentially biological processes for the production of pl ants and animals. This provision of law does 
not apply to micro-organisms and non-biological and microbiological processes.
125 
 
28. Please describe how micro-organisms, non-essentially biological processes, 
microbiological processes and plant varieties are prot ected in your legislation. Please explain, in 
this respect, the relevant sections of your legislation.  
 Micro-organisms, essentially non-biological processes and microbiological processes are 
protected by patents under Philippine law.
126  
 
 Applications relating to micro-organisms are subject to the special provisions set out in Rules 408 and 409. If an invention concerns a mi crobiological process or the product thereof and 
involves or relates to the use of a micro-organism or other biological material which is not available to 
the public and which cannot be described in the pate nt application in such a manner to enable the 
invention to be carried out by a person skilled in the art, then the disclosure is not considered to have 
satisfied the requirements of sufficiency unless the requirements have been met, such as: 
 
• a culture of the biological material must have been deposited w ith an international 
depository institution recognized by the IPO; 
• the depository institution and the file number of the culture deposit are stated in the 
application; 
• the deposited culture is made available upo n request to any person from the date of 
publication of the application. 
 
 If the biological material is not available to the public and if it could not be described in the application in such a manner as to enable the inven tion to be carried out by a person skilled in the art, 
the applicant must give the relevant informa tion concerning the classification of the biological 
material and significant differences from known bi ological material. The applicant must indicate 
every specific morphological and physiological characteristic for recognition and propagation of the 
micro-organism or other biological material and the proposed taxonomic classification.  
  Identical bills (House Bill No. 10654 and Senate Bill No. 1912) which aim to provide 
sui generis  protection to plant varieties, taking into consideration our TRIPS obligations, are in 
advanced discussion in Congress. 
 
29. Please explain how your legislation protects patent right holders against the importing 
and against the offering for sale of a patented invention.  
 Under Section 71 of the IP Code, the exclusiv e rights conferred to the owners of the patent 
are: 
  - the making, using, offering for sale, selling and importing a patented product, or a 
product obtained directly or indirectly fro m a patented process or the use of a 
patented process.
127 
                                                      
125 Rep. Act 8293, Sec. 22.4; Rules and Regulations on Inventions, Rule 202 (c ). 
126 Rep. Act 8293, Sec. 22.4.  
127 Rep. Act 8293, Sec. 71.1(a) & (b). IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 28 
 
  - to assign or transfer by succession the pate nt and to conclude licensing contracts for 
same.
128 
 
30. Please state if your legislation provides for patent product protection of pharmaceutical 
and agricultural chemical products.  In the a ffirmative, please indicate the legal reference. 
 
 Pharmaceutical and agricultural chemical produc ts as well as all other products not listed in 
the provision listing the non-patentable inventions  may be patentable under Philippine law provided 
they meet the requirements of patentability.  
The Philippine legal reference for this is  Section 22 of Rep. Act 8293 listing the non-
patentable inventions. Section 22.3 by exclusi on renders pharmaceutical products as patentable.  
Pharmaceutical substances are considered as products and are patentable. A pharmaceutical 
substance with an improvement introduced ther eon becomes a new patentable product. A new 
application of a known substance is patentable if it claims any of the following improvements: 
• a first medical use of the known substa nce or composition provided it was not 
previously disclosed for use in surgery, th erapy or diagnostic methods practiced in the 
human or animal body; 
• a composition containing the known compound for second medical use provided the 
requirements for novelty and inventive step are met; 
• synergistic composition wherein one or both of the components are known and the 
use of each of them in therapy has been described, provided that the use of both 
compounds, either simultaneously, separat ely or sequentially, gives a new and 
unexpected therapeutical result; 
• the known compound for use in therapy provided the compound was not disclosed as 
having in itself, a therapeutic effect but known as a component in a medicinal composition only in combination with one or  more active compounds to treat another 
disease; 
• use of the known substance as a medicament provided a first medical use is disclosed; 
• use of the known substance for the manufacture of a medicament for curing disease. 
 
31. Please clarify if the patent protection of a pr ocess, as provided for in your legislation, 
covers the product obtained directly by that process.  
 The law provides that, if the subject matter of  a patent is a process for obtaining a product, 
any identical product shall be presumed to have been  obtained through the use of the patented process 
if the product is new or there is substantial lik elihood that the identical product was made by the 
process and the owner of the patent has been unabl e despite reasonable efforts, to determine the 
process actually used.
129 
 
                                                      
128 Rep. Act 8293, Sec. 71.2  
129 Rep. Act 8293, Sec. 78. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 
Page 29 
 
 
32. Please explain the additional conditions, if any, in your legislation other than the 
sufficient disclosure of the invention in Article 29 of the TRIPS Agreement ( e.g. submission of 
justification for access to genetic material or prior inform consent to its use).  If such additional 
conditions exist, please point out the relevant legi slations and describe the additional conditions 
in detail. 
 
 Philippine law provides that "where the appli cation concerns a microbiological process or the 
product thereof and involves the use of a micro-organi sm which cannot be sufficiently disclosed in the 
application in such a way as to enable the invention to be carried out by a person skilled in the art, and 
such material is not available to the public, the a pplication shall be supplemented by a deposit of such 
material with an international depository institution."130 
 
33. Please describe if your legislation provides for limited exceptions to the exclusive rights 
conferred by a patent.  If affirmative, pl ease make a reference to relevant legislation. 
  Our law provides exceptions to the exclusive rights conferred by a patent.  Exceptions to 
these exclusive rights are:  
• where the exploitation of the patent is done privately and on a non-commercial scale 
or for a non-commercial purpose;
131 
 
• where the act of making or using the patent  is for the sole purpose of scientific 
research and experiment;132 
 
• where the patented product was put on the market in the Philippines  by the owner of 
the patent or with his authorization;133 
 
• 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 prescription;134 and 
 
• where the use of the patented product occurs in vehicles in transit in the country.135 
 
34. Please explain whether or not your legislatio n provides for compulsory licensing. If so, 
please explain in detail the conditions under which a compulsory licence may be granted.  In 
particular, please explain how your national le gislation considers individual merits in the 
authorization of such use. 
 
 The Intellectual Property Code provides for a whole chapter enumerating the details and 
conditions under which a compulsory license may be granted.  
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; 
 
                                                     
 
130 Rep. Act 8293, Sec. 35. 
131 Rep. Act 8293, Sec. 72.2. 
132 Rep. Act 8293, Sec. 72.3. 
133 Rep. Act 8293, Sec. 72.1. 
134 Rep. Act 8293, Sec. 72.4. 
135 Rep. Act 8293, Sec. 72.5.  IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 30 
 
 
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, w ithout satisfactory reason: Provided, That 
the importation of the patented article sha ll constitute working or using the patent.
136  
 
2. Petitioner must make efforts to obtain authorization from patent owner: 
 
The licence will only be granted after the petitioner has made efforts to obtain authorization from the patent owner on reasonable commercial terms and conditions but such efforts have 
not been successful within a reasonable period of time.
137 
3. There must be public non-commercial u se in case of semi-conductor technology: 
In the case of compulsory licensing of patents involving semi-conductor technology, the 
license may only be granted in case of public non-commercial use or to remedy a practice 
determined after judicial or administrative process to be anti-competitive.  
4. Petition must be in writing, verified and fee paid: 
The petition for compulsory licensing must be in writing, verified by the petitioner and 
accompanied by payment of the required filing fee. It shall contain the name and address of 
the petitioner as well as those of the respondents, th e number and date of issue of the patent in 
connection with which compulsory license is sought , the name of the patentee, the title of the 
invention, the statutory grounds upon which co mpulsory license is sought, the ultimate facts 
constituting the petitioner's cause of action, and the relief prayed for. 138 
 
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 sha ll be limited to the purpose for which it 
was authorized; 
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 inven tion is being exploited; 
                                                     
 
136 Rep. Act No. 8293 (1998), Sec. 93. 
137 Rep. Act No. 8293 (1998), Sec. 95. 
138 Rep. Act No. 8293 (1998), Sec. 98.  IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 
Page 31 
 
 
d. Use of the subject matter of the license shall be devoted predominantly for the 
supply of the Philippine market: Provided, Th at this limitation shall not apply where 
the grant of the license is based on the ground that the patentee's manner of 
exploiting the patent is dete rmined 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 unl ikely to recur: Provided, That adequate 
protection shall be afforded to the le gitimate interest of the licensee;  and 
 The patentee shall be paid adequate remune ration taking into account the economic value of 
the grant or authorization, except that in cases wh ere the license was granted to remedy a practice, 
which was determined after judicial or administra tive process, to be anti-competitive, the need to 
correct the anti-competitive practice may be taken into account in fixing the amount of remuneration.
139 
 35. Please explain how your legislation explicit ly ensures that a proposed user has made 
efforts to obtain authorization from the ri ght holder on reasonable commercial terms and 
conditions and that such efforts have not been su ccessful within a reasonable period of time. In 
this context, how do you define "reasonable p eriod of time".  Please also explain how your 
legislation ensures that the use of a compulsory licence shall be authorised predominantly for the supply to the domestic market of the Member authorizing such use. 
  The proposed user must include in his petitio n the statutory grounds on which compulsory 
license is sought and the ultimate facts that constitute his causes of action.
140 This requirement 
imposes upon the petitioner to first exhaust efforts to  obtain the authorization of the patent owner 
prior to filing the petition.141  Otherwise, the patentee in his answer may plead as affirmative defences 
the lack of cause of action and/or failure to co mply with a condition precedent as the bases for the 
denial of the petition.142 
  "Reasonable period of time" has been defined in Philippine jurisprudence as "so much time as 
is necessary under the circumstances for a r easonable, prudent and diligent man to do".
143 
 
The determination of what is reasonable depe nds upon the particular conditions of each case, 
and if the question of reasonableness arises, the same  will have to be determined by the Director 
taking into consideration the evidence and arguments of both parties. 
 
 The licensee shall devote the use the subject matter of the license for the supply of the 
Philippine market144 and this limitation is ensured by giving the patentee/licensor the right to request 
for the cancellation of the compulsory license when : (a) the ground for the grant of the compulsory 
license no longer exists and is unlikely to occur;  (b) the licensee has neither begun to supply the 
domestic market nor made serious preparation therefore; and (c) if the licensee has not complied with the prescribed terms of the license
145.  The patentee may also request the Director of Legal Affairs to 
                                                      
139 Rep. Act No. 8293 (1998), Sec. 100. 
140 Rep. Act 8293, Sec. 98. 
141 Rep. Act 8293, Sec. 95.1. 
142 Regulations on Inter-Partes Proceedings, Sec.9; Revised Rules of Civil Procedure, Rule 16, 
Sec. 1(g) & (h). 
143 Philgreen Trading Corporation v. Court of Appeals, 271 SCRA 719 (1997). 
144 Rep. Act 8293, Sec. 100.4. 
145 Rep. Act 8293, Sec. 101.2. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 32 
 
 amend the decision granting the compulsory licence, upon proper showing of facts or circumstances justifying such amendment.
146  
 
36. Please state if your legislation grants additional protection for innovations after the 
20 years of patent protection has lapsed. 
 
 There is no provision for the extension of patent  protection after the 20-year period of patent 
protection has lapsed. 
 
37. Please explain how your legislation provides for the enhanced patent protection of 
patents or patent applications pending on 1st January 1995. 
 
 As long as an application is pending, amendm ents may be made provided no new matter is 
included and all the requirements for patentability are met.  38. Please explain how your legislation provides for the reversal of the burden of proof in 
relation to process patents.  
 The IP Code provides: "If the subject matter of  a patent is a process for obtaining a product, 
any identical product shall be presumed to have been  obtained through the use of the patented process 
if the product is new or there is substantial lik elihood that the identical product was made by the 
process and the owner of the patent has been unabl e despite reasonable efforts, to determine the 
process actually used.  In ordering the defendant to prove that the process to obtain the identical 
product is different from the patented process, the court shall adopt measures to protect, as far as 
practicable, his manufacturing and business secrets."
147 
 
G. L AYOUT -DESIGNS (TOPOGRAPHIES ) OF INTEGRATED CIRCUITS  
Note : The Bill for the Protection of Layout-Designs of  Integrated Circuits has been approved by 
Congress and is expected to be signed into law by the President shortly.  All answers in this Section G 
are based on the approved bill.  39. Please describe how your legislation protects Topographies. 
 
A layout-design of integrated circuits to be re gistrable must be original. A layout-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 in tegrated circuits at th e time of its creation. A 
layout-design consisting of a combination of el ements and interconnections that are commonplace 
shall be protected only if the combina tion, taken as a whole, is original.  
  The said Bill also provides that 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 accorded to the layout-design. The protection of a layout-design 
shall commence: 
 
(a) on the date of the first commercial exploita tion, 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 with the Office within two (2) years from such date of commercial 
exploitation, or 
 
                                                     
 
146 Rep. Act 8293, Sec. 101.1. 
147 Rep. Act 8293 (1998), Sec.78. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 
Page 33 
 
 
 (b) on the filing date accorded to the appli cations for registration of the layout-design if 
the layout-design has not been previously  exploited commercially anywhere in the 
world. 
 
40. Please explain what protection your national legislation grants to right holders against 
the unlawful importation, sale or distribut ion for commercial purposes of topographies 
including integrated circuits or other articles  in which a topography is incorporated in 
accordance with Article 36 of the TRIPS Agreement.  
 The provisions on infringement of patents apply to infringement of layout-designs. 
 
41. Please explain how your legislation provides for the derogation from Article 36 as 
specified in Article 37 of the TRIPS Agreement where a person has no knowledge or reasonable grounds to know when acquiring an integrated circuit or an article incorporating such an 
integrated circuit that it contains an unlawful topography. 
 
 The owner of a layout design has no right to prevent third parties from reproducing, selling or 
otherwise distributing for commercial purposes th e registered layout-design where the person 
performing or ordering such an act did not k now and had no reasonable ground to know when 
acquiring the integrated circuit or the article inco rporating such an integrated circuit, that it 
incorporated an unlawfully reproduced layout design: provided however, that after the time that such 
person has received sufficient notice that the lay out-design was unlawfully reproduced, that person 
may perform any  of the said acts only with respect to the stock on hand or ordered before such time 
and shall be liable to pay to the right holder a sum eq uivalent to at least 5% of net sales or such other 
reasonable royalty as would be payable under a freely negotiated license in respect of such layout-
design. 
 
42. Please state the term of protection granted by your legislation to topographies. 
 
 Registration of layout-design of integrated circ uits 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 accorded to the layout-design.  The protection of a layout-design shall commence: 
  (a) on the date of the first commercial explo itation, 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 with the Office within two (2) years from such date of commercial 
exploitation, or 
 (b) on the filing date accorded to the appli cations for registration of the layout-design if 
the layout-design has not been previously  exploited commercially anywhere in the 
world. 
 IP/Q/PHL/1, IP/Q2/PHL/1 
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 H. P
ROTECTION OF UNDISCLOSED INFORMATION  
43. Please explain whether or not your legislation grants a defined period of time for the 
protection of undisclosed information. If so, please give the time span.  
 The term intellectual property rights, includes the protection of undisclosed information.
148   
The laws of the Philippines protect and secure the ex clusive rights of scientists, inventors, artists, and 
other gifted citizens to their intellectual property a nd creations, particularly when beneficial to the 
people, for such period as may be provided by law.149  
 
 The protection of valid trade secret subsists even after the termination or expiration of a 
technology transfer arrangement is recognized.150 
 Undisclosed information is protected for as long as it remains so.  
 Also, information on fuels and fuel additives re gistered with the Department of Energy, which 
are considered trade secrets shall be covered by a non-disclosure and confidentiality agreement 
between the company and the Department of Energy for a period of fifteen (15) years.
151 
 
44. Please explain how your legislation defines undisclosed information. 
 
 Undisclosed information shall mean information which: 
 
a. 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; and 
 
b. has commercial value because it is secret; and 
 c. has been subject to reasonable steps under th e circumstances to keep it secret, by the 
person lawfully in control of the information.
152 
 
45. Please explain how your legislation defi nes data submitted to governments or 
governmental agencies.  
 Private documents required by law to be entered as public records, kept in the Philippines, are 
considered public documents. The written official acts, or records of the official acts of the sovereign 
authority, official bodies and tribunals, and public offi cers, whether of the Philippines, or of a foreign 
country and documents acknowledged be fore a notary public except last wills and testaments are also 
considered as public documents.
153  However, certain provisions of laws expressly provide for 
confidentiality of documents submitted to government agencies.   In the case of patent,  a patent application wh ich has not yet been published, and all related 
documents, shall not be made available for in spection without the consent of the applicant.
154   
                                                      
