2)
REC FINED,

Republic of the Philippines
HOUSE OF REPRESENTATIVES
Quezon City

EIGHTEENTH CONGRESS
Second Regular Session

HOUSE BILL No 8462

INTRODUCED BY REPRESENTATIVES SHARON S. GARIN AND
CHRISTOPHER V.P. DE VENECIA

EXPLANATORY NOTE

‘The 1987 Philippine Constitution Article XIV Section 13 provides the State
shall protect and secure the exclusive rights of scientists, inventors, artists, and
other gifted citizens to their intellectual property and creations, particularly when
beneficial to the people, for such period as may be provided by law.

Anent to such State’s duty is to protect, secure and promote the intellectual
property rights of the people, and to recognize the vital role that an efficient and
balanced intellectual property system plays in the economic, technological and
sociocultural development of a country.

This bill proposes the passing of a new Intellectual Property Act with the
ultimate goal of ensuring that scientists, inventors, artists, and other gifted citizens
are encouraged to continue creating and innovating so that both citizens and
consumers can benefit from innovative and creative products. In addition, the new
and amended provisions contained in the new Intellectual Property Act, as proposed,


are designed to ensure a balance between the interests of both the owners/holders
and users of the products protected by these rights.

Innovation and creativity are important factors and drivers of economic
growth. By protecting their intellectual property rights, it helps to ensure that
individuals who innovate and use their creativity and skills are properly rewarded
and their rights over their creations protected.

The proposed new Intellectual Property Act endeavours to accomplish, among
others, the following:

* Increase the capacity of IPOPHL to provide assistance to stakeholders, the
general public, and specific sectors like the academe, the industries, and the
MSMEs

+ Have a more entrenched IP System that will nurture a culture of creativity and
innovation

+ Widen the scope of public engagement and facilitate the delivery of IP services all
over the country with a focus on regional development

+ Clarify and fill the gap created by the Personal Property Security Act.

+ _ Institutionalize the NCIPR and the Powers of a Sub-Committee on Enforcement
of Intellectual Property Rights in the Digital Environment.

* Allow Provisional Patent Applications to encourage Philippine inventors to file
applications while the invention has yet to be perfected

+ Streamline administrative procedures relating to intellectual property rights to
liberalize the registration on the transfer of technology, enhance the enforcement
of intellectual property rights in the Philippines, and promote the use of relevant,
emerging, advanced, and state-of-the-art technologies in providing a more
efficient and higher quality service to the stakeholders and the public.

In line with this view, the passage of this measure is earnestly sought.

U

CHRIST V.R. DE VENECIA
Fourth Diktrid, Proviice of Pangasinan



Republic of the Philippines
HOUSE OF REPRESENTATIVES
Quezon City

EIGHTEENTH CONGRESS
Second Regular Session

Fp 8062

HOUSE BILL

INTRODUCED BY REPRESENTATIVES SHARON S. GARIN AND
CHRISTOPHER V.P. DE VENECIA

AN ACT PROVIDING FOR THE REVISED INTELLECTUAL PROPERTY CODE
OF THE PHILIPPINES, AND FOR OTHER PURPOSES

Be it enacted by the Senate and House of Representatives of the Philippines in

Congress assembled:

PART I STATE POLICIES AND BASIC PRINCIPLESS Chapter 1 State
Policies

SECTION 1. Title. - This Act shall be known as the “New Intellectual Property Act”.

SECTION 2. Declaration of State Policy. -

a, The State recognizes that an effective and efficient intellectual property

system is vital to the development of domestic and creative industries,


facilitates transfer of technology, attracts foreign investments, and ensures

market access for our products.

b. The State should modernize and improve certain aspects of the law on
intellectual property to ensure that the intellectual property system operates
more efficiently and is more accessible for all scientists, inventors, artists and

other gifted citizens including the indigenous peoples and local communities.

b. It is also the policy of the State to streamline administrative procedures
relating to intellectual property rights to liberalize the registration on the
transfer of technology; enhance the enforcement of intellectual property rights
in the Philippines; and promote the use of relevant, emerging, advanced, and
state-of-the-art technologies in providing a more efficient and higher quality
service to the stakeholders and the public.

c. The State recognizes, protects, and promotes the rights of the indigenous
peoples and communities to their intellectual and cultural rights under the
principles of free and prior informed consent and benefit sharing. Thus, the

State shall implement appropriate measures to prevent misuse and

misappropriation of the indigenous peoples’ and communities’ intellectual and

cultural properties.

SECTION 3. Applicability of International Conventions and Agreements. - 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 the
Philippines by law, shall be entitled to benefits to the extent necessary to give effect
to any provision of such convention, treaty or reciprocal law, in addition to the rights
to which any owner of an intellectual property right is otherwise entitled by this Act.


Chapter II Definitions

SECTION 4. Definitions. — The following terms as used in this Act shall mean:

4.1. “Innovation” refers to the creation of new ideas that results in the development of

new or improved products, processes, or services, which are then spread or

transferred across the market.

4.2. ‘Intellectual property” or “Intellectual property rights” refers to the following: a.

4.3.

44.

Patent;

b. Utility model;

c. Industrial design;
d. Layout-design;

e. Trademark and service mark;

m

Copyright and related rights;

;. Geographical indications;

Pom

|. Protected undisclosed information; and

Protected new plant varieties as provided under Philippine Plant Variety
Protection Act of 2002.

“Technology transfer arrangements" refers to contracts or agreements
involving intellectual property rights with the transfer of systematic
Imowledge or technology for the manufacture of a product, the application of a
process, or rendering of a service including management contracts or
franchises, and the transfer, assignment or licensing of all forms of intellectual
property rights, including licensing of computer software except computer

software developed for mass market.

The term "Office" refers to the Intellectual Property Office of the Philippines
(POPHL).


4.5.

"IPOPHL Gazette” refers to the printed or electronic publication of the Office
under this Act.

PART II THE INTELLECTUAL PROPERTY OFFICE Chapter I
FUNCTIONS

SECTION 5. Functions of the Intellectual Property Office. -

5.1. The Office is mandated to administer and implement the State policies declared

in this Act and shall have the following functions:

a. Examine applications and grant letters patent for inventions, and register
utility models, industrial designs, layout-designs (topographies) of
integrated circuits, trademarks and other marks of ownership;

b. Provide protection for geographical indications;

c. Register technology transfer arrangements and settle disputes on
payments involving the same and develop and implement strategies to
promote and facilitate technology transfer;

4. Promote the use of copyright and related rights as a tool to foster a culture
of creativity and respect for artistic creation;

e. Promote the use of patent information as a tool for policy making and
technology development;

£ Publish regularly in its own publication the patents, marks, utility models
and industrial designs, issued and approved, and the technology transfer
arrangements registered;

. Administratively adjudicate disputes involving intellectual property rights;
. Coordinate with other government agencies, institutions, and the private

roe

sector efforts to formulate and implement plans and policies to strengthen
the creation, promotion, protection, utilization, and enforcement of
intellectual property rights in the country; and

i. Formulate policies to promote creativity, innovation, and respect for
intellectual property.

‘The functions referred to in (a), (b), () and (g) are quasi-judicial in nature.


5.2.

5.3.

The Office shall have custody of all records, books, drawings, specifications,
documents, and other papers and things relating to intellectual property rights
applications filed with the Office.

In the exercise of the functions enumerated herein, the Office shall have the

authority to:

a. Impose and collect fees and other charges; and

b. Promulgate rules and procedures, including reasonable timelines,
consistent with international agreements and best practices, and
commensurate to the extremely complicated and exceptionally technical
field of intellectual property. These rules and procedure shall cover, among
others, the grant of letters patents, registration of utility models, industrial
designs, layout-designs (topographies) of integrated circuits, marks of
ownership, the adjudication of intellectual property disputes, and other
similar or related services.

Chapter II ORGANIZATIONAL STRUCTURE

SECTION 6. ‘The Organizational Structure of the Office. —

6.1.

6.2.

The Office shall be headed by a Director General who shall be assisted by two
(2) Deputies Director General.

The Office shall be comprised of eight (8) bureaus, namely:
a. The Bureau of Patents;

b. The Bureau of Trademarks;

c. The Bureau of Copyright and Related Rights;

d. The Bureau of Legal Affairs;

e. The Bureau of Innovation and Business Development;

£, The Bureau of Regional Operations;


g. The Information Technology Service; and
h. The Finance and Administrative Service,

each of which shall be headed by a Director and an Assistant Director, and such other
offices as may be established by the Director General.

An Intellectual Property and Research Academy shall likewise be created.

63. The Director General, Deputies Director General, Directors and Assistant
Directors shall be appointed by the President. The other officers and employees
of the Office shall be appointed by the Secretary of Trade and Industry,
conformably with and under the Civil Service Law: Provided, That such power
may be delegated to the Director General.

SECTION 7. The Office of the Director General. ~

7.1. Composition. - The Office of the Director General shall consist of the Director
General and the Deputies Director General, their immediate staff, and such
offices and services that the Director General will set up to support the plans
and programs of the Office of the Director General, including but not limited
to:
a, Appeals and Legal Office;
b. Policy and International Affairs Office;
c. Internal Audit and Quality Management Office;
d. Advocacy and Communications;
e. Strategy and Knowledge Management Office; and
£, Intellectual Property Rights Enforcement Office.

7.2. Powers and Functions. - The Director General, shall exercise the following powers
and functions:
a. Manage and direct all functions and activities of the Office, including the

promulgation of rules and regulations to implement its mandates, objectives,
8


policies, plans, programs and projects, and the recognition of attorneys, agents,
or other persons representing applicants or other parties before it; Provided,
That in the exercise of his authority to propose policies and standards in
relation to the following: (1) the effective, efficient, and economical operations
of the Office requiring statutory enactment; (2) coordination with other
agencies of the government in relation to the enforcement of intellectual
property rights; and (8) the establishment of fees for the filing and processing
of an application for a patent and registration of utility model or industrial
design, layout-design (topography) of an integrated circuit, or mark or a
collective mark, and other marks of ownership, and for all other services
performed and materials furnished by the Office, the Director General shall be
subject to the supervision of the Secretary of Trade and Industry;

Exercise:

1, Exclusive original jurisdiction over petitions for the grant of
compulsory licenses for patented inventions, and special compulsory
licenses for the importation of patented drugs and medicines. The
decisions of the Office of the Director General over compulsory
licensing cases shall be appealable to the Court of Appeals in
accordance with the Rules of Court;

2, Exclusive appellate jurisdiction over all decisions rendered by the
Director of Legal Affairs, the Director of Patents, the Director of
‘Trademarks, the Director of Copyright and Related Rights, and the
Director of the Innovation and Business Development in the
performance of their quasi-judicial functions.

The decisions of the Office of the Director General in the exercise of its
appellate jurisdiction in respect of the decisions of the Director of Legal Affairs,
Director of Patents, the Director of Trademarks, and the Director of Copyright
and Related Rights, shall be appealable to the Court of Appeals in accordance
with the Rules of Court: Provided, That the decisions of the Director General

in respect of the decisions of the Director of Innovation and Business

9


73.

Development on Technology Transfer Arrangements shall be appealable to the
Secretary of Trade and Industry. The Director General may form divisions
under the Office of the Director General in the exercise of the appellate
functions and promulgate rules of procedure and practice pursuant to this

paragraph.

Undertake enforcement functions supported by relevant enforcement agencies

for the purpose of:

1. Visits and inspections during reasonable hours to establishments and ~
businesses based on report or information by owner(s) or holder(s) of
the intellectual property rights received by the Office, of activities
suspected to be in violation of this Act; and

2. Ordering provisional remedies to address any alleged violation of
intellectual property rights.

The power to hold in contempt all those who disregard orders of writs issued

in the exercise of the powers and functions provided in this subsection; and
Such other functions in furtherance of the objectives of this Act.

Qualifications. - The Director General and the Deputies Director General must
be natural born citizens of the Philippines, at least thirty-five (35) years of age
on the day of their appointment, holders of a college degree, and of proven
competence, integrity, probity and independence: Provided, That the Director
General and at least one (1) Deputy Director General shall be members of the
Philippine Bar who have engaged in the practice of law for at least ten (10)
years: Provided further, That the second Deputy Director General shall have
at least a Master's Degree in Business Management or other similar courses
with seven (7) years of experience in management. In the selection of the
Director General and the Deputies Director General, consideration shall be

10


7A,

given to such qualifications as would result, as far as practicable, in the
balanced representation in the Directorate General of the various fields of
intellectual property.

Term of Office. - The Director General and the Deputies Director General shall
be appointed by the President for a term of five (5) years and shall be eligible
for reappointment only once. Appointment to any vacancy shall be only for the

unexpired term of the predecessor.

SECTION 8. The Bureau of Patenis. -The Bureau of Patents, through the
Director of Patents, shall have the following functions:

8.1.

8.2.
8.3.

8.4,

8.5.

8.6.

8.7.

Search and examination of patent applications and the grant of patents;

Registration of utility models, industrial designs, and integrated circuits;
Conduct studies and researches in the field of patents in order to assist the

Director General in formulating policies on the administration and
examination of patents;

Accept and hold in custody, in accordance with the relevant laws on archiving,
all the applicants filed with the Bureau, grants or certificates of registration
issued by it, and other similar documents, as well as issue certified copies of
such documents;

Establish and maintain registries of patents, utility models, industrial designs,
and layout-designs (topographies) of integrated circuits;

Publish applications and grants of patents; and registrations of utility models,
industrial designs, and layout-designs (topographies) of integrated circuits;
and

Perform such other functions related to the foregoing.