148 Rep. Act No. 8293 (1998), Sec. 4.1. 
149 Constitution, Art. XIV, Sec. 13. ; Rep. Act No. 8293 (1998), Sec.2. 
150 Rules and Regulations on Voluntary Licensing, Rule 11. 
151 DENR AO No. 81-00 {Implementing Rules and Regulations of RA No. 8749 (Philippine Clean Air 
Act of 1999)}. 
152 Rules and Regulations on Voluntary Licensing, Rule 1 (o). 
153 Revised Rules of Court, Rule 132, Sec. 19.  
154 Rep. Act 8293, Section 45 IP/Q/PHL/1, IP/Q2/PHL/1 
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 Employees of the Bureau of Internal Revenue are prohibited from revealing trade secrets of 
persons who transact with their office. An employ ee or officer may not divulge to any person the 
secrets, style of work, or apparatus of any manuf acturer, 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.
155  
  The law may exempt certain types of information from public scrutiny.
156  The trade secrets 
and confidential, commercial and fi nancial information of the appli cant and matters affecting national 
security are excluded from the privilege.157 A public officer cannot be examined during his term of 
office or afterwards, as to communications made to him in official confidence, when the court finds 
that the public interest would suffer by the disclosure.158 
 Moreover, the laws of the Philippines have recognized the need to protect confidential 
information and have provided stiff penalties to  anyone who shall unlawfully disclose and misuse 
such confidential information.  
 Under the Code of Conduct and Ethical Standa rds for Public Officials and Employees, public 
officials and employees shall not use or divulge, c onfidential or classified information officially 
known to them by reason of their office  and not made available to the public.159  Public officials and 
employees violating this provision shall be punishab le with (a) fine not exceeding six (6) months 
salary or suspension not exceeding one (1) year or rem oval depending on the gravity of the offence; or 
(b) imprisonment not exceeding five (5) years, or a fine not exceeding five thousand pesos (P5,000.00) or both, and in the discretion of the c ourt of competent jurisdiction, disqualification to 
hold public office.  Any violation hereof prove n in a proper administrative proceeding shall be 
sufficient cause for removal or dismissal of public  official or employee, even if no criminal 
prosecution is instituted against him.
160 
 It shall also be unlawful for a public officer to  divulge valuable information of a confidential 
character, acquired by his office or by him on account  of his official position to unauthorized persons, 
or releasing such information in advance of its  authorized release date.  The person urging the 
divulging or untimely release of the confidential inform ation shall, together wi th the offending public 
officer, be punished and shall be permanently or te mporarily disqualified, in the discretion of the 
court, from transacting business in any form with the government.161  Any public officer or private 
person committing any of these unlawful acts or omi ssion shall be punished with imprisonment for 
not less than six (6) years and one (1) month nor  more than fifteen (15) years, perpetual 
disqualification from public office.162 
Any public officer who shall reveal any secret known to him by reason of his official 
capacity, or shall wrongfully deliver papers or copi es of papers of which he may charge and which 
should not be published, shall be liable for imprisonme nt or ordered to pay a fine between 500 to 2000 
pesos.163  Any public officer to whom the secrets of any private individual shall become known by 
                                                      
155 Rep. Act No. 8424, Sec. 270 
156 Legaspi v. CSC, 150 S.C.R.A. 530 (1987). 
157 Garcia v. Board of Investments, 177 S.C.R.A. 374 (1989). 
158 Revised Rules of Court, Rule 130, Sec. 24 (e). 
159 Rep. Act No. 6713 (1989), Sec. 7 ( c ). 
160 Rep. Act No. 6713 (1989), Section 11. 
161 Rep. Act No. 3019 (1960) Anti-Graft and Corrupt Practices Act, Sec. 3(k). 
162 Rep. Act No. 3019 (1960) Anti-Graft and Corrupt Practices Act, Sec. 9. 
163 Revised Penal Code {Act No. 3815 (1930)}, Art. 229. IP/Q/PHL/1, IP/Q2/PHL/1 
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 reason of his office who shall reveal such secrets, sh all also be liable for imprisonment and a fine not 
exceeding 1,000 pesos.
164 
I. E NFORCEMENT  
46. Please describe how your legislation provides fo r effective action against infringement of 
intellectual property rights. 
 
Philippine legislation provides civil, criminal and administrative remedies for effective action 
against infringement of intellectual property rights. 
 
(a) 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 act ion before a court of competent jurisdiction, to 
recover from the infringer such damages sustained ther eby, 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.165  
 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 comp lainant is shown. Upon proper showing, the court 
may also grant injunction to the trademark owner and  may order that infringing material be disposed 
of outside the channels of commerce or destroye d without compensation.  On application of the 
complainant, the court may impound during the pendency of the action sales invoices and other documents evidencing sales.
166  
 In copyright infringement cases, the copyright ow ner 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 a nd other documents evidencing sales, all articles 
and their packaging alleged to infringe a copyrigh t 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.  In a copyright 
infringement action, the court also has the power to order the seizure and impounding of any article that may serve as evidence in the court proceedings.
167  
 Decisions of the Regional Trial Court in civil cases for infringement are appealable to the 
Court of Appeals and the Supreme Court.168  
(b) 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 
                                                      
164 Revised Penal Code {Act No. 3815 (1930)}, Art. 230. 
165 Rep. Act No.  8293 (1997), Secs. 76.2 and 76.5. 
166 Rep. Act No.8293 (1997), Secs. 156.1, 156.2, 156.3 and 156.4. 
167 Rep. Act No. 8293 (1997), Secs. 216.1 and 216.2. 
168 Revised Rules of Court, Rules 41 and 56. IP/Q/PHL/1, IP/Q2/PHL/1 
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offenders shall, without prejudice to the institution of  a civil action for damages, be criminally liable 
therefor and upon conviction shall suffer imprisonment  for the period of not less than six (6) months 
but not more than three (3) years and/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 prescribes in thr ee (3) years from the commission of the crime.
169  
 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 (P50,000.00) to two hundred thousand pesos (P200,000.00) shall be imposed on any person who is found guilty of trademark infringement, unfair competition and false designation of origin.
170   
 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 (P50,000.00) to one hundred fifty thousand pesos (P50,000.00) for the first offence; (b) Imprisonment of three (3) years and one (1) day to six (6) years 
plus a fine ranging from one hundred fifty thou sand pesos (P150,000.00) to five hundred thousand 
pesos (P500,000.00) for the second offence; (c) Impris onment of six (6) years and one (1) day to nine 
(9) years plus a fine ranging from five hundred thousand (P500,000.00) to one million five hundred 
thousand pesos (P1,500,000.00) for the third and sub sequent offences; and (d) In all cases, subsidiary 
imprisonment in case of insolvency.
171  
 Decisions of the Regional Trial Court in crimin al cases for infringement are appealable to the 
Court of Appeals and the Supreme Court.172  
(c) Administrative action  
 Administrative cases involving intellectual prope rty rights violation may be filed with the 
following administrative agencies: 
A. The Intellectual Property Office (IPO), through the Bureau of Legal A ffairs (BLA), exercises 
original jurisdiction in administrative complaints for intellectual property violation where the total 
damages claimed are not less than two hundred thousand pesos (P200.000. 00). Attachment and 
preliminary injunction and/or temporary restrainin g order may be granted during the proceedings.  
The Director of Legal Affairs shall have the power  to punish for contempt all those who disregard 
orders or writs issued in the course of the proceedings.173  
 After formal investigation, the Director of  Legal Affairs may impose one 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) th e acceptance of a voluntary assurance of compliance 
or discontinuance as may be imposed; (iii) the conde mnation or seizure of products which are subject 
of the offence; (iv) the forfeiture of parapherna lia and all real and pers onal properties which have 
been used in the commi ssion of the offence; (v) the imposition of  administrative fines in such amount 
deemed reasonable by the Director of Legal Affair s, which shall in no case be less than five thousand 
pesos (P5,000.00) nor more than one hundred fi fty thousand pesos (P150,000.00) plus an additional 
fine of one thousand pesos (P1,000.00) 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, author ity, or registration which is being secured by the 
                                                     
 
169 Rep. Act No. 8293 (1997), Sec. 84. 
170 Rep. Act No. 8293 (1997), Sec. 170. 
171 Rep. Act No. 8293 (1997), Sec. 217.1. 
172 Revised Rules of Court, Rules 124 and 125. 
173 Rep. Act No. 8293 (1997) , Sec. 10.2[a]. IP/Q/PHL/1, IP/Q2/PHL/1 
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 respondent from the office; (viii) the assessment of  damages; (ix) censure; and (x) other analogous 
penalties or sanctions.
174   
 Decisions of the Director of the BLA in administrative cases involving intellectual property 
violation are appealable to the IPO Director General.175  Decisions of the IPO Director General are 
appealable to the Court of Appeals and finally to the Supreme Court.176  
B. The Department of Trade and Industry (DTI) which has original jurisdiction over complaints 
involving violations of intellectual property right s, irrespective of the total amount of damages 
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.177  
 After formal investigation, the DTI Secretary may impose one (1) or more of the following 
administrative penalties: (i) the issuance of a ceas e 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 condemna tion or seizure of products which are subject of 
the offence; (iv) the forfeiture of paraphernalia a nd all real and personal properties which have been 
used in the commission of the offence; (v) the im position of administrative fines in such amount 
deemed reasonable by the Director of Legal Affair s, which shall in no case be less than five thousand 
pesos (P5,000.00) nor more than one hundred fi fty thousand pesos (P150,000.00) plus an additional 
fine of one thousand pesos (P1,000.00) 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, author ity, 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.
178   
 Decisions of the Secretary of the DTI are appealable to the Office of the President.179  
C. The Videogram Regulatory Board VRB) whic h has jurisdiction over violations of laws 
involving videograms, including those involving copyright violation.180  
Any person found guilty of copyright violation shall be imposed the following administrative 
penalties:  (i) closure, revocation of commercial license and/or commercial permit and confiscation of 
videograms involved in the violations; and (ii) a fine  of not less than six thousand pesos (P6,000.00) 
but not more than one hundred thousand pesos (P100,000.00).181 
 
 Decisions of the VRB are appealable to the Office of the President.182 
 
47. Please explain whether or not your legislat ion provides for a mechanism to appeal to 
judicial bodies of final administrative decisions.  
Philippine laws provide for appeals to judici al bodies of final administrative decisions. 
Decisions of the Director of Legal Affairs of the IP Office for intellectual property violations where 
the total damages claimed are not less than tw o hundred thousand pesos and for Petitions for 
                                                     
 
174 Rep. Act No.  8293 (1997), Sec. 10.2[b]. 
175 Rep. Act No. 8293 (1997), Sec. 7[b]. 
176 Rules of Court, Rules 42 and 45. 
177 Executive Order 913 [1983] Article III, Secs. 4 & 5; Department Administrative Order 01 [2000]. 
178 Executive Order 913, Sec. 6. 
179 Executive Order 913, Sec. 13. 
180 Pres. Decree 1987, Ch apter IX, Sec. 21A[2]. 
181 Pres. Decree 1987, Secs. 21A[1] and 21B[1]. 
182 Memorandum Circular No. 98-00, Rule IX, Sec. 1. IP/Q/PHL/1, IP/Q2/PHL/1 
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Cancellation of a Mark, Patent, Utility Model, I ndustrial Design, Opposition to Registration of a 
Mark, and Compulsory Licensing are appeal able to the IPO Director General. 183 Decisions of the IPO 
Director General are appealable to the Court of Appeals and finally to the Supreme Court. 184 
 
48. Please describe how your legislation authorizes judges to order production of evidence 
by the opposing party.  Please give precise info rmation on what measures are taken to ensure 
the protection of confidential information.  
 Judicial authorities may order the issuance of subpoena ad testificandum requiring the other 
party to appear and testif y in court, and/or of subpoena duces tecum  requiring the other party to 
produce and submit documentary evidence which lies w ithin his control. The court, however, may not 
so order where the evidence is incriminatory, conf idential, privileged, immaterial or irrelevant.
185 
  
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 oral examina tion or written interrogatories.186 The 
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 knowle dge of relevant facts.187 
  
The court may also issue an order for the pr oduction or inspection of documents or things 
upon motion of any party. The order may require th e other party to produce and permit the inspection 
and copying of any designated doc uments or papers in his possession that are not privileged and 
which are material to the action.188 
  
Confidential information introduced as evidence in the proceedings become part of the 
records of the case and may be accessed by the pu blic. Judicial authorities, however, may prevent 
disinterested parties from prying into court record s if the purpose is merely to satisfy curiosity.189 
 
49. Please quote provisions of your legislation that  authorize judges to order a defendant to 
desist from an infringement.  
(a) Preliminary attachment
 
 At the commencement of the action or at any tim e before the entry of judgment, a plaintiff or 
any proper party may have the propert y of the adverse party attached as security for the satisfaction of 
any judgment that may be recovered.190 
  
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 part y or hearing of the application is required as the 
time 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 is issued.191 
 
                                                      
183 Rep. Act No. 8293 (1997), Sec. 7 [b]. 
184 Rules of Court, Rules 42 and 45. 
185 Revised Rules of Civil Procedure (1997), Rule 21, Sec. 1; Rule 23, Sec. 2. 
186 Revised Rules of Civil Procedure (1997), Rule 23, Sec. 1. 
187 Revised Rules of Civil Procedure (1997), Rule 23, Sec. 2. 
188 Revised Rules of Civil Procedure (1997), Rule 27, Sec. 1. 
189 Rules of Court, Rule 132, Sec. 19, 20 (a); Rule 135 (2). 
190 Revised Rules of Civil Procedure (1997), Rule 57, Sec. 1. 
191 Revised Rules of Civil Procedure (1997), Rule 57, Sec. 3. IP/Q/PHL/1, IP/Q2/PHL/1 
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 (b) Preliminary injunction/Temporary restraining order
 
 
 This is an order granted at any stage of the 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 may also 
require the performance of a particular act or acts, in which case, it is called a preliminary mandatory 
injunction.192  
  Any aggrieved party may apply for preliminary injunction by filing a verified complaint with the proper court showing the grounds relie d upon and the filing of the required bond.
193 
  
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 i rreparable damage to the applicant. Within that 
period, the court must conduct a hearing to determin e the propriety of the injunction. Ordinarily, a 
preliminary injunction has a lifetime of twenty (20) days and 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 
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.194 
 
(c) Impounding and destruction  
 On the application of the complainant th e court may impound during the pendency of the 
action, sales invoices and other documents evidencing sales.
195 
  
Infringing goods are likewise subject to destru ction without any compensation while the case 
is pending.196 
 (d) Seizure and impounding
 
  To ensure the preservation of evidence n ecessary for the prosecution of cases involving 
intellectual property violation, the Supreme Court 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. 
 
                                                     
 
192 Revised Rules of Civil Procedure (1997),Rule 58, Sec. 1. 
193 Revised Rules of Civil Procedure (1997), Rule 58, Sec. 3. 
194 Revised Rules of Civil Procedure (1997), Rule 58, Sec. 5. 
195 Rep. Act No. 8293 (1997), Secs. 156.2. 
196 Rep. Act No. 8293 (1997), Sec. 216.1 (d). IP/Q/PHL/1, IP/Q2/PHL/1 
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The order granting provisional and preventive m easures 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 
parte where appropriate, in particular, where any dela y is likely to cause irreparable damage to the 
right holder or where there is demonstrab le risk of evidence being destroyed.  
 
SECTION 3.  Affidavit and Bond Required .- The applicant and/or his witness or witnesses 
must show and provide in  his affidavit any r easonably available evidence in order to satisfy a 
sufficient degree of certainty that the applicant is th e right holder and that the applicant's right is being 
infringed or that such infringement is imminent.  The applicant shall be required to supply the court 
with other information necessary for the identificati on 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 whic h shall be determined by the cour t, conditioned that the latter will 
pay all the costs which may be adjudged to the a dverse party and all damages which he may sustain 
by reason of the order, if the court shall finally adju dge 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 th e order was issued, and in cases where articles are 
confiscated and impounded, to make a full statement of the 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 omis sion 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 h earing, shall have the authority to order the 
applicant to compensate the defendant, upon the bond f iled by the applicant, for any injury or damage 
caused by the issuance and execution of the order."  
 IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 42 
 
 
50. Please quote what provisions of your legisl ation authorize judges to order the payment 
to the right holder of adequate damages to compensate the injury he suffered. 
 
 In patent infringement, the court may aw ard damages not exceeding three (3) times the 
amount of actual damages sustained.
197 If damages cannot be readily ascertained, the court may award 
damages equivalent to reasonable royalty.198 
  
In trademark infringement, the court may award damages equivalent to reasonable profit, or 
the profit which defendant actually made out of  the infringement. If damages cannot be readily 
ascertained, the court may award damages equivalent to a percentage of the gross sales of the 
defendant. Damages may be doubled if there is actual intent to mislead the public or defraud 
complainant.199 
  
In copyright infringement, the court may award actual damages sustained including profits 
which the infringer may have made due to such in fringement, or such damages as may be just under 
the circumstances.200 
   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.
201 
 
51. Please quote what provisions of your legisl ation authorize judges to order the payment 
of the right holder's expenses by the infringer.  
In cases involving infringement of copyright, the court may order the copyright infringer or 
the defendant to pay to the copyright proprietor or his assigns or heirs such actual damages, including 
legal costs and other expenses, as he may have incu rred due to the infringement as well as the profits 
the infringer may have made due to such infringeme nt, and in proving profits the plaintiff shall be 
required to prove sales only and the defendant shall be  required to prove every element of cost which 
he claims, or, in lieu of actual damages and profits, such damages which to the court shall appear to 
be just and shall be regarded as penalty.
202  
 
In cases involving patent, the patentee may brin g a civil action to recover from the infringer 
such damages sustained thereby, plus attorney's fees, other expenses of litigation and to secure an 
injunction.203 
  In other cases, attorney's fees and expenses of litigation other than judicial costs can be 
recovered, inter alia : 
 
a. When exemplary damages are awarded 
 b. Where the defendant acted in gross a nd evident bad faith in refusing to 
satisfy the plaintiff's valid, just and demandable claim 
 
c. In a separate civil action to recover civil liability arising from a crime 
 
                                                     
 
197Rep. Act No. 8293 (1997), Sec. 76.4. 
198 Rep. Act No. 8293 (1997), Sec. 76.3. 
199 Rep. Act No. 8293 (1997), Secs. 156.1& 156.3. 
200 Rep. Act No. 8293 (1997), Sec. 216 (b). 
201 Rep. Act No. 8293 (1997), Secs. 216 (e) & 76.2; Rep. Act No. 386 (1949), Arts. 2216-2235. 
202 Rep. Act No. 8293 (1997), Sec. 216.1[b]. 
203 Rep. Act No. 8293 (1997), Sec. 76.2. IP/Q/PHL/1, IP/Q2/PHL/1 
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d. In any other case when the court deems it just and equitable that attorney's 
fees and expenses of litiga tion shall be recovered 
 
 In all cases, the attorney's fees and expenses of litigation must be reasonable. 204 
 52. Please explain if and how judges have the authority to order that infringing goods are 
placed outside channels of commerce or destroyed.  
 In patent infringement, the court may, in its discretion, order that the infringing goods, 
materials and implements predominantly used in the infringement be disposed of outside the channels 
of commerce or destroyed, without compensation.
205  
  In trademark infringement, the court may order that goods found to be infringing be, without 
compensation of any sort, disposed of outside the ch annels of commerce in such a manner as to avoid 
any harm caused to the right holder, or destroyed;  and all labels, signs, pr ints, packages, wrappers, 
receptacles and advertisements in the possession of the defendant, bearing the registered mark or trade 
name or any reproduction, counterfe it, copy or colourable imitation thereof, all plates, moulds, 
matrices and other means of making the same, shall be delivered and destroyed.
206  
   In copyright infringement, the court may order the delivery under oath for destruction without 
any compensation all infringing copies or devices, as well as all plates, moulds or other means for 
making such infringing copies.
207 
 
53. Please quote what provisions of your legislation authorize judges to indemnify a 
defendant in the event of abuse by the plaintiff. 
 
In any civil action where the plaintiff has included a prayer for issuance of Temporary 
Restraining Order and/or Writ of Preliminary In junction, a defendant wrongfully enjoined or 
restrained may recover damages from the applicant a nd/or the plaintiff  who will execute a bond to the 
effect that he will pay defendant all damages the latter may sustain by reason of the injunction or 
temporary restraining order if the court should finally decide that the applicant is not entitled 
thereto.208 
 
54. Please explain how your legislation implemen ts Article 50 of the TRIPS Agreement. 
 
 Provisional measures under Article 50 of the TRIPS Agreement are implemented in 
accordance with the following rules: 
 (a) Preliminary attachment
 
 At the commencement of the action or at any tim e before the entry of judgment, a plaintiff or 
any proper party may have the propert y of the adverse party attached as security for the satisfaction of 
any judgment that may be recovered.209 
  
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 part y or hearing of the application is required as the 
                                                      
204 New Civil Code (1949),  Art. 2208. 
205 Rep. Act No. 8293 (1997), Sec. 76.5. 
206 Rep. Act No. 8293 (1997), Sec. 157.1. 
207 Rep. Act No. 8293 (1997), Sec. 216.1 (d). 
208 Revised Rules of Civil Procedure (1997), Rule 58, Sec. 4(b). 
209 Revised Rules of Civil Procedure (1997), Rule 57, Sec. 1. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 44 
 
 time 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 is issued.
210 
 (b) Preliminary injunction / temporary restraining order
 
 
 This is an order granted at any stage of the 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 may also 
require the performance of a particular act or acts, in which case, it is called a preliminary mandatory 
injunction.211 
 
 Any aggrieved party may apply for preliminary injunction by filing a verified complaint with the proper court showing the grounds relie d upon and the filing of the required bond.
212 
  
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 i rreparable damage to the applicant. Within that 
period, the court must conduct a hearing to determin e the propriety of the injunction. Ordinarily, a 
preliminary injunction has a lifetime of twenty (20) days and 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 
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.
213 
 
Procedures common to the above remedies  
Both preliminary attachment and preliminar y injunction/temporary restraining order are 
initiated by filing a verified petition wi th the proper court and posting of bond.214 The petitioner must 
show facts entitling him to the relief demanded.   In both cases, the bond posted by the applican t serves as security for the adverse party and 
answers for damages and costs, which may be ad judged to the adverse party arising from and by 
reason of the provisional remedy. 
 
(c) Impounding and destruction
 
 On the application of the complainant th e court may impound during the pendency of the 
action, sales invoices and other documents evidencing sales.
215 
  
Infringing goods are likewise subject to destru ction without any compensation while the case 
is pending.216 
 
                                                      
210 Revised Rules of Civil Procedure (1997), Rule 57, Sec. 3. 
211 Revised Rules of Civil Procedure (1997),Rule 58, Sec. 1. 
212 Revised Rules of Civil Procedure (1997), Rule 58, Sec. 3. 
213 Revised Rules of Civil Procedure (1997), Rule 58, Sec. 5. 
214 Revised Rules of Civil Procedure (1997), Rule 57, Sec. 1 & 3; Rule 58, Sec. 4. 
215 Rep. Act No. 8293 (1997), Sec. 156.2. 
216 Rep. Act No. 8293 (1997), Sec. 216.1 (d). IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 
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(d) Seizure and impounding  
  
To ensure the preservation of evidence n ecessary for the prosecution of cases involving 
intellectual property violation, the Supreme Court 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 m easures 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 
parte where appropriate, in particular, where any dela y is likely to cause irreparable damage to the 
right holder or where there is demonstrab le risk of evidence being destroyed.  
 
SECTION 3.  Affidavit and Bond Required .- The applicant and/or his witness or witnesses 
must show and provide in  his affidavit any r easonably available evidence in order to satisfy a 
sufficient degree of certainty that the applicant is th e right holder and that the applicant's right is being 
infringed or that such infringement is imminent.  Th e applicant shall  be required to supply the court 
with other information necessary for the identificati on 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 whic h shall be determined by the cour t, conditioned that the latter will 
pay all the costs which may be adjudged to the a dverse party and all damages which he may sustain 
by reason of the order, if the court shall finally adju dge 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 th e order was issued, and in cases where articles are 
confiscated and impounded, to make a full statement of the 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 IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 46 
 
 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 omis sion 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 h earing, shall have the authority to order the 
applicant to compensate the defendant, upon the bond f iled by the applicant, for any injury or damage 
caused by the issuance and execution of the order." 
 
55. Please identify the competent authorities in your jurisdiction who receive requests from 
right holders for an application to suspend the release of counterfeit goods by the customs 
authorities. 
  The Bureau of Customs is the competent authorit y 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. 
 
56. Please indicate whether or not procedures are available to suspend the exporting of 
counterfeit goods. 
 
There is possibility to avail of injunction (Q uestion No. 49) and the general powers of the 
Bureau of Customs to issue alert orders for wrongful exportation. 
 
57. Please quote what provisions of your legislation authorize the competent authorities to 
order the destruction or disposal of infringing goods.  
The provisions of Philippine legislation author izing the competent authorities to order the 
destruction or disposal of in fringing goods, are as follows:  
In a civil action for infringement, the court may,  in its discretion, order that the infringing 
goods, materials and implements pre dominantly used in the infringement be disposed of outside the 
channels of commerce or destroyed, without compensation.
217 
  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 or der that goods found to be infringing be, without 
compensation of any sort, disposed of outside the ch annels of commerce in such a manner as to avoid 
any harm caused to the right holder, or destroyed;  and all labels, signs, pr ints, packages, wrappers, 
receptacles and advertisements in the possession of the defendant, bearing the registered mark or trade 
name or any reproduction, counterfe it, copy or colourable imitation thereof, all plates, moulds, 
matrices and other means of making the sa me, shall be delivered up and destroyed.
218 
 
 Any person infringing a right protected under this  law shall be liable to deliver under oath for 
destruction without any compensation all infringing c opies or devices, as well as all plates, moulds, or 
other means for making such infringing copies as the c ourt may order.  In an infringement action, the 
court shall also have the power to order the sei zure and impounding of any article which may serve as 
evidence in the court proceedings.219 
 
                                                      
217 Rep. Act No. 8293 (1997), Sec. 76.5. 
218 Rep. Act No. 8293 (1997),  Sec. 157. 
219 Rep. Act No. 8293 (1997),  Sec. 216.2. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 
Page 47 
 
 
58. Please indicate whether or not your legislation provides for a de minimis  imports 
exception.  
 The importation of a copy of a work by an  individual for his pe rsonal purposes shall be 
permitted without the authorization of the aut hor, or copyright owner, under the following 
circumstances:   (a) When copies of the work are not available in the Philippines, and   
  (i) not more than one (1) copy is imported for strictly individual use only; 
   (ii) importation is by authority of and for the use of the Philippine government; 
or 
 
  (iii) the importation, consisting of not more than three (3) such copies or 
likenesses in any one invoice, is not for sale but for the use only of any 
religious, charitable, or educations society or institution duly incorporated or registered, or is for the encouragement of  the fine arts or for any state school, 
college, university, or free public library in the Philippines. 
  
 (b)  When such copies form parts of libra ries and personal baggage belonging to persons 
or families arriving from foreign countries and are not intended for sale; provided that such copies do not exceed three (3).
220 
 
59. Please explain how your legislation implemen ts Article 61 of the TRIPS Agreement. 
 
 The following provisions of Philippine law and regulation  were enacted to implement 
Article 61 of the TRIPS Agreement:  I.   On the requirement that Members shall provide  for criminal procedures to be applied at least 
in cases of wilful trademark counterfeiting or copyri ght piracy on a commercial scale, the following 
are the relevant provisions: 
(a) Criminal Actions and Penalties are availabl e in the following violation of Intellectual 
Property rights: 
 
• Infringement of Patent, Utilit y Model and Industrial Design
221 
• Infringement of Copyright and Related Rights222 
• Infringement of Trademarks, Service Marks and Geographical 
Indications223 
• Unfair Competition 224 
• False Designation of Origin/False Description or Representation225 
• Reproduction of cinematographic art 226 
• Piracy 227 
                                                      
220 Rep. Act No. 8293 (1997),  Sec. 190.1. 
221 Rep. Act No. 8293 (1997), Sec. 84, Sec. 108, Sec. 119. 
222 Rep. Act No. 8293 (1997), Sec. 217. 
223 Rep. Act No. 8293 (1997), Sec. 170. 
224 Rep. Act No. 8293 (1997), Sec. 170. 
225 Rep. Act No. 8293 (1997), Sec. 170. 
226 Pres. Decree No. 1987, Secs. 7, 9. 
227 Rep. Act  No. 8792 (2000), Sec. 33(b). IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 48 
 
  (b) Criminal provisions of Republic Act 8293 (In tellectual Property Code of the Philippines) 
relative to the prosecution of Intellectual propert y violations and the corresponding penalties are as 
follows: 
 
 (i)  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 crim inally liable therefore and, upon conviction, 
shall suffer imprisonment for the period of not less than six (6) months but not more than 
three (3) years and/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. 
228 
  (ii) Under the Law on Trademarks, Service Marks and Trade names   Independent of the civil and administrative sanc tions 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 an y of the acts mentioned in Section 155 
(Infringement), Section 168 (Unfair Competiti on) and Subsection 169.1 (False Designation of 
Origin, False Description or Representation)  
229 
 
 (iii) Under the Law on Copyright 
 Any person infringing any right secured by provis ions of Part IV of this Act (The Law on 
Copyright) or aiding or abetting such infringement shall be guilty of a crime punishable by:  
• 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 (P150,000.00) to Five Hundred Thousand Pesos (P500,000.00) for the second offence. 
 
• Imprisonment of six (6) years and one (1) da y 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 th e third and subsequent offences. 
 
In all cases, subsidiary impris onment in cases of insolvency. 
230 
 
In determining the number of years of imprison ment and the amount of fine, the court shall 
consider the value of the infringing materials that the defendant has produced or manufactured 
and the damage that the copyright owner has suffered by reason of the infringement. 231 
 
                                                      
228 Rep. Act No. 8293 (1997), Sec. 84. 
229 Rep. Act No. 8293 (1997), Sec. 170. 
230 Rep. Act No. 8293 (1997), Sec. 217.1. 
231 Rep. Act No. 8293 (1997), Sec. 217.2. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 
Page 49 
 
 
Any person who at the time when copyright subsis ts in a work has in his possession an article 
which he knows, or ought to know, to be an infringing 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, sha ll be guilty of an offence and shall be 
liable on conviction to imprisonment and fine as above mentioned. 232 
 
 (iv) Under the Electronic Commerce Act (Rep. Act 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, w ithout 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 a maximum fine of One Hundred Thousand Pesos (P100,000.00) and a maximum commensurate to the damage in curred 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, subs titution, modification, storage, uploading, 
downloading, communication, making availa ble 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 telecommunicati on networks, such as, but not limited to, 
the 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 in curred and a mandatory of six (6) months to three (3) 
years; 
 
c) Violation of  Consumer Act or Re public Act No. 7394 and other relevant or 
pertinent laws through transactions covere d by or using electronic data messages or 
electronic documents, shall be penalized w ith the same penalties as provided in those 
laws; 
 
II. On the remedies which include the seizure, fo rfeiture and destruction of infringing goods and 
any materials and implements the predominant use of which has been the  comm ission of the offence,  
the following are the relevant provisions: 
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; 
 
                                                     
 
232 Rep. Act No. 8293 (1997), Sec. 217.3. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 50 
 
 
• All labels, signs, prints, packages, wrappe rs, receptacles and advertisements in the 
possession of the infringer bearing the registered mark or trade name or any production, counterfeit, copy or colourable  imitation thereof, all plates, moulds, 
matrices and other means of making the sa me, shall be delivered up and destroyed.
233 
 
 In regard to counterfeit goods, the simple re moval 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.234 
  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.
235 
 
 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.  The 
IP 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.
236 
 III. On the criminal procedures and penalties to  be applied in other cases of infringement of 
intellectual property rights, in particular where they are committed wilfully and on a commercial 
scale, the following are the relevant provisions: 
 The Revised Rules on Criminal Procedure (Rules 110 to 127, Revised Rules of  Court), is the 
law being followed in cases of violat ions of  penal provisions of law. 
  
IV. RESPONSES TO QUESTIONS POSED BY JAPAN 
A. 
COPYRIGHT AND RELATED RIGHTS  
1. Please explain exceptions or exemptions of the National Treatment and Most-Favoured-
Nation Treatment under the Copyright and Neighbouring Rights Law, if any, as permitted in Articles 3 and 4 of the TRIPS Agreement. 
 
 The Philippines observes the principle of reciproc ity in adhering to international conventions 
such that any person who is a national or who is domiciled or has a real and effective industrial 
establishment in a country which is a party to any convention, treaty, or agreement relating to 
intellectual property rights or the repression of unfair competition, to which the Philippines is also a party, or extends reciprocal rights to nationals of th e 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 
                                                     
 
233 Rep. Act No.  8293 (1997),  Sec. 157. 
234 Rep. Act No. 8293 (1997), Sec. 157.2. 
235 Revised Rules on Criminal Procedure, Rule 126, Sec. 3. 
236 Revised Rules on Criminal Procedure, Rule 127, Sec.2. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 
Page 51 
 
 
addition to the rights to which any owner of an in tellectual property right is otherwise entitled by the 
Intellectual Property Code.237 
Accordingly, any condition, restriction, limita tion, diminution, requirement, penalty or any 
similar burden imposed by the law of a foreign count ry on a Philippine national seeking protection of 
intellectual property rights in that country, shall r eciprocally be enforceable upon nationals of that 
country, within Philippine jurisdiction.238 
 A non-resident applicant shall appoint a resident  agent, by special power of attorney, who 
shall be authorized to pursue the application fo r copyright registration and deposit for his/her/its 
behalf with the National Library and/or the Suprem e Court Library and to receive service of notice or 
other legal processes relating to the application and the copyright.  In the event of death, absence or 
incapacity of the resident agent, the applicant shall appoint a new resident agent, by special power of 
attorney with revocation of the prior special power of  attorney, and file notice and a copy thereof with 
the National Library and/or the Supreme Court Library.239 
The foregoing regulation was promulgated to fac ilitate and help ensure service of notices and 
legal processes to non-residents. 
 
B. ENFORCEMENT  
2. Please indicate the remedies which the judi cial authorities order regarding copyright 
and neighbouring rights, including injunctions, da mages, destruction or disposal of infringing 
goods, materials or implements for their produc tion.  Please also explain the criteria and the 
methods of calculating the amount of such damages. 
 