SECTION 9. The Bureau of Trademarks. -The Bureau of Trademarks shall have the

following functions:

u


9.1.

9.2.

9.3.

9.4,

9.5.

9.6.

Search and examination of the applications for the registration of marks, and
other marks of ownership and the issuance of the certificates of registration;
Conduct studies and researches in the field of trademarks in order to assist the
Director General in formulating policies on the administration and
examination of trademarks;

Accept and hold in custody, in accordance with the relevant laws on archiving,
all the applications filed with the Bureau, certificates of registration issued by
it, and other similar documents, as well as issue certified copies of such
documents;

Establish and maintain registries of trademarks, well-known marks, and other
marks of ownership;

Publish applications and registrations’ of trademarks, and other marks of
ownership; and

Perform such other functions related to the foregoing.

SECTION 10.The Bureau of Copyright and Related Rights. -The Bureau of Copyright
and Related Rights shall have the following functions:

10.1.

10.2.

10.3.

10.4.

10.5.

Exercise original jurisdiction to resolve disputes relating to copyright and
related rights, except those falling within the jurisdiction of the Bureau of
Legal Affairs;

Accept, review and decide on applications for the accreditation of collective
management organizations or similar entities;

Conduct studies and researches in the field of copyright and related rights,
including fair use of works, in order to assist the Director General in
formulating policies, rules and regulations on copyright and related rights;
Establish and maintain registries involving copyright and related rights by
itself or in coordination with other government agencies, entities, and private
stakeholders; and

Perform such other functions related to the foregoing.

12


SECTION 11.The Bureau of Legal Affairs. “The Bureau of Legal Affairs shall have
the following functions:

11.1, Adjudicate:

11.2,

a. opposition to the application for registration of trademarks and other
marks of ownership;

b. cancellation of trademarks and other marks of ownership;

c. subject to the provisions of Section 65, cancellation of patents, utility
models, industrial designs, and layout-designs (topographies) of
integrated circuits;

a. petition for declaration as true and actual inventor;

e. revocation of declaration as true and actual inventor;
£. petition for declaration of ownership or of having the right to intellectual

property; and
g. revocation of declaration of ownership or of having the right to

intellectual property.

. Exercise original and exclusive jurisdiction in administrative complaints

for violations of laws involving intellectual property rights: Provided, That
availment of the provisional remedies may be granted in accordance with
the Rules of Court. The Bureau shall have the power to hold and punish for
contempt all those who disregard orders or writs issued in the course of the

proceedings.

. After formal investigation, the Bureau may impose one (1) or more of the

following administrative penalties:

1. The issuance of a cease and desist order which shall specify the acts
that the respondent shall cease and desist from and to require the
submission of a compliance report within a reasonable time which

shall be fixed in the order;

13


The acceptance of a voluntary assurance of compliance or

discontinuance as may be imposed. Such voluntary assurance may

include one or more of the following:

i, An assurance to comply with the provisions of the intellectual
property law violated;

ii, An assurance to refrain from engaging in unlawful and unfair
acts and practices subject of the formal investigation;

iii, An assurance to recall, replace, repair, or refund the money value
of defective goods distributed in commerce; and

iv. An assurance to reimburse the complainant the expenses and
costs incurred in prosecuting the case in the Bureau of Legal
Affairs.

The Bureau may also require the respondent to submit periodic

compliance reports and file a bond to guarantee compliance of his

undertaking;

The condemnation or seizure of products which are subject of the
offense. The goods seized hereunder shall be disposed of in such
manner as may be deemed appropriate by the Bureau, such as by
destruction, sale, donation to distressed local governments or to
charitable or relief institutions, exportation, recycling into other goods,
or any combination thereof, under such guidelines as the Bureau may

provide;

The forfeiture of paraphernalia, machines, equipment and personal
properties which have been used in the violation of intellectual

property rights;

‘The imposition of administrative fines which shall in no case be less
than Five thousand pesos (Php5,000) nor more than Five hundred
thousand pesos (Php500,000). In addition, an additional fine of not less

14


10.

than One thousand pesos (Php1,000) shall be imposed for each day of

continuing violation;

The cancellation of any license, authority, or registration which may
have been granted by the Office, or the suspension of the validity
thereof for such period of time as the Bureau may deem reasonable

which shall not exceed one (1) year;

The withholding of any license, authority, or registration which is
being secured by the respondent from the Office;

The assessment and award of damages, including such profits the
infringer may have made due to such infringement and advertising
revenues; and when appropriate, exemplary, nominal or moral

damages, attorney's fees, and costs of litigation;

Censure; and

Other analogous penalties or sanctions, which may include turn-over

of websites and domain names, when warranted.

11.3. Establish and administer alternative dispute resolution mechanisms;

11.4. Provide assistance to other bureaus and offices of the IPOPHL, including legal

115.

review, study, and similar tasks; and

The Director General may by regulations establish the procedure to govern the
implementation of this Section: Provided, That in all proceedings before the
Bureau, the equitable principles of laches, estoppel and acquiescence, where

applicable, may be considered and applied.

15


SECTION 12.The Bureau of Innovation and Business Development. -The Bureau of

Innovation and Business Development shall have the following functions:

12.1, Foster innovation and business development such as:

a. Promoting the use of patent information as a strategic tool to facilitate the
development of technology in the country;

b. Encouraging the utilization and commercialization of intellectual property
through various modes, including technology transfer and licensing
arrangements, creation of spin-offs and start-ups;

c. Performing patent search, analytics, mapping, and similar activities;

a. Registering technology transfer arrangements;

e. Adopt and package intellectual property information regarding security
agreements, assignments, licenses, and other instruments relating to the
transmission of any inchoate or vested right, title, or interest in and to
intellectual property rights mentioned in Sec. 4.2;

£, Providing advisory services on:

1. the use of intellectual property as a tool to promote competitiveness;
and

2. the formulation of intellectual property policies.

12.2. Establish networks, coordinate and collaborate with creators, innovators

innovation centers, relevant government agencies, institutions and industries.

SECTION 13. The Bureau of Regional Operations. ~The Bureau of Regional

Operations shall:

13.1.

13.2.