Any person infringing copyright and neighbouring rights shall be liable:   
(a) To an injunction restraining such infringement.  The court may also order the 
defendant to desist from an infringement, among others, to prevent the entry 
into the channels of commerce of  imported goods that involve an 
infringement, immediately after customs clearance of such goods.   
(b)  Pay to the copyright proprietor or his assigns or heirs such actual damages, 
including legal costs and other expenses, as he may have incurred due to the 
infringement as well as the profits the infringer may have made due to such 
infringement, and in proving profits the plaintiff shall be required to prove 
sales only and the defendant shall be requi red to prove every element of cost 
which he claims, or, in lieu of actua l damages and profits, such damages 
which to the court shall appear to be ju st and shall not be regarded as penalty. 
(c) Deliver under oath, for impounding dur ing the pendency of the action, upon 
such terms and conditions as the co urt may prescribe, sales invoices and 
other documents evidencing sales, all articles and their packaging alleged to 
infringe a copyright and implements for making them.  
(d) Deliver under oath for destruction without any compensation all infringing 
copies or devices, as well as all plates, molds, or other means for making such 
infringing copies as the court may order. 
                                                      
237 Rep. Act No. 8293, Sec. 3 
238 Rep. Act No. 8293, Sec. 231; Copyright Safeguards and Regulations, Rule 18 
239 Copyright Safeguards and Regulations, Rule 5, Sec.3 IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 52 
 
 
(e) Such other terms a nd conditions, including the payment of moral and 
exemplary damages, which the court may deem proper, wise and equitable 
and the destruction of infringing copies of the work even in the event of 
acquittal in a criminal case.  
In an infringement action, the court shall al so have the power to order the seizure and 
impounding of any article which may serve as evidence in the court proceedings.
240 
Any person infringing copyright or neighbouring rights or aiding or abetting such 
infringement shall be guilty of a crime punishable by:   
(a) Imprisonment of one (1) year to three (3) years plus a fine ranging from Fifty 
thousand pesos (P50,000) to One hundred fifty thousand pesos (P150,000) 
for the first offence.   
(b) Imprisonment of three (3) years and one (1) day to six (6) years plus a fine 
ranging from One hundred fifty thousand pesos (P150,000) to Five hundred thousand pesos (P500,000) for the second offence.   
(c) Imprisonment of six (6) years and one (1) day to nine (9) years plus a fine 
ranging from Five hundred thousand p esos (P500,000) to One million five 
hundred thousand pesos (P1,500,000) for th e third and subsequent offences.   
(d) In all cases, subsidiary impris onment in cases of insolvency.  
In determining the number of years of impr isonment and the amount of fine, the court 
shall consider the value of the infringing ma terials that the defendant has produced or 
manufactured and the damage that the copy right owner has suffered by reason of the 
infringement.
241 
 
 
V. RESPONSES TO QUESTIONS POSED BY SWITZERLAND 
A. TRADEMARKS  
1. Please indicate whether your legislation est ablishes specific rules concerning the size of a 
trademark to be used on a pharmaceutical product.   If so, please explain how this is compatible 
with Article 20 of the TRIPS Agreement. 
 
  Philippine legislation does not specify the size of a trademark to be used on a pharmaceutical 
product.  
 B. 
GEOGRAPHICAL INDICATIONS  
2. Please explain in detail how your legi slation provides protection for geographical 
indications. 
 
A mark cannot be registered if it is likely to mi slead the public, particularly as to its nature, 
quality, characteristics or geographical origin of the goods or services or consists exclusively of signs 
that are generic for the goods or services that it seek to identify.242  
                                                      
240 Rep. Act No. 8293, Sec. 216 
241 ibid, Sec. 217 
242 Rep. Act No. 8293 (1998), Sec. 123, paragraphs (g) and (h).   IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 
Page 53 
 
 
Any person who, on or in connection with any goods or ser vices, or any container for goods, 
uses in commerce any false designation of origin sh all be liable to a civil action for damages and 
injunction243.  
 
He shall likewise suffer criminal penalty of 2 to 5 years and a fine ranging from Fifty 
thousand pesos (P50,000) to Two hundred thousand pesos (P200,000).  When the civil aspect of the 
case is deemed instituted with th e criminal case, the following provisional remedies may be granted 
by the court:  
Preliminary Attachment
 
 
At the commencement of the action or at anytim e before entry of judgment, a plaintiff or any 
proper party may have the property of the adverse party attached as security for the satisfaction of any 
judgment that may be recovered. 244 
 
 Attachment is considered an advance execution of judgment to prevent ineffective victory. 
 Preliminary Injunction
 
  This is an order granted at any stage of an ac tion or proceeding prior to the judgment of final 
order, requiring a party or a court, agency or a person  to refrain from a particul ar act or acts.  It may 
also require the performance of a particular act or  acts, in which case it shall be known as preliminary 
mandatory injunction. 
245 
 Impounding and Destruction 
 
 
 On the application of the complainant th e court may impound during the pendency of the 
action, sales invoices and other document evidencing sales. 246 
  Infringing goods are likewise subject to destru ction without any compensation while the case 
is pending.
247 
 
Seizure and Impounding  
  The court is empowered to order the seizure and impounding of any articles which may serve as evidence in the court proceeding. 
 
 The following Administrative penalties may also be imposed by the Secretary of the Trade 
and Industry and the Director of the Bureau  of Legal Affairs of the IP Office:  
 
• Cease and desist order 
• Acceptance of voluntary compliance or discontinuance 
• Condemnation or seizure of products subject of the offence 
• Forfeiture of paraphernalia, real or personal properties 
                                                     
 
243 Rep. Act No. 8293 (1998), Sec. 169 .1 (b). 
244 Rules of Civil Procedure (1997), Rule 57, Sec. 1. 
245 Rules of Court (1964), Rule 58, Sec. 1. 
246 Rep. Act No. 8293 (1998), Sec. 156.2. 
247 Rep. Act No. 8293 (1998) , Sec. 216.1 (d). IP/Q/PHL/1, IP/Q2/PHL/1 
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• Administrative fines 
• Cancellation of permits licenses or registration granted 
• Withholding of any permit, license or registration being secured 
• Damages 
• Censure 
• Other analogous penalties and sanctions 
248 
In addition, provisional remedies provided in the Rules of Court may be granted by the 
Director of the Bureau of Legal Affairs of the Intellectual Property Office such as preliminary attachment,
249 injunction,250 while the Secretary of Trade and Industry may issue preliminary order251 
and other preliminary measures.252  
 Goods with false designation of origin shall not  be imported into the Philippines or admitted 
entry at any customhouse of the Philippines.
253  
 
 Further, the address of the manufacturer, importer, repacker of the consumer product in the 
Philippines or country of manufacture, if importe d are included in the list of Minimum Labelling 
requirements for consumer products.254   
 C. 
PATENTS  
3. Does your legislation grant patent protection to all categories of products or are there 
any exceptions?  If so, please explain in deta il what kind of exceptions exist and how they 
comply with Article 27 of the TRIPS Agreement.  In the field of pharmaceutical products are 
new applications of known substances patentable in your law?  
 Any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially a pplicable shall be patentable.  It may be, or may relate to, a product, 
or process, or an improvement of any of the foregoing.
255 
The following are excluded from patent protection: 
a. Discoveries, scientific theories and mathematical methods; 
b. Schemes, rules and methods of performing mental acts, playing games or 
doing business, and programs for computers; 
                                                      
248 Executive Order No. 913 (1983), Art. III Sec. 6; Rep. Act No. 8293, Sec. 10.2 (b). 
249 Rep. Act No. 8293 (1998), Sec. 10, IRR on Administrative Complaints, Rule 5, Secs. 1 & 3 
250 Rep. Act No. 8293 (1998), Sec. 10, IRR on Administrative Complaints, Rule 5, Secs. 1 & 6 
251 Trade and Industry Ministry Order No. 69, Rule IX (1983), Sec. 49 (A) 
252 Exec. Order No. 913 (1983), Sec. 11 
253 Rep. Act No. 8293 (1998), Sec. 169.2. 
254 Rep. Act No. 7394, Art. 77. 
255 Rep. Act No. 8293 (1998), Sec. 21. IP/Q/PHL/1, IP/Q2/PHL/1 
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c. Methods for treatment of the human or animal body by surgery or therapy and 
diagnostic methods practiced on the huma n or animal body.  This provision 
shall not apply to products and composition for use in any of these methods; 
d. Plant varieties or animal breeds or essentially biological process for the 
production of plants and animals. This provision shall not apply to micro-
organisms and non-biological a nd microbiological processes. 
e. Aesthetic creations; and 
f. Anything which is contrary to public order or morality.256 
 Article 27.3(b) of the TRIPS Agreement requires member countries to provide for the 
protection of plant varieties either by patents or by an effective sui generis system  or by any 
combination thereof.  The IP Code specifically st ates that Congress may consider the enactment of a 
law providing sui generis  protection of plant varieties and animal breeds and a system of community 
intellectual rights protection.257  At present, the proposed sui generis  system for protecting plant 
varieties is pending with the Ph ilippine legislature, more specifi cally, under House Bill No. 10654 and 
Senate Bill No. 1912. 
 
Pharmaceutical substances are considered as products and are patentable. A pharmaceutical 
substance with an improvement introduced ther eon becomes a new patentable product. A new 
application of a known substance is patentable if it claims any of the following improvements: 
• a first medical use of the known substa nce or composition provided it was not 
previously disclosed for use in surgery, th erapy or diagnostic methods practiced in the 
human or animal body; 
 
• a composition containing the known compound for second medical use provided the 
requirements for novelty and inventive step are met; 
 
• synergistic composition wherein one or both of the components are known and the 
use of each of them in therapy has been described, provided that the use of both 
compounds, either simultaneously, separat ely or sequentially, gives a new and 
unexpected therapeutical result; 
 
• the known compound for use in therapy provided the compound was not disclosed as 
having in itself , a therapeutic effect but known as a component in a medicinal 
composition only in combination with one or more active compounds  to treat another 
disease; 
 
• use of the known substance as a medicament provided a first medical use is disclosed; 
 
• use of the known substance for the manufacture of a medicament for curing disease. 
 
                                                      
256 Rep. Act No. 8293 (1998), Sec. 22. 
257 Rep. Act No. 8293 (1998) , Sec. 22.4. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 56 
 
 
Follow-up question
 
  You mention that "the proposed sui generis system for protecting plant varieties is 
pending with the Philippine legislature".  Please explain what the draft legislation provides in 
this regard and when it will enter into force. 
 The proposed legislation has since become law in the Philippines as Republic Act No. 9168, 
otherwise known as the "Philippine Plant Variety Pr otection Act of 2002", which became effective on 
19 July 2002.  R.A. No. 9168 seeks to secure the excl usive rights of breeders with respect to their new 
plant varieties that have passed conditions for prot ection, i.e., new, distinct, uniform and stable. 
Details of the legislation are available on the website: www.da.gov.ph
. 
 
4. Please indicate whether micro-organisms ar e patentable in your legislation.  Please 
explain in this respect the relevant sections of your legislation. 
 
Micro-organisms are patentable.  Micro-organisms are products  of microbiological processes 
and as such are patentable as long as they satisfy the requirements of patentability. 
 Applications relating to micro-organisms are subject to the special provisions set out in 
Rule 408 and 409.  If an invention concerns a microbiological process or the product thereof and involves or relates to the use of a micro-organism or other biological material which is not available to 
the public and which cannot be described in the pate nt application in such a manner to enable the 
invention to be carried out by a person skilled in the art, then the disclosure is not considered to have 
satisfied the requirements of sufficiency unless the requirements have been met, such as: 
• a culture of the biological material must have been deposited w ith an international 
depository institution recognized by the IPO; 
 
• the depository institution and the file number of the culture deposit are stated in the 
application; 
 
• the deposited culture is made available upon request to any person from the date of 
publication of the application. 
 
 If the biological material is not available to the public and if it could not be described in the 
application in such a manner as to enable the inven tion to be carried out by a person skilled in the art, 
the applicant must give the relevant informa tion concerning the classification of the biological 
material and significant differences from known biological material.  The applicant must indicate every specific morphological and physiological characteristic for recognition and propagation of the micro-organism or other biological material and the proposed taxonomic classification. 
5. Please explain whether or not your legislation provides the possibility of granting of 
compulsory licenses. If so, please explain in  detail the conditions under which a compulsory 
license may be granted. 
 
The Intellectual Property Code provides for a whole chapter enumerating the details and 
conditions under which a compulsory licence may be granted. 
1. Valid grounds must exist- 
 Compulsory licensing may be granted under any of the following circumstances:  
a. National emergency or other circumstances of extreme urgency; IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 
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 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, That the importation of  the patented article shall constitute 
working or using the patent.
258  
 
2. Petitioner must make efforts to obtai n authorization from patent owner- 
 
The licence will only be granted after the petitioner has made efforts to obtain authorization from the patent owner on reasonable commercial terms and conditions but such efforts have 
not been successful within a reasonable period of time.
259 
3. There must be public non-commercial u se in case of semi-conductor technology- 
In the case of compulsory licensing of patents involving semi-conductor technology, the 
license may only be granted in case of public non-commercial use or to remedy a practice 
determined after judicial or administrative process to be anti-competitive.  
4. Petition must be in writing, verified and fee paid- 
The petition for compulsory licensing must be in writing, verified by the petitioner and 
accompanied by payment of the required filing fee.  It shall contain the name and address of the petitioner as well as those of the respondents, th e number and date of issue of the patent in 
connection with which compulsory license is sought , the name of the patentee, the title of the 
invention, the statutory grounds upon which co mpulsory license is sought, the ultimate facts 
constituting the petitioner's cause of action, and the relief prayed for. 
260 
 
5. License must comply further with other statutory conditions- 
 
If the petition is approved by the Director of Legal Affairs, the following conditions 
shall be further imposed: 
 
a. The scope and duration of such license shall be limited to the purpose for 
which it was authorized; 
b. The license shall be non-exclusive; 
c. The license shall be non-assignable, except with that part of the enterprise or 
business with which the inven tion is being exploited; 
                                                      
258  Rep. Act No. 8293 (1998), Sec. 93. 
259 Rep. Act No. 8293 (1998), Sec. 95. 
260 Rep. Act No. 8293 (1998), Sec. 98. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 58 
 
 
d. Use of the subject matter of the licen se shall be devoted predominantly for 
the supply of the Philippine market: Pr ovided, That this limitation shall not 
apply where the grant of the license is based on the ground that the patentee's 
manner of exploiting the patent is dete rmined 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 ex ist and are unlikely to recur: Provided, 
That adequate protection shall be afford ed to the legitimate interest of the 
licensee; and 
f. The patentee shall be paid adequate  remuneration taking into account the 
economic value of the grant or authorization, except that in cases where the license was granted to remedy a practice which was determined after judicial or administrative process, to be anti-co mpetitive, the need to correct the anti-
competitive practice may be taken into account in fixing the amount of 
remuneration. 
261  
6. Please explain how in your legislation th e notion of "anti-competitive practice" is 
defined, as referred to in Article 31 of TRIPS Agreement.  Are there any judicial or administrative decisions referring to the interpreta tion of this expression?  If so, please indicate 
these decisions and comment them briefly. 
 
The Philippines is a market economy. As such , competition, not monopoly, is the norm in 
trade and commerce.  The notion of "anti-comp etitive practices" in Philippine law, though not 
expressly defined, has been made sufficiently clear by the enumeration of certain acts which are restrictive of or undermines competition. 
 
 The spirit of competition has been enshrined in the 1987 Philippine Constitution itself as can 
be gleaned from the following provisions: 
"The State recognizes the indispensable role  of the private sector, encourages private 
enterprise, and provides incentiv es to needed investments."
262 
"The State shall regulate or prohibit monopoli es when the public inte rest so requires.  
No combinations in restraint of trade or unfair competition shall be allowed."263 
 
The Revised Penal Code  (Act No. 3815)   punishes anti-competitive practice as monopolies 
and combinations in restraint of trade, committed as follows: 
 
1.  Any person who shall enter into any contr act or agreement or shall take part in any 
conspiracy of combination in the form of tr ust or otherwise, in restraint of trade or 
commerce to prevent by artificial means free competition in the market. 
2.  Any person who shall monopolize any merchandize or object of trade or commerce, 
or shall combine with any other person or  persons to monopolize said merchandize or 
object in order to alter the price thereof by spreading false rumours or making use of any other article to restrain free competition in the market. 
                                                     
 
261 Rep. Act No. 8293 (1998), Sec. 100. 
262 Constitution (1987), Art. II, Sec. 20. 
263 Constitution (1987) , Art. XII, Sec.19. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 
Page 59 
 
 
3.  Any person who, being a manufacturer, pr oducer or processor of any merchandize or 
object of commerce from any foreign country, either as principal or agent, wholesaler or retailer, shall combine, conspire or ag ree in any manner with any person likewise 
engaged in the manufacture production, processing, assembling or importation of 
such merchandize or object of commerce or with any other person not so similarly 
engaged for the purpose of making transactions  prejudicial to lawful commerce, or of 
increasing the market price in any part of th e Philippines, or any such merchandize or 
object of commerce manufactured, produced, processed, assembled in or imported into the Philippines, or of any article in the manufacture of which such manufactured, 
produced, processed, or imported merchandize or object of commerce is used. " 
264 
 To date, there is no judicial or administrativ e decision involving anti-competitive practices in 
intellectual property rights cases.  7. Please explain whether your legislation provides for judicial review or other independent review of the legal validity of any deci sion by administrative authorities relating to 
the authorisation of use as mentioned in Article 31 of the TRIPS Agreement.  
 The decision of the Director of the Bureau of Legal Affairs (BLA) of the Intellectual Property 
Office (IPO), in cases involving petitions for compulsory  licensing, may be appealed to the Director 
General of the IPO.  The decision of the Director General may  be appealed with the Court of Appeals 
and, finally, to the Supreme Court.
265 
8. Does your legislation, in accordance with Ar ticle 27.1 in combination with Article 31 of 
the TRIPS Agreement, consider importation as "working" a patent (and therefore preclude 
compulsory licensing, if a product is being imported)? 
  Yes, importation of the patented article sh all constitute working or using the patent.
266 
 
9. Does your legislation provide for the principle of the reversal of burden of proof in a 
process patent litigation?  Please cite the relevant provisions of law.  
Yes.  The IP Code provides: 
"If the subject matter of a patent is a pro cess for obtaining a product, any identical product 
shall be presumed to have been obtained through the use of the patented process if the product 
is  new or there is substantial likelihood that  the identical product was made by the process 
and the owner of the patent has been unable despite reasonable efforts, to determine the 
process actually used.  In ordering the defenda nt to prove that the process to obtain the 
identical product is different from the patented  process, the court shall adopt measures to 
protect, as far as practicable, his manufacturing and business secrets."
267 
                                                      
264 Act No. 3815 (1930), as amended,  Art. 186. 
265 Rep. Act No. 8293 (1998), Section 7.1 (b); Rules of Court, Rules, 43, 45 and 65. 
266 Rep. Act No. 8293 (1998) , Sec. 93.5. 
267 Rep. Act No. 8293 (1998), Sec.78. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 60 
 
 D. 
PROTECTION OF UNDISCLOSED INFORMATION  
10. Please explain in detail if your legislation ensures that undisclosed test or other data 
submitted by an applicant to the responsible State agency in the procedure for market authorisation of a pharmaceutical or of an agr icultural chemical product is protected against 
disclosure and against unfair commercial use by a competitor, for example by prohibiting a 
second applicant from relying on, or from referring to the original data of the first applicant, 
when applying subsequently for market au thorisation for his own product.  Does your 
legislation provide for exceptions to this? If yes, under what conditions would such exceptions 
apply?  Does your legislation set a specific term of  protection for undisclosed test or other data 
of the first applicant? 
 