Initiate programs that will foster an intellectual property-inspired culture of
innovation and creativity in the regions and provinces of the country;
Implement plans, programs and projects of the Office and its bureaus that will

ensure the efficient delivery of its services in the regions;

16


13.3. Develop linkages and partnerships with regional offices of other government
agencies, local government units (LGUs) and local academic institutions to
advance intellectual property-focused programs in the regions;

13.4, Render intellectual property-related services that promote the effective use
and respect of intellectual property in the regions; and

13.5. Perform such other functions that will promote the mandate of the Office
including overseeing the operations of the regional offices, satellite, extension
or field offices that may be established.

SECTION 14. The Information Technology Service. -The Information
Technology Service shall:

14.1, Plan, develop, and implement information technology (IT) strategies and
policies in collaboration with all offices and bureaus to ensure the optimal
application and utilization of IT resources and services; and

14.2. Develop and maintain databases, application systems, and network
infrastructure systems to support all office and bureau operations.

SECTION 15. The Finance and Administrative Service. - The Finance and
Administrative Service shall comprise of three (3) divisions, namely: the Finance

Division, Administrative Division, and the Human Resource Development Division.

15.1. The Finance Division shall formulate and manage a financial program to
ensure availability and proper utilization of funds, provide for an effective
monitoring system of the financial operations of the Office;

15.2. The Administrative Division shall:
a. Provide services relative to procurement and allocation of supplies and
equipment, transportation, messengerial work, cashiering, payment of
salaries and other obligations of the Office, maintenance, and proper safety

and security of the Office, as well as other utility services;

7


b. Comply with government regulatory requirements in the areas of
performance appraisal, compensation and benefits, employment records
and reports; and

c. Receive all applications filed with the Office and collect fees therefore.

15.3. The Human Resource Development Division shall design and implement human.
resource development plans and programs for the personnel of the Office;
provide for present and future manpower needs of the organization; maintain
high morale and favorable employee attitudes towards the organization
through the continuing design and implementation of employee development

programs.

SECTION 16. Intellectual Property Research and Training Center (IP Academy). -

16.1. A center for training and research on intellectual property shall have the

following functions:

a, Adopt and implement capacity building programs and activities to build
awareness and respect for intellectual property and develop programs to
promote creativity, innovation, and utilization of intellectual property;

b. Prepare modules and courses, and conduct lecture courses on intellectual
property and intellectual property-related matters;

c. Conduct and publish research on intellectual property and intellectual
property-related matters;

4, Establish partnerships and cooperation arrangements with local or foreign
agencies, educational institutions, and organizations to enhance
intellectual property research and education in the country; and

e. Conduct training and learning programs to recognize, accredit and certify
intellectual property agents, representatives and other persons
representing applicants or other parties before the Office.

18


16.2. The Director General shall approve the fees charged by the IP Academy and the

remuneration of lecturers and researchers, subject to relevant laws, rules, and

regulations.

SECTION 17. The National Council on Intellectual Property Rights (NCIPR). —'There
shall be created a National Council on Intellectual Property Rights under this Act.

171.

Composition. -' The NCIPR shall be composed of the following members:
a, Department of Trade and Industry;

b. Intellectual Property Office of the Philippines;

c. Department of Justice;

4. Department of Interior and Local Government;

e. Department of Information and Communications Technology;
£, Bureau of Customs;

g. National Telecommunications Commission;

h. Optical Media Board;

i. National Bureau of Investigation;

j. Philippine National Police;

k. Food and Drug Administration;

1. National Book Development Board;

m. Office of the Special Envoy for Transnational Crimes; and

n. Such other agencies as may be called upon by the NCIPR. (

‘The NCIPR shall be co-chaired by the Secretary of Trade and Industry and by
the Director General. Each member shall designate a permanent
representative with the rank of Undersecretary or Assistant Secretary. The
Office shall provide secretariat services to the NCIPR.

19


17.2. Functions. — The NCIPR shall act as the primary inter-agency body on efforts
against intellectual property rights violations and shall have the following
functions:

a. Formulate strategic plans and programs;
b. Assist in the public information and education campaign on the importance

of intellectual property rights;

c. Facilitate and assist in the effective enforcement and prosecution of
violators of intellectual property rights;

a. Recommend measures to the legislative, executive, and judicial
departments to ensure timely and effective enforcement and adjudication
of intellectual property rights cases;

e. Maintain a database and enforcement monitoring system, consolidated
information and reports from other agencies, and submit periodic reports;

f. Coordinate with other government agencies and the private sector efforts

on matters related to intellectual property rights enforcement.

To perform these functions, each of the NCIPR member-agencies shall
establish and maintain a permanent intellectual property unit with regular
and adequate resources, personnel, and budgetary support allocated from their

respective funds.

173, Sub-Committee on Enforcement of Intellectual Property Rights in the Digital
Environment, - To effectively and expeditiously address intellectual property
rights infringement in the digital environment, the NCIPR shall establish a
Sub-Committee, which shall hear and evaluate complaints of infringing
activities on-line. The Sub-Committee shall have the power to issue orders that
will restrict, limit, reduce, or disable the capability of online platforms and the
persons operating them to engage in infringing activities including, but not
limited to such measures as taking or shutting down or permanent closure of
websites or online platforms, removing allegedly infringing materials, or
blocking access thereto including payment gateways. The order shall be

20


immediately implemented by the concerned agency as specified in the order,
compliance of which shall be monitored by the NCIPR.

The NCIPR shall designate three (3) of the permanent representatives, except
the Secretary of Trade and Industry and the Director General, to be part of the
Sub-Committee. The members of the Sub-Committee shall be entitled to

receive honoraria to be sourced from the budget of the agencies concerned.

SECTION 18. Use of Intellectual Property Rights Fees by the Office. —

18.1

18.2

For a more effective and expeditious implementation of this Act, the Director
General shall be authorized to retain, without need of a separate approval from
any government agency, and subject only to the existing accounting and
auditing rules and regulations, all the fees, fines, royalties, other charges and
income collected by the Office under this Act and the other laws that the Office
will be mandated to administer, for use in its operations, like upgrading of its
facilities, equipment outlay, human resource development, and the acquisition
of the appropriate office space, among others, to improve the delivery of its
services to the public. This amount, which shall be in addition to the Office's
annual budget, shall be deposited and maintained in a separate account or
fund, which may be used or disbursed directly by the Director General.

The Director General shall, subject to the approval of the Secretary of Trade
and Industry, determine if the fees and charges mentioned in Subsection 18.1
hereof that the Office shall collect are sufficient to meet its budgetary
requirements. If so, it shall retain all the fees, fines, royalties, other charges
and income it shall collect under the same conditions indicated in said
Subsection 18.1. The Office shall cease to receive funds from the annual budget
of the National Government, unless the Director General has determined that.
the retained fees, fines, royalties, other charges and income of the Office will
not be sufficient to fund its operations, as certified by the Secretary of Trade
and Industry.