The Food, Drug and Cosmetic Act enumerates sev eral prohibited acts, among which is an act 
violative of the protection of undisclosed information, to wit: 
 
"The using by any person to his own advantage, or revealing, other than to the Secretary of 
Health or officers or employees of the Department  of Health or to the courts when relevant 
in any judicial proceeding under this Act, any  information acquired under authority of Section Nine, or concerning any method or process which as a trade secret is entitled to protection."
268 
 
As an exception, the Secretary of Health  ma y cause to be disseminated information regarding 
food, drugs, devices, or cosmetics in situations in volving the imminent danger to health, or gross 
deception of the consumer. The Secretary of Health shall not be prohibited from collecting, reporting 
and illustrating the results of the investig ations of the Department of Health.269 
Recently, the Bureau of Food and Drugs (BFAD) ordered all its employees to observe strict 
confidentiality in the handling of documents.  Administrative sanctions may be imposed on violators 
and there is possibility of criminal prosecution.270 
Moreover, the protection given to undisclosed info rmation also finds its bases in the general 
laws of the Philippines which provides that:  
"The State shall protect and secure the exclusiv e rights of scientists, inventors, artists, and 
other gifted citizens to their intellectual property and creations, particularly  when beneficial to 
the people, for such period as may be provided by law."
271 
The Revised Penal Code also penalizes the infide lity of public officers in the custody of 
documents, as can be seen in the following provisions:  
"Revelation of secrets by an officer.- Any public officer who shall reveal any secret known 
to him by reason of his official capacity, or  shall wrongfully deliver papers or copies of 
papers of which he may have charge and which should not be published …."
272 
 
                                                      
268 Rep. Act No. 3720 (1963), Chapter VI, Sec. 11. 
269 Rep. Act. No. 3720 (1963) ,Chapter XI, Sec. 29. 
270 BFAD Order No. 27-A, series of 2001. 
271 Constitution (1987), Article XIV, Section 13. 
272 Revised Penal Code, Article 229. IP/Q/PHL/1, IP/Q2/PHL/1 
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Page 61 
 
 
"Public officer revealing secrets of private i ndividual.- Any public officer to whom the 
secrets of any private individual shall become known by reason of his office who shall reveal such secrets … ."
273 
 
Private persons may also be criminally liable for revelation of secrets : 
 
"Revealing secrets with abuse of office. … any manager, employee, or servant who, in such 
capacity, shall learn the secrets of his principa l or master and shall reveal such secrets."274 
 
"Revelation of industrial secrets. … the person in charge, employee or workman of any 
manufacturing or industrial establishment who, to the prejudice of the owner thereof, shall reveal the secrets of the industry of the latter."
275 
Follow-up question  
 Referring to the issue of unfair commercial u se of data submitted by an applicant to the 
responsible State Agency in the procedure for ma rket authorization of a pharmaceutical or of 
an agricultural chemical product, please explain in  detail if your legislation explicitly prohibits a 
second applicant from relying on, or from referring to, the original data of the first applicant, 
when applying subsequently for market au thorization for his own product.  Does the 
responsible State Agency require the same amount of data from the second applicant as from 
the first applicant?  Does your legislation set a sp ecific term of protection for undisclosed test or 
other data of the first applicant? 
In the case of agricultural ch emical product, the Pesticide Regulation promulgated by the 
Fertilizer and Pesticide Authority of the Department of Agriculture protects the proprietary nature of 
all required data submitted by the first applicant fo r a period of eight years from the date of approval 
of registration.  During this period, no subsequent  application for registration may be entertained. 
Thereafter, subsequent applicants/registrants are re quired to submit only certain data such as general 
information, specifications and labelling. 
E. ENFORCEMENT  
11. Please indicate remedies provided by your  legislation, which constitute effective 
deterrents to infringements of intellectual property rights.  
 The Philippines legal system recognizes the rights of inventors, artists and other gifted 
citizens to their intellectual creations and provid es criminal, civil and administrative procedures and 
remedies that effectively deter infringe ment of intellectual property rights. 
 
The 1987 Constitution
 
 
 Philippine Constitution mandates the State to protect and secure the exclusive rights of 
scientists, inventors, artists and other gifted c itizens to their intellectual property and creations, 
particularly when beneficial to the people, for such period as may be provided by law.276 
 
                                                      
273 Revised Penal Code , Art.230. 
274 Revised Penal Code , Art.291. 
275 Revised Penal Code , Art.292. 
276 Sec. 13, Art. XIV. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 62 
 
 Republic Act No. 8293
 
 
The IP Code established the Intellectual Property Office that administers and implements 
State policies related to the protection of intellectua l property rights.  The Intellectual Property Office 
also coordinates with other government agencies and private sectors in formulating and implementing 
plans and policies to strengthen the protection of intellectual property rights. 
 
 The IP Code allows the institution of crimin al, civil and administrative actions for acts of 
infringement.  The provisional remedies of prel iminary attachment, preliminary injunction, 
impounding and destruction, seizure and impounding ma y be availed pending the resolution of the 
action.    In criminal actions, penalties of imprisonment,  fines of as high as One million five hundred 
thousand pesos (P1,500,000.00), and subsidiary im prisonment in cases of insolvency may be imposed. 
 
In civil actions for patent infringement, the court may award damages not exceeding three (3) 
times the amount of actual damages sustained. If damages cannot be readily ascertained, the court 
may award damages equivalent to reasonable royalty. 
In trademark infringement, the court may award damages equivalent to the reasonable profit, 
or the profit which defendant actually made out of the infringement. If damages cannot be readily 
ascertained, the court may award damages equivalent to a percentage of the gross sales of the 
defendant.  Damages may be doubled if there is actual intent to mislead the public or defraud 
complainant. 
In copyright infringement, the court may aw ard actual damages sustained including the 
profits, which the infringer may have made due to su ch infringement, or such damages as may be just 
under the circumstances. 
The court may also award attorney's fees and ot her forms of damages such as moral, nominal, 
temperate, liquidated and exemplary damages ar ising from the defendant's wrongful acts.  
In administrative actions, the Intellectual Prope rty Office shall exercise exclusive original 
jurisdiction in administrative complaints for viola tions of laws involving intellectual property rights 
provided the total damages claimed are not less than Two hundred thousa nd pesos (P200,000.00). 
Republic Act No. 8792
 
Republic Act No. 8792 which is also known as the Electronic Commerce Act provides for the 
recognition and use of electronic commercial a nd non-commercial transactions and imposes penalties 
for unlawful use thereof.  This law considers the act  of piracy as including the unauthorized copying, 
reproduction, dissemination, distribution, importati on, use, removal, alteration, substitution, 
modification, storage, uploading, downloading, co mmunication, making available to the public, or 
broadcasting of protected material, electronic si gnature or copyrighted works including legally 
protected works, through the use of telecommunicat ion networks, such as but not limited to internet, 
in a manner that infringes intellectual property rights.  
Executive Order No. 60  
 Executive Order No. 60 created the Inter-Age ncy Committee on Intellectual Property Rights 
whose functions include the following: 
 IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 
Page 63 
 
 
 a. Recommend policies and coordinate th e policy making process in the Executive 
Branch of the Government vis-a-vis pr otection and enforcement of intellectual 
property rights; 
  
 b. Coordinate with the different agencies  of the Executive, Legislative and Judicial 
Branches of the Government in order to effectively address the problem areas arising 
from infringement and counterfeiting of  intellectual property rights;  
  c. Enlist the assistance of any branch , department, bureau, office, agency or 
instrumentality of the Government, in cluding government-owned and controlled 
corporations, in the anti-piracy and counte rfeiting drive, which may include the use of 
its personnel, facilities and resources for a mo re resolute prevention, detection and 
investigation of violations of laws e numerated in paragraph (d) hereof, and 
prosecution of criminal and administrative cases; 
  
 d. Cause and direct the immediate investigation and speedy prosecution of cases 
involving violations of copyright, trademar ks, patents and other intellectual property 
related laws or such intellectual theft-rela ted cases that is referred to the Committee. 
 Customs Administrative Order No. 7-93
 
 
 Customs Administrative Order No. 7-93 provides the rules and regulations for preventing the importation of goods or products th at infringe upon the property rights of patent holders, trademark 
and copyright owners protected by laws. 
 
Presidential Decree No. 1987
 
 
Presidential Decree No. 1987 which created the Videogram Regulatory Board (VRB) granted 
the VRB the power to supervise, regulate, grant, deny, or cancel permits for the importation, exportation, production, copying, sale, lease, exhi bition or showing of videograms including, among 
others, videotapes, discs, cassettes or any technical improvement or variation thereof.  The VRB has 
jurisdiction over violations involving videograms. 
 
 P. D. No. 1987 and its implementing rules and re gulations require all pe rsons engaged in the 
videogram business of production, reproduction, importati on, exportation, distribution, sale, rental, or 
public exhibition to register with the Board.  
 
 In addition, no person may engage in the business of production, re production, importation, 
exportation, exhibition, distribution, sale, rent al or public exhibition of videograms without a 
commercial license from the VRB. The commercial li cense shall be issued to qualified persons 
registered with the Board upon payment of the license fee fixed by it and shall be valid for a period as 
determined by the VRB. 
 In the exercise of its regulato ry and supervisory powers, the Board or its duly authorized 
representative shall be allowed free and unhindered entry into the business premises of all producers, reproducers, distributors, dealers, retailers, and public  exhibitors of videograms, in order to inspect 
such videograms and to determine compliance with P.D. 1987 and the pertinent rules and regulations. 
 
House Bill No. 11855
 
 
House Bill No. 11855 was a pending legislatio n in the Eleventh Congress before its 
adjournment last February. This bill which will be  re-filed in the Twelfth Congress seeks to expand IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 64 
 
 the authority of the VRB and curtail the ente rtainment media piracy in the Philippines. 
   Under this bill, entertainment media shall refer to videograms, phonograms, interactive 
entertainment software, optical discs, recorded in any format containing audio and/or visual images 
and sound of any motion picture or cinematographic art or work, performance, event, musical, literary 
or other works.  Entertainment media containing musical works shall include music videos, such as 
videoke or karaoke, recorded in any format with or without visual images. 
 
Optical disc shall refer to a type of optical media, including but not limited to compact discs 
(CD), CD-Read Only Memory, Digital Versatile Disc (DVD), Video Compact Disc (VCD), laser or videodiscs and any technical variation now know n or still to be devised in the future.  
 12. Please describe any new initiatives that are planned to improve enforcement of intellectual property rights in your country, pa rticularly initiatives related to criminal 
enforcement.  
Philippine government is activ ely and constantly pursuing new initiatives to address the issue 
of enforcement whether by way of new legislations , issuances of rules and regulations or activities 
that will support effective enforcement.  A number of these initiatives are: 
1. The recently enacted Republic Act No. 8792 or the Electronic Commerce Act 
includes increased penalties for IP violation through the use of telecommunication, and penalties for cyber crimes namely, hacking and piracy.  
2. There are pending bills with the Philippine legislature relating to the protection of 
intellectual property rights: 
a. House Bill No. 9827 and Senate Bill No. 1989 (both approved on third 
reading) refer to the protection of layout-designs of integrated circuits as an intellectual property creation.  The bill was certified for immediate enactment by President Gloria Macapagal-Arroyo and is expected to be ratified upon 
resumption of the 12
th Congress in June 2001 and to be signed immediately 
into law by the President. 
b. House Bill No. 10654 (approved on third reading) and Senate Bill No. 1912 
aim to provide sui generis  protection to plant varieties. 
c. House Bill No. 11855 the Entertainment Media Regulatory and Anti-Piracy 
Act which expands the powers and juri sdiction of the Videogram Regulatory 
Board to cover optical disks and increase penalties for IP violations. 
d. House Bill No. 8916 on Cable TV was approved by the House of 
Representatives and Senate Committee Report No. 382 recommended the adoption of the bill.   
3. The Intellectual Property Office issued  the Rules and Regulations governing 
administrative complaints on violations of intellectual property rights and has started 
to provide this remedy starting 26 April, 2001, on the occasion of the first World IP 
Day. 
4. On 28 May 2001, the Intellectual Property Offi ce will start to accept cases for dispute 
resolution on technology transfer payment and violations of author's rights to public 
performance or communication of his work. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 
Page 65 
 
 
5. The Intellectual Property Office is aggressively involved in education campaign, 
which includes: 
- inclusion of IP in education curriculum - conduct of seminar/workshops all over the country 
- media airing of plug-in production against piracy, e.g. radio, television, cable 
TV. 
6. Dialogue and public sector consultati ons for effective IP enforcement: 
- the Presidential Inter-Agency Comm ittee on IPR conducts inter-action 
meetings in the regions and provinces in order to provide a forum for law 
enforcers, the business and consumer sectors to share  experiences and 
concerns relating to IP enforcem ent and to increase cooperation and 
collaborative efforts in intellectual property protection. 
- the Presidential Inter-Agency Comm ittee on IPR allocates a portion of its 
monthly meetings for consultations with various IP sectors, e.g. copyright 
owners, IP practitioners and shopping mall owners on ways and means to 
protect IPRs 
7. The Intellectual Property Office provides technical assistance in the formation of 
collecting societies to strengthen enforcement of  the economic rights of copyright  and neighbouring rights owners. 
8. The Intellectual Property Office seeks as sistance from funding institutions and 
negotiates for strengthening of IP enforcement in the country, e.g. the proposed 
project on the formulation of the Rules a nd Regulations to further enhance Border 
Control Measures. 
9. Membership in international treaties/c onventions for the protection of intellectual 
property rights, e.g. Patent Cooperation Treaty which will enter into force with 
respect to the Philippines on 17 August, 20 01 and the WIPO Internet Treaties which 
will be submitted to the Philippine Senate for accession. 
  
VI. RESPONSES TO QUESTIONS POSED BY THE UNITED STATES 
A. G
ENERAL  
1. Please describe, in relation to each form of intellectual property covered by the TRIPS 
Agreement, including plant variety protection, th e manner in which nation treatment and most 
favoured nation treatment are provided to nationals of other WTO Members.  
 The Philippines observes the principle of reciproc ity in adhering to international conventions 
such that any person who is a national or who is domiciled or has a real and effective industrial 
establishment in a country which is a party to any convention, treaty or agreement relating to intellectual property rights or the repression of unfair competition, to which the Philippines is also a party, or extends reciprocal rights to nationals of th e 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 IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 66 
 
 addition to the rights to which any owner of an in tellectual property right is otherwise entitled by the 
Intellectual Property Code.
277 
 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 regist ration of the same mark in one of those countries, 
shall be considered filed as of the day the app lication was first filed in the foreign country.278  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 th ree (3) months from the date of filing in the 
Philippines.279 
  Any foreign national or juridical person whether or not engaged in the business in the 
Philippines may bring a petition for opposition, or can cellation 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 in tellectual property right or the repression of unfair 
competition, to which the Philippines is also a part y, or extends reciprocal rights to nationals of 
Philippines by law.
280 
 
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 th e date of filing the foreign application, provided, 
that (a) the local application expressly claims priority ; (b) it is filed within twelve (12) months from 
the date the earliest foreign application was filed;  and (c) a certified copy of the foreign application 
together with an English translation is filed with in six (6) months from the date of filing in the 
Philippines.
281 
   An application for design filed by any person w ho has previously applied for the same design 
in another country which by treaty, convention, or law affords similar privile ges to Filipino citizens, 
shall be considered filed as of the date of filing th e 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 ce rtified copy of the foreign application together 
with an English translation is filed within six (6 ) months from the date of filing in the Philippines.
282 
 
 Any foreign national or juridical person whethe r 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 in tellectual property right or the repression of unfair 
                                                     
 
277 Republic Act No. 8293, Sec. 3. 
278 Rules and Regulations on Trademarks, Service Marks, Tradenames, and Marked or Stamped 
Containers, Rule 202 (a). 
279 Rules and Regulations on Trademarks, Service Marks, Tradenames, and Marked or Stamped 
Containers, Rule 203. 
280 Regulations on Inter Partes Pr oceedings (Petition for Cancellation of a Mark, Patent, Utility Model, 
Industrial Design, Opposition to Registration of a Mark, and Compulsory  Licensing), Rule  2, Sec. 4. 
281 Rules and Regulations on Utility Models and Industrial Designs, Rule 204. 
282 Rules and Regulations on Utility Models and Industrial Designs, Rule 305. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 
Page 67 
 
 
competition, to which the Philippines is also a part y, or extends reciprocal rights to nationals of 
Philippines by law.283 
 
Inventions  
 
 An application for patent filed by a person w ho has previously applied for the same invention 
in another country which by treaty, convention, or law affords similar privile ges 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 file d within twelve (12) months from the date the 
earliest foreign application was filed; and (c) a certif ied copy of the foreign application together with 
an English translation is filed within six (6) months from the date of filing in the Philippines.284 
  Any foreign national or juridical person whethe r 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 in tellectual property right or the repression of unfair 
competition, to which the Philippines is also a part y, or extends reciprocal rights to nationals of 
Philippines by law.
285 
 Copyright and Related Rights
 
 
Any person who is a national or who is domic iled 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 unfair competition, to which the Philippines is also a party, or extends reciprocal rights to nationals of th e 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 in tellectual property right is otherwise entitled by the 
Intellectual Property Code.
286 
 
Plant Varieties  
  
The pending Senate Bill 1912 provides that any a pplication 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 F ilipino citizens, shall be issued a Certificate upon 
payment of dues and compliance with all provisions of th is 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.287 
 
Geographical Indication288 
  Any person who is a national or who is domi ciled or has a real and effective industrial 
establishment in a country which is a party to any co nvention, treaty or agreement relating to IPR or 
                                                     
 
283 Regulations on Inter Partes Pr oceedings (Petition for Cancellation of a Mark, Patent, Utility Model, 
Industrial Design, Opposition to Registration of a Mark, and Compulsory Licensing), Rule 2, Sec. 4. 
284 Rules and Regulations on Inventions, Rule 305. 
285 Regulations on Inter Partes Pr oceedings (Petition for Cancellation of a Mark, Patent, Utility Model, 
Industrial Design, Opposition to Registration of a Mark, and Compulsory Licensing), Rule 2, Sec. 4. 
286 Copyright Safeguards and Regulations, Rule 18, Sec. 2. 
287 Senate Bill 1912, Sec. 24 
288 Defined in Rule 101, (g) of the Rules and Regula tions on Trademarks, Serv ice 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. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 68 
 
 repression of unfair competition, to which the Philippines is also a party, or extends reciprocal rights to nationals of the Philippines by law, shall be entitled to benefits to the extent  necessary to give effect 
to any provision of such convention, treaty or law, in  addition to the rights to which any owner  of an 
IPR  is otherwise entitled under the Intellectual Property Code.
289 
 Thus, any foreign national or juridical person whether or not engaged in the business in the 
Philippines may bring a petition for opposition or cance llation, 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 in tellectual property right or the repression of unfair 
competition, to which the Philippines is also a part y, or extends reciprocal rights to nationals of 
Philippines by law.290 
Integrated Circuits  
 
A proposed law291 has been passed by Congress and awaiting approval by the President 
providing for the protection of Lay-out Design (Topogr aphy) of Integrated Circuits amending certain 
provisions of R.A. No. 8293.  
The protection of Intellectual Property Right un der 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 Phili ppines 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.292 
Undisclosed Information  
 The laws of the Philippines protect undisclosed information.293  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 part y 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.294 
 
                                                      
289 Republic Act No. 8293, Sec. 3. 
290 Regulations on Inter Partes Pr oceedings (Petition for Cancellation of a Mark, Patent, Utility Model, 
Industrial Design, Opposition to Registration of a Mark, and Compulsory Licensing), Rule 2, Sec. 4. 
291 Senate Bill No. 1989 entitled "An Act Providing fo r 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 for signing into law by the President of the Philippines. 
292 Republic Act No. 8293, Sec. 3. 
293 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 confidentiality of the contents of 
license contracts submitted to the IPO all protect undisclosed information. 
294 Republic Act No. 8293, Sec. 3. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 
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Protection Against Anti-Competitive Practices in Contractual Licensing  
In addition to the Constitutional prohibition on combination in restraint of trade or unfair 
competition,295 the Civil Code and Revised Penal Code provision on unfair competition,296 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.297 
 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 Phili ppines is also a party, or extends reciprocal 
rights 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.
298 
 
Others  
 
 As to other groups of intellectual property righ ts which have not been specifically provided 
for in the implementing rules and regulations, the cat ch-all provision of the Intellectual Property Code 
on International Convention and Reciprocity,299 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 of the land and adheres to the policy of amity with all nations.300  By signing the Agreement on 
Trade Related Aspects of Intellectual Property Right s, the Philippines has effectively adopted all the 
provisions of said international agreement as "part of  the law of the land."  Under the doctrine of 
incorporation , which the Judiciary consistently upheld,301 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 the 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.302  These works are protected from the mome nt 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.303 
Notwithstanding exclusive reproduction right, th e 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 necessar y 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, fo r the replacement of the lawfully owned copy of 
                                                      
295 Philippine Constitution, Article XII, Sec. 1. 
296 Revised Penal Code of the Philippines, Article 186; Civil Code of the Philippines, Article 28 on 
Unfair Competition. 
297 Republic Act No. 8293, Sec. 87. 
298 Republic Act. No. 8293, Sec. 3 
299 Republic Act. No. 8293, Sec. 3. 
300 Philippine Constitution, Article II, Sec. 2. 
301 Kuroda v. Jalandoni 42 OG 4282; Co Kim Chan v. Valdez Tan Keh 75 Phil. 113. 
302 Sec. 172.1, Rep. Act No. 8293, The Intellectual Property Code of the Philippines. 
303 Sec. 172.2, Rep. Act No. 8293, The Intellectual Property Code of the Philippines. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 70 
 
 the computer program in the event that the lawfully obtained copy of the computer program is lost, 
destroyed or rendered unusable.
304 Any such copy or adaptation of the computer program shall be 
destroyed in the event that continue d possession thereof ceases to be lawful.305 
Philippine law protects by copyright "compilati ons of data and other materials which are 
original by reason of the selection or coordinati on or arrangement of their contents" as derivative 
works.306  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 exte nd copyright in such original works.
307 
 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.308 
 
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. 
 
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 copy right law of the Philippines provides for 
performers, and the term of the protection. 
 
Philippine law grants to performers exclusive ri ghts of authorizing: (a) the broadcasting and 
other communication to the public of their pe rformance and the fixation of their unfixed 
performance
309; (b) the direct or indirect reproduction of their performances fixed in sound recordings, 
in any manner or form310; (c) the first public distribution of the original and copies of their 
performance fixed in the sound recording through sal e or rental or other forms of transfer of 
ownership311; (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 
performer312; and (e) the making available to the pub lic 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.313 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 his 
death.314 
 However, the above-cited economic rights cease once the performer has authorized the 
broadcasting or fixation of his performance.315 
                                                      
304 Sec. 189.1, Rep. Act No. 8293, The Intellectual Property Code of the Philippines. 
305 Sec. 189.2, Rep. Act No. 8293, The Intellectual Property Code of the Philippines. 
306 Sec. 173.1(b), Rep. Act No. 8293, The Intellectual Property Code of the Philippines. 
307 Sec. 173.2, Rep. Act No. 8293, The Intellectual Property Code of the Philippines. 
308 Sec. 213.1, Rep. Act No. 8293, The Intellectual Property Code of the Philippines. 
309 Sec. 203.1(a) and (b), Rep. Act No. 8293, The Intellectual Property Code of the Philippines. 
310 Sec. 203.2, Rep. Act No. 8293, The Intellectual Property Code of the Philippines. 
311 Sec. 203.3, Rep. Act No. 8293, The Intellectual Property Code of the Philippines. 
312 Sec. 203.4, Rep. Act No. 8293, The Intellectual Property Code of the Philippines. 
313 Sec. 203.5, Rep. Act No. 8293, The Intellectual Property Code of the Philippines. 
314 Sec. 204.2, Rep. Act No. 8293, The Intellectual Property Code of the Philippines. 
315 Sec. 205.1, Rep. Act No. 8293, The Intellectual Property Code of the Philippines. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 
Page 71 
 
 
Independently of the performer's economic ri ghts, performers enjoy moral rights over live 
aural performances or performances fixed in sound recordings: (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.316  
Philippine law also grants to performers, in ev ery 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 the 
original compensation he received for the first communication or broadcast.
317 Nevertheless, 
performers have the right to agree on more favorab le terms and conditions in their contracts with 
respect to any use of their performance.318  
 The rights granted to performers of sound record ings expire fifty (50) years from the end of 
the year in which the performance took place or the fixation was made.319 
 
5. Article 14.2 of the TRIPS Agreement provi des 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 phonogr ams 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 law of the Philippines implements these obligations 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 or pursuant to authorization by the producer.
320  
 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.321 
 C. T
RADEMARKS  
6. Please describe the subject matter that can comprise a trademark under the trademark 
law of the Philippines. 
  Mark means any visible sign. It can be a word, name, symbol, emblem, sign or device.
322 
 
                                                      
316 Sec. 204.1, Rep. Act No. 8293, The Intellectual Property Code of the Philippines. 
317 Sec. 206, Rep. Act No. 8293, The Intellectual Property Code of the Philippines. 
318 Sec. 207, Rep. Act No. 8293, The Intellectual Property Code of the Philippines. 
319 Sec. 215.1(a) and (b), Rep. Act No. 8293, The Intellectual Property Code of the Philippines. 
320 Sec. 208.1 and 208.3, Rep. Act No. 8293, The Intellectual Property Code of the Philippines. 
321 Sec. 215.1 (a) and (b), Rep. Act No. 8293, Th e Intellectual Property Code of the Philippines. 
322 R.A.8293 Sec.121.1, Sec 121.2, Rule 100 par. (I) of the Trademark Regulations. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 72 
 
 
7. Please describe the procedure that must be followed to register a trademark in the 
Philippines, citing the relevant provisions of the la w, and describe the rights that the owner of a 
registered 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 a pplicant 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.323 
 The office assigns an application number and the filing date of the application once the 
requirements are complied with.324   The application undergoes search  process on similar marks, after 
which, it shall be subjected to substantive examin ation to determine whether or not the mark is 
registrable.325  Once found allowable, the trademark will be published in the Intellectual Property 
Office Official Gazette for opposition.326 
 
 A mark is registered only if no opposition is filed against its regist ration. If an opposition is 
filed with the Bureau of Legal Affairs, the regi stration may be granted only if the evidence supports 
the grant and only after the decision in favour of  the applicant has become final and executory.327 
Thereafter, a certificate of registration is issued  and the mark is included in the publication of 
registered marks.328 
 
 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 the 
certificate.329  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 iden tical or similar to those in r espect of which the trademark is 
registered where such use would result in a likeli hood of a confusion.  In case of the use, of an 
identical sign for identical goods or services, a likelihood of confusion shall be presumed.
330 
 
                                                      
323 R.A.8293 Secs.124.1, Sec.127.1, Sec.127.2, Rules 400, 500 & 501 of the Trademark Regulations. 
324 R.A.8293 Sec.132. 
325 R.A.8293 Sec.133.1, Rule 600, Rule 605 of the Trademark Regulations. 
326 R.A.8293 Sec 133.2, Rule 700 of the Trademark Regulations. 
327 R.A. 8293 Sec.134 Rule 703 of the Trademark Regulations, Rule 7 on Inter Partes Proceeding. 
328 R.A.8293 Sec.136, 138&139, Rule703 of the Trademark Regulations. 
329 R.A.8293 Sec.138. 
330 R.A.8293 Sec.147, Rule 800 of the Trademark Regulations. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 
Page 73 
 
 
8. Please provide the length and terms of pr otection the trademark law of the Philippines 
provides for a trademark.   
 
 A certificate of registration remains in force for ten (10) years331 and may be renewed for 
periods of ten (10) years at its expiration.332 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.333 
 D. G
EOGRAPHICAL 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, characteristi cs or geographical origin of the goods or services. 
Geographical indications are indications which iden tify a good as originating in the territory of a 
country which is a member of, or a region or lo cality in that territory, where a given quality, 
reputation or other characteristic of the good is essentially attributable to its geographical origin.
334 
 
 Any person who, on or in connection with any goods or ser vices, 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 he r or another person's goods, services, or commercial 
activities, shall be liable to a civil action for dama ges and injunction by any person who believes that 
he or she is or likely to be damaged by such act,335 as well as criminal penalty of 2-5 years and fine 
50,000-200,000.336 
 
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.337 
 
 Furthermore, the Minimum Labelling Requireme nt for Consumer Products requires inclusion 
of the address of the manufacturer, importer, repack er, of the consumer product in the Philippines; 
country of manufacture, if imported.338 
 
10. Please describe in detail the manner in which the higher level of protection required for wines and spirits under Article 23.2 of the TRI PS Agreement 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 regime 
considering that trademarks and geographic i ndications perform sim ilar functions: as source 
identifiers, indicators of quality and promote goods and services.  
                                                     
 
331 R.A.8293 Sec.145, Rule 801 of the Trademark Regulations. 
332 R.A.8293 Sec.146, Rule 917, 918 of the Trademark Regulations. 
333 R.A.8293 Sec.145, Rule 801 of the Trademark Regulations. 
334 R.A.8293 Sec 123.1, Rule 101 par.(g) of the Trademark Regulations. 
335 R.A.8293 Sec.169.1. 
336 R.A.8293 Sec.170. 
337 R.A.8293 Sec.169.2. 
338 R.A.7394 Consumer Act of the Philippines, [Art.77 par.(d) viii]. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 74 
 
 
 
 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.
339 
 
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 registration.340  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 manufact ure or handicraft by way of drawings, 
photographs or other adequate graphic repr esentation of the design as applied to the 
article of manufacture or handicraft which clearly and fully discloses those features for which design protections is claimed;
341 
 (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 assi gned to the patent examiner for formality 
examination.
342 
 
 The filing fee may be paid within one (1) mont h from the date the application was received by 
the office.343  
 
If the application meets the requirement for regi strability, the examiner shall forward to the 
applicant a notice of registrability requiring the pa yment for the issuance and publication fees. Upon 
payment of the required fees, a certificate of registra tion shall be issued to th e applicant.  In case the 
application fails to meet the requirements for regist rability, 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 application, (2) amending the app lication, or (3) upon payment of the required fee, 
requesting for a registrability report.  The registrab ility report shall contain c itations of relevant prior 
art documents with appropriate indications as to thei r degree of relevance, which will serve as an aid 
to determine the validity of the industr ial 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.344  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 
                                                      
339 R.A.8293 Sec.151, Rule 8 on  Inter Partes Proceeding. 
340 Rule 309 of the IRR for Utility Models and Industrial Designs. 
341 Rep. Act No. 8293, Sec. 114, paragraph (d). 
342 Rules 307 and 308 of the IRR for Utility Models and Industrial Designs. 
343 Rule 310 of the IRR for Utility Models and Industrial Designs. 
344 Rule 452 of the IRR for Utility Models and Industrial Designs. IP/Q/PHL/1, IP/Q2/PHL/1 
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prosecute may be revived as a pending application w ithin a period of four (4) months from mailing 
date of the notice of withdrawal.345 
  Textile designs are also protected under the Philippine Law on Copyright.
346 
 
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-or ganisms and non-biological and microbiological 
processes and plant varieties.  Please cite to the relevant provisions of the law.  
 A comparison of Article 27 of the TRIPS Agre ement and Philippine La w will show how the 
Philippine patent law complies with Article 27.  
 
 
 
TRIPS Agreement,  
Article 27 
  
Philippine 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 foregoing347… 
 …which is new, involves an inventive step and is industrially applicable
348 
 
2. Members may exclude from 
patentability inventions, the prevention within their territory of the commercial exploitation of which is necessary to protect ordre public or morality….. 
  
The following shall be excluded from 
patent protection:  a)  anything which is contrary to public order or morality
349 
                                                      
345 Rule 453 of the IRR for Utility Models and Industrial Designs. 
346 Rep. Act No. 8293, Sec. 172, paragraph (h). 
347 Rep. Act No. 8293, Sec. 21, Rule 200. 
348 Rep. Act No. 8293, Sec. 21, Rule 200. 
349 Rep. Act No. 8293, Sec. 21, Rule 200. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 76 
 
 
 
TRIPS Agreement,  
Article 27 
  
Philippine Patent Law,  
Sections 21 and 22, Rules 200 and 202 
 
 
3. Members may exclude from 
patentability:  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 the 
human or animal body  except products 
and compositions for use in any of these methods
350  
 c)  plant varieties or animal breeds or 
essentially biological processes for the 
production of plants or animals. This provision shall not apply to micro-organisms and non-biological and microbiological processes 
351 
 
     This section shall not preclude Congress to consider enacting  a law providing sui generis  protection of plant 
varieties.
352 
 
     [The proposed sui generis  system for 
the protection of plant varieties is pending in Congress.
353] 
 
 
 
13. Please describe in detail the rights provi ded patent holders under the patent law of the 
Philippines and cite to the relevant provisions of law.  
 The exclusive rights conferred to the owners of the patent are
354: 
 
- the making, using, offering for sale, selling and importing a patented product, or a 
product obtained directly or indirectly fro m a patented process or the use of a 
patented process.355 
- to assign or transfer by succession the patent  and to conclude licensing contracts for 
sale.356 
 
                                                      
350 Rep. Act No. 8293, Sec. 22.3, Rule 202 (c). 
351 Rep. Act No. 8293, Sec. 22.4, Rule 202 (d). 
352 Rep.Act No.8293, Sec.22.4. 
353 House Bill No.1070; Senate Bill No.1912. 
354 Rep.Act 8293, Sec.71. 
355 Rep.Act No.8293, Sec71.1(a) and (b). 
356 Rep. Act No.8293, Sec.71.2. IP/Q/PHL/1, IP/Q2/PHL/1 
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14. Please describe in detail any provisions in the laws of the Philippines permitting 
unauthorized use of a patent, citing to the rele vant 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 purpose
357 
 
 - where the act of making or using the pa tent is for the sole purpose of scientific 
research and experiment358 
  - where the patented product was put on the market  in the Philippines
 by the owner of 
the patent or with his authorization. Pu tting 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 pate nted product does not "exhaust" the patent 
rights in the Philippines.  Therefore, th e owner of the patent may prohibit the 
importation into the country of the pate nted products ( known as parallel imports) 
359 
 
 - 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 prescription360 
  - where the use of the patented product occurs in vehicles in transit in the country
361.  
 