24


18.3 The Office shall be allowed to accept grants, donations and all other
endowments from local and external sources in accordance with pertinent laws,

rules and regulations.

18.4 There shall also be established a legal fund out of the interest earned from the
retained income for use in case of legal actions against the officials and
employees of the Office in the course of the exercise of their official functions

and duties.

SECTION 19. Special Technical and Scientific Assistance. - The Director General is
empowered to obtain the assistance of technical, scientific or other qualified officers
and employees of other departments, bureaus, offices, agencies and instrumentalities
of the Government, including corporations owned, controlled or operated by the
Government, when deemed necessary in the consideration of any matter submitted

to the Office relative to the enforcement of the provisions of this Act.

SECTION 20. Seal of Office. - The Office shall have a seal, the form and design
of which shall be approved by the Director General.

SECTION 21. Publication of Laws and Regulations. -The Director General shall cause
to be printed and made available for distribution, pamphlet copies of this Act, other
pertinent laws, executive orders and information circulars relating to matters within

the jurisdiction of the Office.

SECTION 22. The IPOPHL Gazette. -All matters required to be published
‘under this Act shall be published in the Office's own publication to be known as the
IPOPHL Gazette.

SECTION 23. Disqualification of Officers and Employees of the Office. - All officers
and employees of the Office shall not apply or act as an attorney or agent of an
application for a grant of patent, for the registration of a utility model, industrial

22


design, layout-design (topographies) of an integrated circuit, mark, other marks of
ownership, nor acquire, except by hereditary succession, any patent or utility model,
design registration, or mark or any right, title or interest therein during their

employment and for one (1) year thereafter.

PART If;
PATENTS, UTILITY MODELS, INDUSTRIAL DESIGNS, AND
LAYOUTDESIGNS (TOPOGRAPHIES) OF INTEGRATED CIRCUITS

Chapter I ij) DEFINITIONS
SECTION 24. Definition of Terms. - As used in this Part II, the following terms shall
have the following meanings:

24.1. "Bureau" refers to the Bureau of Patents;

24.2. "Director" refers to the Director of Patents;

24.3. "Examiner" refers to the patent examiner;

24.4, "Patent application" or "application" refers to an application for a patent for an
invention except in Chapters IX and X where application means an application
for a utility model and an industrial design or layout-design (topography) of
integrated circuit, respectively;

24.5. "Priority date" refers to the date of filing of the foreign application for the same
invention referred to in Section 35 of this Act;

24.6. “Provisional Patent Application” refers to an application that serves to establish
an early filing date with the view of filing a later regular patent application.
The provisional application contains provisional description, at
least one provisional claim, drawings and sequence listings, if applicable.
Provisional application will not be examined nor get published, automatically
withdrawn or abandoned after twelve (12) months and cannot be the subject of

a revival; and

23


24.7. “Regulations” means the Rules of Practice in Patent, Utility Model, and
Industrial Design or the Layout-Designs (Topographies) of Integrated Circuit
Regulations formulated by the Director of Patents and promulgated by the

Director General, whichever is applicable;

Chapter IT; PATENTABILITY

SECTION 25. Patentable Inventions. -Any technical solution of a problem in any field
of human activity which is new, involves an inventive step and is industrially
applicable shall be patentable. It may be, or may relate to, a product, or process, or

an improvement of any of the foregoing.

SECTION 26. Non-Patentable Inventions. -The following shall be excluded from
patent protection:

26.1. Discoveries, scientific theories and mathematical methods, and in the case of
drugs and medicines, the mere discovery of a new form or new property of a
Imown substance which does not result in the enhancement of the known
efficacy of that substance, or the mere discovery of any new property or new
use for a known substance, or the mere use of a known process unless such

known process results in a new product that employs at least one new reactant.

For the purpose of this clause, salts, esters, ethers, polymorphs, metabolites,
pure form, particle size, isomers, mixtures of isomers, complexes,
combinations, and other derivatives of a known substance shall be considered
to be the same substance, unless they differ significantly in properties with
regard to efficacy;

26.2. Schemes, rules and methods of performing mental acts, playing games or doing

business, and programs for computers;

24


26.3. Methods for treatment of the human or animal body by surgery or therapy and
diagnostic methods practiced on the human or animal body. This provision
shall not apply to products and composition for use in any of these methods;

26.4. Plant varieties or animal breeds or essentially biological process for the
production of plants or animals. This provision shall not apply to

microorganisms and non-biological and microbiological processes.

Provisions under this subsection shall not preclude Congress to consider the
enactment of a law providing sui generis protection of plant varieties and

animal breeds and a system of community intellectual rights protection;

26.5. Aesthetic creations; and

26,6. Anything which is contrary to public order or morality.

SECTION 27. Novelty. -An invention shall not be considered new if it forms part of a

prior art.

SECTION 28. Prior Art. -Prior art shall consist of:

28.1, Everything which has been made available to the public anywhere in the world,
before the filing date or the priority date of the application claiming the

invention; and

28.2. The whole contents of an application for a patent, utility model, or industrial
design registration, published in accordance with this Act, filed or effective in
the Philippines, with a filing or priority date that is earlier than the filing or
priority date of the application: Provided, That the application which has
validly claimed the filing date of an earlier application under Section 35 of this
‘Act, shall be prior art with effect as of the filing date of such earlier application:

25


Provided further, That the applicant or the inventor identified in both

applications are not one and the same.

SECTION 29. Non-Prejudicial Disclosure. —

29.1. The disclosure of information contained in the application during the twelve (12)

months preceding the filing date or the priority date of the application shall

not prejudice the applicant on the ground of lack of novelty if such disclosure

was made by:

a, The inventor;

b. A patent office, and the information is contained (1) in another application
filed by the inventor and should not have been disclosed by the Office, or (2)
in an application filed without the knowledge or consent of the inventor by
a third party which obtained the information directly or indirectly from the
inventor; or

c. A third party, which obtained the information directly or indirectly from

the inventor.

29.2, For the purposes of Subsection 29.1, "inventor" also means any person who, at

the filing date of application, had the right to the patent.

SECTION 30. Inventive Step. -

30.1

30.2

An invention involves an inventive step if, having regard to prior art, it is not
obvious to a person skilled in the art at the time of the filing date or priority

date of the application claiming the invention.

In the case of drugs and medicines, there is no inventive step if the invention
results from the mere discovery of a new form or new property of a known
substance which does not result in the enhancement of the known efficacy of

that substance, or the mere discovery of any new property or new use for a

26


known substance, or the mere use of a known process unless such known

process results in a new product that employs at least one new reactant.

SECTION 81. Industrial Applicability. - An invention that can be produced and used
in any industry shall be industrially applicable.