 Unauthorized use of a patent in the Phili ppines 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 th e application shall have the right to continue 
the use thereof (Section 73.1) but this right may only be transferred or assigned 
further with his enterprise or business.
362 
  - where a Government agency or a third person authorized by the Government exploit 
the invention in the interest of public, par ticularly, national security, nutrition, health 
or the development of other sectors, as de termined by the appropriate agency of the 
Government (Section 74.1(a) ); where the ma nner 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.  
1. Valid grounds must exist- 
 Compulsory licensing may be granted under any of the following circumstances: 
 
                                                     
 
357 Rep. Act No.8293, Sec.72.2. 
358 Rep. Act No.8293, Sec 72.3. 
359 Rep. Act No.8293, Sec.72.1. 
360 Rep. Act. No. 8293, Sec. 72.4. 
361 Rep. Act No. 8293, Sec. 72.5. 
362 Rep. Act No. 8293, Sec. 73.2.  IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 78 
 
 
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 bod y 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 bei ng worked in the Philippines on a commercial 
scale, although capable of being worked, without satisfactory reason:  Provided, that 
the importation of the patented article sha ll constitute working or suing the patent.
 363 
 2. Petitioner must make efforts to obt ain authorization from patent owner- 
 
The license will only be granted after the petitione r 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.
364 
3. There must be public non-commercial use in case of semi-conductor technology- 
In the case of compulsory licensing of patents involving semi-conductor technology, the 
license may only be granted in case of public non-commercial use or to remedy a practice 
determined after judicial or administrative process to be anti-competitive.  
4. Petition must be in writi ng, 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, th e number and date of issue of the patent in 
connection with which compulsory license is sought , the name of the patentee, the title of the 
invention, the statutory grounds upon which co mpulsory license is sought, the ultimate facts 
constituting the petitioner's cause of action, and the relief prayed for. 
365 
 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 sh all be limited to the purpose for which it 
was authorized; 
b. The license shall be non-exclusive; 
                                                     
 
363 Rep. Act No. 8293 (1998), Sec. 93. 
364 Rep. Act No. 8293 (1998), Sec. 95. 
365 Rep. Act No. 8293 (1998), Sec. 98. 
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c. The license shall be non-assignable, except with that part of the enterprise or 
business with which the inven tion is being exploited; 
d. Use of the subject matter of the licen se shall be devoted predominantly for the 
supply of the Philippine market: Provided th at this limitation shall not apply where 
the grant of the license is based on th e ground that the patentee's manner of 
exploiting the patent is dete rmined by judicial or administrative process, to be anti-
competitive. 
e. The license may be terminated upon prope r 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 le gitimate interest of the licensee; and 
f. The patentee shall be paid adequate remuneration taking into account the economic 
value of the grant or authorization, except that in cases where the license was 
granted to remedy a practice which was determined after judicial or administrative process, to be anti-competitive, the need  to correct the anti-competitive practice 
may be taken into account in fixi ng the amount of remuneration. 
366  
15. What term of protection does the patent law of the Philippines provide for patents?  
Please describe any provisions for extension of the term of protection and cite to the relevant 
provisions of the law. 
 
 The term of a patent shall be 20 years from the filing date  of the application.367 
 
 To maintain the patent, an annual fee shall be  paid upon the expiration of four years from the 
date the application was published and on each  subsequent anniversary of such date,368 otherwise, the 
application is deemed withdrawn or  that patent considered lapsed.369 
 
 Payment may be made within three months be fore the due date.  The obligation to pay the 
annual fees shall terminate should the appli cation be withdrawn, refused, or cancelled.370  A grace 
period of six months shall be granted for the paym ent of annual fee, upon payment of the prescribed 
surcharge for delayed payment.371 
 G. L
AYOUT -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 fo r Integrated Circuits though still pending has 
already been approved by both houses of the Philippine Congress.  It could be signed by the President 
shortly.  
A layout-design of integrated circuits to be regi strable must be original.  A layout-design shall 
be considered original if it is the result of the creator's own intellectual effort and is not commonplace 
                                                     
 
366 Rep. Act No. 8293 (1998), Sec. 100. 
367 Rep. Act No. 8293, Sec. 54, Rule 1100. 
368 Rep. Act No. 8293, Sec. 55.1, Rule 1101. 
369 Rep. Act No. 8293, Sec. 55.2, Rule 1103.  
370 Rep. Act No. 8293, Sec. 55.1, Rule 1101. 
371 Rep. Act No. 8293, Sec. 55.3, Rule 1104.  IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 80 
 
 among creators of layout-designs and manufacturers of inte grated circuits at the time of its creation.  
A layout-design consisting of a combination of el ements and interconnecti ons that are commonplace 
shall be protected only if the combina tion, taken as a whole, is original.
372   
 Registration of layout-design of integrated circu its shall be valid for a period of ten 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-design373.  The protection of a layout-design shall commence: 
 
(a) on the date of the first commercial exploitati on, 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 fro m 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. P
ROTECTION OF UNDISCLOSED INFORMATION  
17. Please describe in detail how the laws of the Philippines provide for the protection of 
undisclosed information as required by Articl e 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.
374  It is defined as information that is secret in the sense 
that it is not, as a body or in the precise configur ation 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 becau se it is secret and has been subject to reasonable 
steps under the circumstances to keep it secret, by th e person lawfully in control of the information.
375 
  The penalty of imprisonment of up to four y ears and two 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 re veal the secrets of the industry of the latter.
376 
 
 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 manuf acturer, 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 ma y 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 years but not more than five years or both.
377 
 
 Information on fuels and fuel additives register ed with the Department of Energy which are 
considered trade secrets shall be covered by a non-disclosure and confidentiality agreement between 
                                                      
372 Sections 113.3 and 113.4 of the Proposed/Approve d Bill for the Protection of the Layout-Designs of 
Integrated Circuits. 
373 Sec. 118.5 of the Proposed/Approved Bill for the Protection of the Layout-Designs of Integrated 
Circuits.  
374 Rep. Act No. 8293, Sec. 4.1(g). 
375 Rules and Regulations on Voluntary Licensing, Rule 1(o). 
376 Act No. 3815,  Art. 292. 
377 Rep. Act No. 8424, Sec. 270. IP/Q/PHL/1, IP/Q2/PHL/1 
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the company and the Department of Energy for a period of 15 years.378 
 
18. Please describe in detail the manner in whic h protection is provided test data regarding 
pharmaceutical and agricultural chemical produc ts 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 agricu ltural products are submitted to and evaluated 
by the Bureau of Food And Drugs (BFAD) as requirements for the registration of said products.379 
These data are accorded confidentiality and protecti on 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.380  Accordingly, any person who commits any of the aforesaid prohibited acts shall, upon 
conviction be subject to imprisonment of not less than one year but not more than five 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.381 
  Moreover, government officials and employ ees are guided by the Code of Conduct and 
Ethical Standards for Public Officials and Employee s.  As such, they are prohibited from using or 
divulging confidential or classified information offi cially 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.
382 
  The following are the imposable penalties for violation of the above prohibition: 
 
a. Fine not exceeding six months salary or suspension not exceeding one year or 
removal depending on the gravity of the offence; 
 
b. Imprisonment not exceeding five 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 cons piracy with public officials or employees 
shall be subject to the same penal liabilities as the public officials or employees.
383 
  In general, the Revised Penal Code prescrib es offences and their corresponding penalties for 
the revelation by a public officer of secrets known to him by reason of his official capacity;
384 
revealing by public officer of secrets known to him by reason of his office;385 revelation of secrets by 
a manager or employee or servant;386 revelation of industrial secrets by the person in charge, 
employee, or workman of any manufacturing or industrial establishment.387 
 
                                                      
378 Implementing Rules and Regulations of  Rep. Act No. 8749, Rule XXXVII, Sec. 4. 
379 Department of Health Administrative Order No. 67, series of 1989, Section 4. 
380 Rep. Act. No. 3720 (1963), Section 11(f), as amended by Executive Order No. 175 (1987), 
Section 7. 
381 Rep. Act. No. 3720 (1963), Section 12(a), as amended by Executive Order No. 175 (1987), 
Section 9. 
382 Rep. Act No. 6713 (1989), Section 7(c). 
383 Rep. Act No. 6713 (1989), Section 11. 
384 Act No. 3815 (1930), Article 229. 
385 Act No. 3815 (1930), Article 230. 
386 Act No. 3815 (1930), Article 291. 
387 Act No. 3815 (1930), Article 292. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 82 
 
 
19. Are other applicants for marketing approv al for their own versions of a previously 
approved pharmaceutical or agricultural chemical products permitted to rely on data submitted 
by the earlier applicant?  If so, how long a peri od of exclusivity is given the earlier applicant 
before such reliance becomes possible. 
 
 No.  On the contrary, the rules are explicit th at establishments applying to register a drug 
product are required to fully disclose all pertin ent documentation and information regarding the 
product.  Failure to fully disclose material in formation about the drug product is a ground for 
disapproval of registration application and a basis for withdrawal of the establishment's licence to 
operate. Specifically, action on registration applic ation shall be based on the complete set of 
specifications of the drug product proposed to app ear in the label, i.e. formulation, dosage form, 
strength, therapeutic indication and manufacturer. An y change in any of the above specifications will 
require a new registration.
388 
 
 Furthermore, the application for registration sh all be in a form promulgated by Bureau of 
Food and Drugs and supported by documents and requirements, which include technical data 
containing the physical description of the product; co mplete formulation and technical specifications 
for raw materials and finished product; process of manufacturing including facilities and control used 
in manufacturing and packaging the product; descr iption 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 are 
prescribed depending on the classification of drugs, i.e., investigational drug, new drug, established 
drug, tried and tested drug.389 These samples shall be tested by the Laboratory Services Division of 
the Bureau of Food and Drugs after the docum entary requirements have been evaluated.390 
 
 To further safeguard that any drug or device is safe, efficacious and of good quality for use, 
the law391 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 inves tigations which have been  made to show whether 
or not such drug or device is safe, efficacious a nd 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 regulat e the production, sale and 
traffic of the same to protect the health of the people.
392 
 
                                                      
388 Department of Health Administrative Order No.67, series of 1989, Section 2. 
389 Department of Health Administrative Order No. 67, series of 1989, Section 4 & Annex I. 
390 Memorandum Circular no. 11, series of 1992. 
391 Rep. Act. No. 3720 (1963), Sec. 21 as amended by Executive Order No. 175 (1987), Secs. 14 & 15. 
392 Rep. Act. No. 3720 (1963), Section 2. IP/Q/PHL/1, IP/Q2/PHL/1 
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I. ENFORCEMENT  
20. Please describe in detail the manner in which the laws of the Philippines provide for 
effective action against infringement of intellect ual 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: 
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 act ion before a court of competent jurisdiction, to 
recover from the infringer such damages sustained ther eby, 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.393 
 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 comp lainant 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 the 
complainant, the court may impound during the pendency of the action sales invoices and other 
documents evidencing sales.394 
 In copyright infringement cases, the copyright ow ner 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 a nd other documents evidencing sales, all articles 
and their packaging alleged to infringe a copyrigh t 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.395 
 Decisions of the Regional Trial Court civil cases for infringement are appealable to the Court 
of Appeals and the Supreme Court.396 
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 months but 
not more than three years and/or a fine of not less than one hundred thousand pesos (Php 100,000.00) 
                                                      
393 Rep. Act No.8293, Secs.76.2 and 76.5. 
394 Rep.Act No.8293, Secs.76.2 and 76.5. 
395 Rep.Act No.8293, Secs 216.1 and 216.2. 
396 Rules 41 and 56,  Rules of Court. IP/Q/PHL/1, IP/Q2/PHL/1 
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 but not more than three thousand pesos (Php 300,000.00) , at the discretion of the court.  The criminal 
action prescribes in three years from the commission of the crime.
397 
 In cases of trademark infringement, a criminal penalty of imprisonment from two years to five 
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.398 
 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 year to three years plus a 
fine ranging from fifty thousand pesos (Php 50,000.00) to one hundred fifty thousand pesos 
(Php 50,000.00) for the first offence; (b) Imprisonmen t of three (3) years and one day to six years plus 
a fine ranging from one hundred fifty thousand pe sos (Php 150,000.00) to five hundred thousand 
pesos (Php 500,000.00) for the second offence; (c) Imprisonment of six years and one day to nine years plus a fine ranging from five hundred thou sand (Php 500,000.00) to one million five hundred 
thousand pesos (Php 1,500,000.00) for the third an d subsequent offences; and (d) In all cases, 
subsidiary imprisonment in case of insolvency.
399 
 Decisions of the Regional Trial Court criminal  cases for infringement are appealable to the 
Court of Appeals and the Supreme Court.400 
Administrative action  
 Administrative cases involving intellectual prope rty 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 for 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 grante d during the proceedings.  The Director of Legal 
Affairs shall have the power to punish for contempt all those who disregard orders or writs issued in 
the course of the proceedings.401 
 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) th e acceptance of a voluntary assurance of compliance 
or discontinuance as may be imposed; (iii) the conde mnation or seizure of products which are subject 
of the offense; (iv) the forfeiture of paraphernalia and all real and personal pr operties 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 Affair s, 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 an additional fine of one thousand pesos (Php 1,000.00)  per day of continuing violatrion; (vi) the 
cancellation of any permit, license, authority or re gistration which is being secured by the respondent 
from the office; (vii) the withholding of any permit, license, authority, or registration which is being 
                                                     
 
397 Rep. Act No. 8293, Sec. 84. 
398 Rep. Act No. 8293, Sec. 170. 
399 Rep. Act No. 8293, Sec. 217.1. 
400 Rules 124 and 125,  Rules of Court. 
401 Rep. Act No. 8293, Sec. 10.2[a]. IP/Q/PHL/1, IP/Q2/PHL/1 
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secured by the respondent from the office; (viii) the assessment of damages;  (ix) censure; and (x) 
other analogous penalties or sanctions.402 
 Decisions of the Director BLA in administrative cases involving intellectual property 
violation are appealable to the IPO Director General.403  Decisions of the IPO Director General are 
appealable to the Court of Appeals and finally to the Supreme Court.404 
 b) The Department of Trade and Industry (DTI) which has original jurisdiction over complaints 
involving violations of intellectual property right s, irrespective of the total amount of damages 
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.
405 
 After formal investigation, the DTI Secretary may impose one (1) or more of the following 
administrative penalties: (i) the issuance of a ceas e 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 condemna tion or seizure of products which are subject of 
the offence; (iv) the forfeiture of paraphernalia a nd all real and personal properties which have been 
used in the commission of the offence; (v) the im position of administrative fines in such amount 
deemed reasonable by the Director of Legal Affair s, 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 re gistration 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.
406 
 Decisions of the Secretary of the DTI are appealable to the Office of the President.407 
c) The Videogram Regulatory Board VRB) whic h has jurisdiction over violations of laws 
involving videograms, including those involving copyright violation.408 
Any person found guilty of copyright violation shall be imposed the following administrative 
penalties:  (i) closure, revocation of commercial license 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).409 
 
Decisions of the VRB are appealable to the Office of the President.410 
 
                                                      
402 Rep. Act No.  8293, Sec. 10.2[b]. 
403 Rep. Act No. 8293, Sec. 7[b]. 
404 Rules 42 and 45, Rules of Court. 
405 Executive Order 913 [1983] Article III, Secs. 4 & 5; Department Administrative Order 01 [2000]. 
406 Executive Order 913, Sec. 6. 
407 Executive Order 913, Sec. 13. 
408 Presidential Decree 1987, Chapter IX, Sec. 21A[2]. 
409 Presidential Decree 1987, Se ctions 21A[1] and 21B[1]. 
410 Memorandum Circular No. 98-00, Rule IX, Sec. 1. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 86 
 
 
21. Article 43.1 of the TRIPS Agreement requires that judges be authorized to order 
production of evidence necessary to substantiate  a party's claims where that party has been 
unable to obtain such evidence from the opposi ng 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 documen tary evidence, which lies within his control.  
The court, however, may not so order where the evid ence is incriminatory, confidential, privileged, 
immaterial or irrelevant.
411 
 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 interrogatories.
412  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 identit y of persons having knowle dge of relevant facts.413 
 