Chapter III | RIGHT TO A PATENT

SECTION 32. Right to a Patent. - The right to a patent belongs to the inventor, his
heirs, or assigns. When two (2) or more persons have jointly made an invention, the

right to a patent shall belong to them jointly.

SECTION 33. First to File Rule. - If two (2) or more persons have made the invention
separately and independently of each other, the right to the patent shall belong to the
person who filed an application for such invention, or where two or more applications
are filed for the same invention, to the applicant who has the earliest filing date or,
the earliest priority date.

SECTION 34. Inventions Created Pursuant to a Commission. —
34.1. The person who commissions the work shall own the patent, unless otherwise

provided in the contract.

34.2. In case the employee made the invention in the course of his employment

contract, the patent shall belong t

a. The employee, if the inventive activity is not a part of his regular duties
even if the employee uses the time, facilities and materials of the employer.

b. The employer, if the invention is the result of the performance of his
regularly-assigned duties, unless there is an agreement, express or implied,
to the contrary.

27


SECTION 85. Right of Priority.- An application for patent filed by any person who
has previously applied for the same invention in another country which by treaty,
convention, or law affords similar privileges to Filipino citizens, shall be considered
as filed as of the date of filing the foreign application or a provisional application filed
in the Office: Provided, That:

a. the local application expressly claims priority;

D. it is filed within twelve (12) months from the date the earliest foreign
application was filed or within twelve (12) months from the date the
provisional application was filed in the Office; and

¢. acertified copy of:

i. the foreign application together with an English translation is
filed within six (6) months from the date of filing in the
Philippines; or ii. the provisional application as filed, was

accorded a filing date, and requirements on Section 43.1 are met;
otherwise Section 44 shall apply.

Chapter IV: PATENT APPLICATION

SECTION 36. The Application. —
36.1, The patent application shall be in Filipino or English and shall contain the
following:
a. A request for the grant of a patent;
b. A description of the invention;
c. Drawings necessary for the understanding of the invention;
d. One or more claims; and

e. An abstract.

36.2. No patent may be granted unless the application identifies the inventor. If the
applicant is not the inventor, the Office may require him to submit said

authority.

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SECTION 37. The Request. - The request shall contain a petition for the grant of the
patent, the name and other data of the applicant, the inventor and the agent and the

title of the invention.

SECTION 38. Disclosure and Description of the Invention. —

38,1 Disclosure. - The application shall disclose the invention in a manner
sufficiently clear and complete for it to be carried out by a person skilled in the
art, Where the application concerns a microbiological process or the product
thereof and involves the use of a micro-organism 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 application shall be supplemented by a deposit of such material
with an international depository institution.

38.2 Description. - The Regulations shall prescribe the contents of the description.

and the order of presentation.

SECTION 39. The Claims. —
39.1. The application shall contain one (1) or more claims which shall define the
matter for which protection is sought. Bach claim shall be clear and concise,

and shall be supported by the description.

39.2 The Regulations shall prescribe the manner of the presentation of claims.

SECTION 40. The Abstract. - The abstract shall consist of a concise summary of the
disclosure of the invention as contained in the description, claims and drawings in
preferably not more than one hundred fifty (150) words. It must be drafted in a way
which allows the clear understanding of the technical problem, the gist of the solution
of that problem through the invention, and the principal use or uses of the invention.
The abstract shall merely serve for technical information.

29


SECTION 41. Unity of Invention. —

411.

41.2.

The application shall relate to one invention only or to a group of inventions
forming a single general inventive concept.

If several independent inventions which do not form a single general inventive
concept are claimed in one application, the Director may require that the
application be restricted to a single invention. A later application filed for an
invention divided out shall be considered as having been filed on the same day
as the first application: Provided, That the later application is filed within four
(4 months after the requirement to divide becomes final, or within such
additional time, not exceeding four (4) months, as may be granted: Provided
further, That each divisional application shall not go beyond the disclosure in
the initial application.

‘The fact that a patent has been granted on an application that did not comply
with the requirement of unity of invention shall not be a ground to cancel the

patent.

SECTION 42. Information Concerning Corresponding Foreign Application for Patents.
- The applicant shall, at the request of the Director, furnish him with the date and

number of any application for a patent filed by him abroad, hereafter referred to as

the "foreign application," relating to the same or essentially the same invention as

that claimed in the application filed with the Office and other documents relating to

the foreign application.

Chapter V PROCEDURE FOR GRANT OF PATENT

SECTION 43. Filing Date Requirements. —

43.1, The filing date of a patent application shall be the date of receipt by the Office

of at least the following:
a. An express or implicit indication that a Philippine patent is sought;
b. Information identifying the applicant; and

30


c. Description of the invention and at least one (1) claim in Filipino or

English.

43.2. In the case of the provisional patent application, the filing date shall be the date
of receipt by the Office of all of the following:
a, Request Form for provisional application;
b. Provisional description of the invention;
c. At least one (1) provisional claim;
4. Provisional drawings and/or sequence listings, if applicable; and

e. Payment of the prescribed fee.

43.3. If any of these elements is not submitted within the period set by the
Regulations, the application shall be considered withdrawn.

SECTION 44. According a Filing Date, - The Office shall examine whether the patent
or provisional patent application satisfies the requirements for the grant of date of
filing as provided in Section 43 hereof. If the date of filing cannot be accorded, the
applicant shalll be given an opportunity to correct the deficiencies in accordance with
the implementing Regulations. If the application does not contain all the elements
indicated in Section 43, the filing date should be that date when all the elements are
received. If the deficiencies are not remedied within the prescribed time limit, the

application shall be considered withdrawn.

SECTION 45. Formality Examination. —

45.1. After the patent application has been accorded a filing date and the required
fees have been paid on time in accordance with the Regulations, the applicant
shall comply with the formal requirements specified by Section 36 and the
Regulations within the prescribed period, otherwise the application shall be

considered withdrawn.

31


45.2. The Regulations shall determine the procedure for the re-examination and
revival of an application as well as the appeal to the Director of Patents from

any final action by the examiner.

SECTION 46. Classification and Search. -An application that has complied with the
formal requirement shall be classified and a search conducted to determine the prior
art.

SECTION 47. Publication of Patent Application. —

47.1. The patent application shall be published in the IPOPHL Gazette together with
a search document established by or on behalf of the Office citing any
documents that reflect prior art, after the expiration of eighteen (18) months
from the filing date or priority date.

47.2, After publication of a patent application, any interested party may inspect the
application documents filed with the Office.

47.3. The Director General, subject to the approval of the Secretary of Trade and
Industry, may prohibit or restrict the publication of an application, if in his
opinion, to do so would be prejudicial to the national security and interests of

the Republic of the Philippines.

SECTION 48. Confidentiality.-
48.1. Confidentiality Before Publication of a Patent Application. - A patent
application, which has not yet been published, and all related documents, shall

not be made available for inspection without the consent of the applicant.

48.2. Strict Confidentiality of Provisional Patent Application. ~ A provisional patent
application that has satisfied the requirements set forth by Sections 43 and 44
shall be kept in the strictest confidence by the Office and as such, will not be
published in the IPOPHL Gazette or in any other means of publication.

32


Provisional applications filed that are abandoned shall be destroyed and no
records of which shall be kept by the Office.

SECTION 49. Rights Conferred by a Patent Application After Publication. - The
applicant shall have all the rights of a patentee under Section 217 (Patent
Infringement) against any person who, without his authorization, exercised any of the
rights conferred under Section 75 (72) (Rights Conferred by a Patent) of this Act in
relation to the invention claimed in the published patent application, as if a patent
had been granted for that invention: Provided, That the said person had:

a. Actual knowledge that the invention that he was using was the subject matter of
a published application; or

b. Received written notice that the invention that he was using was the subject
matter of a published application being identified in the said notice by its serial
number: Provided, That the action may not be filed until after the grant of patent
on the published application pursuant to 228 of this Code.

SECTION 50. Observation by Third Parties. - Following the publication of the patent
application, any person may present observations in writing concerning the
patentability of the invention. Such observations shall be communicated to the
applicant who may comment on them. The Office shall acknowledge and put such
observations and comment in the file of the application to which it relates.

SECTION 51. Request for Substantive Examination. —

511. The application shall be deemed withdrawn unless within six (6) months from
the date of publication under Section 44, a written request to determine
whether a patent application meets the requirements of Sections 25 to 31 and
Sections 36 to 42 and the fees have been paid on time.

33


51.2 Withdrawal of the request for examination shall be irrevocable and shall not

authorize the refund of any fee.

SECTION 52. Amendment of Application. - An applicant may amend the patent
application during examination: Provided, That such amendment shall not include

new matter outside the scope of the disclosure contained in the application as filed.

SECTION 53. Grant of Patent. —

59.1. If the application meets the requirements of this Act, the Office shall grant the
patent: Provided, That alll the fees are paid on time.

53.2. If the required fees for grant and printing are not paid in due time, the
application shall be deemed to be withdrawn.

SECTION 54. ‘Refusal of the Application. -

54.1. The final order of refusal of the examiner to grant the patent shall be
appealable to the Director in accordance with this Act.

54.2. The Regulations shall provide for the procedure by which an appeal from the
order of refusal from the Director shall be undertaken.

SECTION 55. Publication Upon Grant of Patent. —

55.1. The grant of the patent together with other related information shall be
published in the IPOPHL Gazette within the time prescribed by the
Regulations.

55.2, Any interested party may inspect the complete description, claims, and
drawings of the patent on file with the Office.

SECTION 56. Contents of Patent. - The patent shall be issued in the name of the
Republic of the Philippines under the seal of the Office and shall be signed by the

34


Director, and registered together with the description, claims, and drawings, if any,
in books and records of the Office.

SECTION 57. Term of Patent. - The term of a patent shall be twenty (20) years from
the filing date of the application.

SECTION 58. Annual Fees. —

58.1.

58.2.

58.3.

To maintain the patent application or patent, an annual fee shall be paid upon
the expiration of four (4) years from the date the application was published
pursuant to Section 47 hereof, and on each subsequent anniversary of such
date. Payment may be made within three (3) months before the due date. The
obligation to pay the annual fees shall terminate should the application be

withdrawn, refused, or cancelled.

If the annual fee is not paid, the patent application shall be deemed withdrawn
or the patent considered as lapsed from the day following the expiration of the
period within which the annual fees were due. A notice that the application is
deemed withdrawn or the lapse of a patent for non-payment of any annual fee
shall be published in the IPOPHL Gazette and the lapse shall be recorded in
the Register of the Office.

‘A grace period of six (6) months shall be granted for the payment of the annual

fee, upon payment of the prescribed surcharge for delayed payment.

SECTION 59. Surrender of Patent. —

59.1.

The owner of the patent, with the consent of all persons having grants or
licenses or other right, title or interest in and to the patent and the invention
covered thereby, which have been recorded in the Office, may surrender the
patent or any claim or claims forming part thereof to the Office for cancellation.

35


59.2.

59.3.

‘A person may notify the Office opposing the surrender of a patent under this
section, in which case, the Bureau shall notify the proprietor of the patent and

determine the question.

If satisfied that the patent may properly be surrendered, the Office may accept
the offer to surrender and, as from the day when notice of its acceptance is
published in the IPOPHL Gazette, the patent shalll cease to have effect, but no
action for infringement shall lie and no right of compensation shall accrue for
any use of the patented invention before that day for the services of the

government.

SECTION 60. Changes in Patents. -

60.1. The owner of a patent shall have the right to request the Bureau to make the

60.2.

60.3.

changes in the patent in order to:

a. Limit the extent of the protection conferred by it;

b. Correct obvious mistakes or to correct clerical errors; and

©. Correct mistakes or errors, other than those referred to in letter (b), made
in good faith: Provided, That where the change would result in a broadening
of the extent of protection conferred by the patent, no request may be made
after the expiration of two (2) years from the grant of a patent and the
change shall not affect the rights of any third party which has relied on the
patent, as published.

No change in the patent shall be permitted under this section, where the
change would result in the disclosure contained in the patent going beyond the

disclosure contained in the application filed.

If, and to the extent to which the Office changes the patent according to this
section, it shall publish the same.

36


SECTION 61. Form and Publication of Amendment. -An amendment or
correction of a patent shall be accomplished by a certificate of such amendment or
correction, authenticated by the seal of the Office and signed by the Director, which
certificate shall be attached to the patent. Notice of such amendment or correction
shall be published in the IPOPHL Gazette and copies of the patent kept or furnished
by the Office shall include a copy of the certificate of amendment or correction.

Chapter VI

QECANCELLATION OF PATENTS AND:;SUBSTITUTION OF PATENTEE
SECTION 62. Cancellation of Patents. —

62.1. Any interested person may, upon payment of the required fee, petition to cancel
the patent or any claim thereof, or parts of the claim, on any of the following
grounds:

a. The invention is non-patentable pursuant to Section 26 of this Act;

b. That what is claimed as the invention is not new, does not involve an
inventive step, or is not industrially applicable; or

c. That the patent does not disclose the invention in a manner sufficiently

clear and complete for it to be carried out by any person skilled in the art.

62.2. Where the grounds for cancellation relate to some of the claims or parts of the
claim, cancellation may be effected to such extent only.