 The court may also issue an order for the pr oduction 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 doc uments or papers in his possession that are not privileged and 
which are material to the action.
414 
   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.
415 
 
During the pendency of an action involving copy right 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.
416 
 
22. Please describe in detail all of the civil rem edies that are available to right holders under 
the laws of the Philippines, citing to th e 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 da mages not exceeding three times the amount of 
the actual damages sustained.  If damages cannot  be readily ascertained, the court may award 
damages equivalent to reasonable royalty.417 
 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 
                                                     
 
411 Revised Rules of Procedure [1997] Rule 21, Sec. 1; Rule 23, Sec. 2. 
412 Revised Rules of Civil Procedure [1997] Rule 23, Sec. 1. 
413 Revised Rules of Civil Procedure [1997] Rule 23, Sec. 2. 
414 Revised Rules of Civil Procedure [1997] Rule 27, Sec. 1. 
415 Rep. Act No. 8293, Sec. 156.2. 
416 Republic Act No.8293, Sec.216.1[c]. 
417 Rep.Act No.8293, Sec.76.4. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 
Page 87 
 
 
defendant.  Damages may be doubled if there is actua l intent to mislead the public or to defraud the 
complainant.418 
 In copyright infringement, the court may award actual damages sustained including the profits 
that the infringer may have made due to the infring ement, or such damages as may be just under the 
circumstances.
419 
 The court may also award attorney's fees and ot her forms of damages such as moral, nominal, 
temperate, liquidated and exemplary damages arising from the defendant's wrongful acts.
420 
 
Injunction  
 
The court may order an injunction restraini ng infringement of intellectual property rights.421 
 
 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 n ecessity for the writ to prevent serious damage to the 
applicant.422 
 The injunction may be refused if the court finds that the complaint is insu fficient.  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 damag es he may suffer if the injunction is dissolved.423 
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 th e right holder, or destroyed without compensation.424 
 
23.  Please describe in detail the provision al 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 tim e before the entry of judgment, a plaintiff or 
any proper party may have the propert y of the adverse party attached as security for the satisfaction of 
any judgment that may be recovered.
425 
 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 part y or hearing of the application is required as the 
                                                      
418 Rep.Act No.8293, Secs.156.1 & 156.3. 
419 Rep.Act No.8293, Sec.216. 
420 Rep.Act No.8293, Sec.216[e] & Sec. 76.2. 
     Rep.Act No.386, Arts.2216-2235. 
421 Rep.Act No.8293, Secs.216[a], 76.2 & 156.4. 
422 Revised Rules of Civil Procedure [1997] Rule 58, Sec.3. 
423 Revised Rules of Procedure[1997] Rule 58, Sec.4. 
424 Rep.Act No.8293, Secs 76.5, 1577 216[d]. 
425 Revised Rules of Civil Procedure [1997] Rule 57, Sec.1. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 88 
 
 time 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.
426 
Preliminary injunction / Temporary restraining order (TRO)  
 This is an order granted at any stage of an ac tion 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 may 
also require the performance of a particular act or acts, in which case, it is called a preliminary mandatory injunction.
427 
Any aggrieved party may apply for preliminary injunction by filing a verified complaint with 
the proper court showing the grounds relie d upon and the filing of the required bond.428 
 
The court may issue ex parte  a temporary restraining order to be effective for a period of 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 20 days, which cannot be issued in the absence of a hearing.  The 20 day period is 
inclusive of the 72 hours restraining order.  However, if issued by the Court of Appeals, the temporary 
restraining order shall be effective for 60 days fro m notice to the party sough t to be enjoined.  A 
restraining order issued by the Supreme C ourt shall be effective until further orders.429 
 Seizure and impounding
 
 
 To ensure the preservation of evidence n ecessary for the prosecution of cases involving 
intellectual property violation, the Supreme Court 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:  
b. 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; 
 
c. To preserve relevant evidence in re gard to the alleged infringement. 
 
 The order granting provisional and preventiv e 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 
                                                     
 
426 Revised Rules of Civil Procedure [1997] Rule 57, Sec. 3. 
427 Revised Rules of Civil Procedure [1997]. 
428 Revised Rules of Civil Procedure [1997] Rule 58 Sec.3. 
429 Revised Rules of Civil Procedure [1997] Rule 58 Sec.5. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 
Page 89 
 
 
irreparable damage to the right holder or wher e there is demonstrable risk of evidence being 
destroyed.   SECTION 3. Affidavit and Bond Required .  The applicant and/or his witness or witnesses 
must show and provide in  his affidavit any r easonably available evidence in order to satisfy a 
sufficient degree of certainty that the applicant is  the right holder and that the applicant's right 
is 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 governme nt authority that will execute the order. 
 
 The applicant shall likewise post a cash bon d 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 cost s which may be adjudged to the adverse party 
and 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 proceedings undertaken and the complete i nventory of the articles confiscated and 
impounded. 
 
 A determination on whether the order sha ll 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 sha ll, 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 in fringement 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. S
PECIAL REQUIREMENTS RELATED TO BORDER MEASURES  
24. Please describe in detail the procedures unde r the laws of the Philippines that provide 
for border enforcement at least for trademark co unterfeiting and copyright piracy, identifying 
the competent authority and citing to the relevant provisions of law or regulation.   
 The Bureau of Customs is the competent author ity in border enforcement.  The applicable law 
is the Tariff and Customs Code of the Philippin es and Customs Administrative Order No. 7-93 which 
was promulgated for the prevention of im portation of infringing goods or products. 
 IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 90 
 
  Philippine law provides that no article of impor ted 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 Ac t, 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 wher e it is in fact manufactured, shall be admitted to 
entry 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 manuf actured, or his registered mark or trade name, 
and thereupon the Collector of Customs shall cause one  or more copies of the same to be transmitted 
to each collector  or to other proper office of the Bureau of Customs.
430 
 
 Furthermore, Customs regulations provide the following salient points:431 
 - 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: 
  a. Those which shall copy or simulate, the name or any domestic product, or 
manufacturer, or dealer, or any treaty, conven tion, 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 cal culated to induce the public to believe that 
the article is manufactured in any foreign c ountry or locality other that the country or 
locality where it is in fact manufactured. 
 
c. Those which constitute an unauthorized c opy or piratical copy or likeliness or any 
work, whether published or unpublished, on which a Philippine copyright subsists. 
 d. Those which constitute a substantial simu lation 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 w ill be imported may take place  may lodge an application in 
writing with 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 Copyrights 
 
  For the effective implementation of the ru les and regulations, the Bureau of Customs 
shall maintain and keep custody of registry books for trademarks, patents and copyrights, 
                                                     
 
430 Section 166, Rep. Act 8293. 
431 Customs Administrative Order No.7-93, September 3 1993. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 
Page 91 
 
 
where copies of registered trademarks, patent s and copyrights may be filed, where other 
information pertinent to their rights may be lis ted, 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 copyrigh t 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  a ttaching 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 holder, 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 readily recognizable by 
Customs authorities. 
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 recordi ng 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, informing them 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 wi ll provide basis for monitoring or prohibiting 
the entry or importation of any incoming cargo or shipment that may infringe upon 
the property rights of the patent trademar k 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, th e Customs Examiners/Appraisers shall conduct 
an actual examination of the suspected cargo or shipment and shall immediately 
submit a recommendation to the Collector of  Customs for the issuance of a Warrant 
of Seizure and Detention against su ch 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 as 
intervenor and present evidence to prove infringement on its patent, trademark or 
copyright. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 92 
 
 
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 fo llowing rules shall be followed: 
 
 1. The Collector of Customs, upon making the seizure, shall issue a warrant for the 
detention of the property.
432  A warrant of seizure and detention is issued by the 
Collector whenever there is violation of either Section 101 (prohibited importations)
433 or Section 2053 (undervaluation, misclassification, or 
misdeclaration)434 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 op portunity to be heard in reference to the 
delinquency which was the occasion of such seizure.435 
3. If the owner is unknown, such notice shall be  made by posting the same for 15 days in 
the public corridor of the customhouse of the district in which the seizure was made, 
and in the discretion of the Commissioner, by publication in a newspaper or by such other means as he shall consider desirable.
436 
 
4. If, within 15 days after notice, or no owne r or agent can be found or appears before 
the Collector, the latter shall declare the property forfeited.437 
5. After hearing, the Collector shall in writing make a declaration of forfeiture.438 
6. Once an article is determined to have been prohibited importation that it cannot be 
used for unlawful purpose, it shall be destro yed in such manner as the Collector shall 
direct.439 
Also, after due hearing, the condemnation or sei zure 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.440 
 
25. Please indicate if border enforcement is availa ble to owners of other forms of intellectual 
property and, if so, please describe the procedur es and remedies available in relation to each 
form of intellectual property, citing the relevant provisions of law. 
  The procedures enumerated in the answers to qu estion no. 24 apply to all forms of intellectual 
property. 
 
                                                     
 
432 Section 2053, Book II, Title VI, Tariff and Customs Code of the Philippines. 
433 Section 101(k), Tariff and Customs Code of the Philippines. 
434 Section 2053, Book II, Title VI, Tariff and Customs Code of the Philippines. 
435 Section 2303, Book II, Title VI, Tariff and Customs Code of the Philippines. 
436 Section 2304, Book II, Title VI, Tariff and Customs Code of the Philippines. 
437 Section 2306, Book II, Title VI, Tariff and Customs Code of the Philippines. 
438 Section 2312, Book II, Title VI, Tariff and Customs Code of the Philippines. 
439 Section 2609, Book II, Title VI, Tariff and Customs Code of the Philippines. 
440 Section 10.2(b) iii, Rep. Act 8293. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 
Page 93 
 
 
26. Article 58 of the TRIPS Agreement speci fies 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 identify 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 sh ipment known to be infringing intellectual property 
rights.441 
 
 However, the Bureau of Customs may stop the en try of the infringing goods even if there is 
no alert list or requests because counterfeit shipment fa lls 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 sh ipping documentation and are not otherwise 
infringing.  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.
442 
 K. C
RIMINAL 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 ac t as a deterrent, at least for cases of wilful 
trademark counterfeiting and copyright infringeme nt 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, Utilit y Model and Industrial Design
443 
• Infringement of Copyright and Related Rights444 
• Infringement of Trademarks, Service Marks and Geographical Indications445 
• Unfair competition446 
• False Designation of Origin/False Description or. Representation447 
• Reproduction of cinematographic art448 
• Piracy449 
• Violation of the Electronic Commerce Act450 
 
                                                      
441 Customs Administrative Order No. 7-93, September 3, 1993. 
442 Customs Administrative Order No. 7-93, September 3, 1993. 
443 R.A. 8293, Sec. 84, Sec. 108, Sec. 119. 
444 R.A. 8293, Sec.217. 
445 R.A.8293, Sec.170. 
446 R.A.8293, Sec.170. 
447 R.A.8293, Sec.170. 
448 Pres.Decree 1987, Secs.7,9. 
449 R.A.8792, Sec 33(b). 
450 R.A.8792. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 94 
 
 B. Criminal provisions of Republic Act 8293 (In tellectual Property Code of the Philippines) 
relative to the prosecution of intellectual propert y 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 crimin ally liable therefore and, upon conviction, shall 
suffer imprisonment for the period of not less than six months but not more than three years and/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 years from date of the commission of the crime.
451 
 B.2. Under the Law on Trademarks, Service Marks and Tradenames 
 
Independent of the civil and administrative sanc tions imposed by law, a criminal penalty of 
imprisonment from two years to five 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 mentione d in Section 155 (Infringement), Section 168 
(Unfair Competition) and Subsection 169.1 (False  Designation of Origin, False Description or 
Representation)
452 
 
B.3. Under the Law on Copyright 
 Any person infringing any right secured by provisi ons of Part IV of this Act (The Law on 
Copyright) or aiding or abetting such infringement shall be guilty of a crime punishable by: 
 
 Imprisonment of one year to three 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 years and one day to six years plus a fine ranging from One Hundred 
Fifty Thousand Pesos (150,000.00) to Five H undred Thousand Pesos (P500,000.00) for the second 
offence. 
  Imprisonment of six years and one day to ni ne 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 impris onment in cases of insolvency.
453 
 
In determining the number of years of imprison ment and the amount of fine, the court shall 
consider the value of the infringing materials that  the defendant has produced or manufactured and the 
damage that the copyright owner has suffered by reason of the infringement.454 
 
Any person who at the time when copyright subsis ts in a work has in his possession an article 
which he knows, or ought to know, to be an infringing copy of the work for the purpose of: 
 
                                                      
451 R.A.8293, Sec.84. 
452 R.A.8293, Sec, 170. 
453 R.A.8293, Sec.217.1. 
454 R.A. 8293, Sec.217.2. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 
Page 95 
 
 
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.
455 
 
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 us ing a computer or other similar information 
and communication devices, without the knowle dge 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, destructi on, alteration, theft 
or loss of electronic data messages or el ectronic documents shall be punished by a 
maximum fine of One Hundred Thousa nd Pesos (P100,000.00) and a maximum 
commensurate to the damage incurred and a mandatory imprisonment of six months 
to three years; 
 b) Piracy or the unauthorized copying, reproduction, dissemination, distribution, 
importation, use, removal, alteration, subs titution, modification, storage, uploading, 
downloading, communication, making availa ble 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 internet, in a manner that infringes intellectua l property rights shall be punished by a 
maximum fine of One Hundred Thousa nd Pesos (P100,000.00) and a maximum 
commensurate to the damage incurred and a ma ndatory of six months to three years; 
 
c) Violation of Consumer Act or Republic Ac t 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 th is Act, shall be penalized with a maximum 
penalty of One Million Pesos (P1,000,000.00) or six 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 respon se to complaints or request for investigation. 
   
 Thus, law enforcement agencies such as the Philippine National Police (PNP), the 
National Bureau of Investigation (NBI), Depa rtment 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 dire ction and control of a prosecutor.
456 
                                                      
455 R. A. 8293, Sec,  217.3. 
456 Revised Rules on Criminal Procedure(2000) Rule 110, Sec. 5. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 96 
 
 
  Rights holder, heirs or assigns as offended parties, may file or institute action for infringement.
457 
 
 The offended party is authorized to prosecute a criminal action subject to the 
direction and control of the public prosecutor.458 
 
D. Criminal prosecution procedure common to criminal complaints for infringement of patents, trademarks, service marks and tradenames, copyri ght 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 Depart ment 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 60 days by the desi gnated Intellectual Prope rty (IP) court and 30 
days within which to resolve (Postponem ent is not allowed except on meritorious 
ground) 
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.
459 
Twenty-seven of these courts are sp ecially designated to hear such cases.460 
 
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.461 
 
28. Article 61 also requires that remedies in a ppropriate 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 be imposed, 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; 
 
                                                     
 
457 R. A. 8293, Secs. 28, 147, 180, 193; Rev. Rules on Crim. Procedure, Rule 110, Sec. 3, 5. 
458 Revised Rules on Criminal Procedure, Rule 110, Secs.3, 5; Guevarra vs.del Rosario 77Phil.615. 
459 Supreme Court Administrative Order No. 104-96(1996). 
460 Supreme Court Administrative Order No. 113-95(1995). 
461 Revised Rules on Criminal Procedure (2000) Rule 122, Sec. 2. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 
Page 97 
 
 
 - All labels, signs, prints, packages, wra ppers, receptacles and advertisements in the 
possession of the infringer bearing the registered mark or trade name or any production, counterfeit, copy or colourable  imitation thereof, all plates, moulds, 
matrices and other means of making the sa me, shall be delivered up and destroyed.
462 
 
In regard to counterfeit goods, the simple rem oval 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.463 
 
 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.
464 
 Goods seized by virtue of a search warrant ar e kept by the law enforcement agency that 
implemented the search warrant.  Disposition of the seized goods shall be ordered by the court.  The 
IP 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.
465 
 
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 th at 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 Intell ectual Property Code as 
presented in the answers to questions 27 and 28.  
 L. S
TATISTICAL QUESTIONS  
30.  Please provide statistical information related  to civil copyright, trademark, geographical 
indication, industrial design, patent, integrated circuit layout-design, and trade secret 
enforcement for 2000, including the number of ca ses filed;  injunctions issued;  infringing 
products seized;  infringing equipment seized;  cases resolved (including settlement); and the 
amount of damages awarded.  
The Task Force on Anti-Intellectual Property Pir acy of the Department of Justice reported 
that for the year 2000, there were a total of f our hundred fifty-one cases filed and acted upon, of 
which 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 propert y right violation cases. 
 
                                                     
 
462 R. A. 8293, Sec. 157. 
463 R. A. 8293, Sec. 157.2. 
464 Rule 126, Sec. 3, Revised Rules on Criminal Procedure. 
465 Rule 127, Sec.2, Revised Rules on Criminal Procedure. IP/Q/PHL/1, IP/Q2/PHL/1 
IP/Q3/PHL/1, IP/Q4/PHL/1 Page 98 
 
 
31.  Please provide statistical information rel ated 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 fin es and/or jail terms (including whether the fines 
were paid and whether the jail term was actu ally 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 Inte llectual 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 me mber agencies namely, the Videogram Regulatory 
Board, Department of Justice, Bureau of Customs,  National Bureau of Inv estigation, and Philippine 
National Police relating to criminal enforcement pa rticularly, as to the number of raids conducted, 
prosecutions, cases filed in court and confiscated/s urrendered items, showing that for the year 2000 
there were 1,313 raids; 3,376 inspection/monitori ng 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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