SECTION 68. Requirement of the Petition. - The petition for cancellation shall be in
writing, verified by the petitioner or by any person in his behalf who knows the facts,
specify the grounds upon which it is based, include a statement of the facts to be relied
upon, and filed with the Office. Copies of printed publications or of patents of other
countries, and other supporting documents mentioned in the petition shall be
attached thereto, together with the translation thereof in English, if not in the

English language.

37


SECTION 64. Notice of Hearing. - Upon the filing of a petition for cancellation, the
Director of Legal Affairs shall forthwith serve notice of the filing thereof upon the
patentee and all persons having grants or licenses, or any other right, title or interest
in and to the patent and the invention covered thereby, as appears of record in the
Office, and of notice of the date of hearing thereon on such persons and the petitioner.
Notice of the filing of the petition shall be published in the IPOPHL Gazette.

SECTION 65. Committee of Three. - In cases involving highly technical issues, on
motion of any party, the Director of Legal Affairs may order that the petition be heard
and decided by a committee composed of the Director of Legal Affairs as chairman
and two (2) members who have the experience or expertise in the field of technology
to which the patent sought to be cancelled relates. The decision of the committee shall
be appealable to the Director General.

The Director General may constitute a Committee of Three with a different

composition for appealed cases.

SECTION 66. Cancellation of the Patent by the Committee of Three. —
66.1. If the Committee finds that a case for cancellation has been proved, it shall order

the patent or any specified claim or claims thereof cancelled.

66.2. If the Committee finds that, taking into consideration the amendment made by
the patentee during the cancellation proceedings, the patent and the invention
to which it relates meet the requirement of this Act, it may decide to maintain
the patent as amended: Provided, That the fee for printing of a new patent is
paid within the time limit prescribed in the Regulations.

66.3. If the fee for the printing of a new patent is not paid in due time, the patent
should be revoked.

38


66.4. If the patent is amended under Subsection 66.2 hereof, the Bureau shall, at the
same time as it publishes the mention of the cancellation decision, publish the
abstract, representative claims and drawings indicating clearly what the

amendments consist of.

SECTION 67. Effect of Cancellation of Patent or Claim. -The rights conferred by the
patent or any specified claim or claims cancelled shall terminate. Notice of the
cancellation shall be published in the IPO Gazette. Unless restrained by the Director
General, the decision or order to cancel by Director of Legal Affairs shall be

immediately executory even pending appeal.

EMEDIES OF A PERSON WITH A RIGHT TO
A PATENT

Chapter VIL

SECTION 68. Remedy of the True and Actual Inventor or a Person having the Right to
a Patent, - A person who was deprived of the patent or the right to file a patent
application may file an action with the court or with the Bureau of Legal Affairs for
a declaration as the true and actual inventor, or as a person having the right to a

patent or to file a patent application.

SECTION 69. Effect of Declaration as the True and Actual Inventor or a Person Having
the Right to a Patent. - A person declared by final order or decision of the court or by
the Bureau of Legal Affairs to be the true and actual inventor or to have the right to
the patent or to file a patent application may, within three (8) months after the
decision has become final and executory, notify the Bureau of Patents of any or more
applicable options, namely:

a. Prosecute the application as his own in place of the applicant;

b. File a new patent application in respect of the same invention: Provided, That the

filing or priority date of the old application is retained;

c. Request that the application be rejected; or

39


a. Seek cancellation of the patent, or to be substituted as patentee, if one has already
been issued.

In case of fraud, the court or Bureau of Legal Affairs may award actual and other

damages in favor of the true and actual inventor or person having the right to a

patent, if warranted by the circumstances.

SECTION 70. Publication of the Court Order. -The court shall furnish the Office a
copy of the order or decision referred to in Section 69, which shall be published in the
IPO Gazette within three (3) months from the date such order or decision became
final and executory, and shall be recorded in the register of the Office.

SECTION 71. Time to File Action. - The actions indicated in Sections 68and 69 may

be filed at any time but not later than one (1) year from the date of publication of the
grant.

Chapter VIII

IGHTS OF PATENTEES

SECTION 72. Rights Conferred by Patent. —
72.1. A patent shall confer on its owner the following exclusive rights:

a. Where the subject matter of a patent is a product, to restrain, prohibit and
prevent any unauthorized person or entity from making, using, offering for
sale, selling or importing that product;

b. Where the subject matter of a patent is a process, to restrain, prevent or
prohibit any unauthorized person or entity from using the process, and from
manufacturing, dealing in, using, selling or offering for sale, or importing

any product obtained directly or indirectly from such process.

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


SECTION 73. Limitations of Patent Rights. -The owner of a patent has no right to
prevent third parties from performing, without his authorization, the acts referred to

in Section 73 hereof in the following circumstances:

73.1.

73.2.

73.3.

73.4.

Using a patented product which has been put on the market in the Philippines
by the owner of the product, or with his express consent, insofar as such use is
performed after that product has been so put on the said market: Provided,
‘That with regard to drugs and medicines, the limitation on patent rights shall
apply after a drug or medicine has been introduced in the Philippines or
anywhere else in the world by the patent owner, or by any party authorized to
use the invention: Provided, further, That the right to import the drugs and
medicines contemplated in this section shall be available to any government

agency or any private third party;

Where the act is done privately and on a non-commercial scale or for a
noncommercial purpose: Provided, That it does not significantly prejudice the

economic interests of the owner of the patent;

‘Where the act consists of making or using exclusively for experimental use of
the invention for scientific purposes or educational purposes and such other

activities directly related to such scientific or educational experimental use;

In the case of drugs and medicines, where the act includes testing, using,
making or selling the invention including any data related thereto, solely for
purposes reasonably related to the development and submission of information
and issuance of approvals by government regulatory agencies required under
any law of the Philippines or of another country that regulates the
manufacture, construction, use or sale of any product without prejudice to the
protection of the data submitted by the original patent holder from unfair
commercial use provided in Article 39.3 of the Agreement on Trade-Related

a


73.5.

73.6.

Aspects of Intellectual Property Rights (TRIPS Agreement) and the
appropriate rules and regulations;

Where the act consists of the preparation for individual cases, in a pharmacy
or by a medical professional, of a medicine in accordance with a medical

prescription or acts concerning the medicine so prepared; and

Where the invention is used in any ship, vessel, aircraft, or land vehicle of any
other country entering the territory of the Philippines temporarily or
accidentally: Provided, That such invention is used exclusively for the needs of
the ship, vessel, aircraft, or land vehicle and not used for the manufacturing of
anything to be sold within the Philippines.

SECTION 74. Prior User. —

74.1.

74.2.

Notwithstanding Section 73 hereof, any prior user, who, in good faith was using
the invention or has undertaken serious preparations to use the invention in
an enterprise or business owned by such prior user, before the filing date or
priority date of the application on which a patent is granted, shall have the
right to continue the use thereof as envisaged in such preparations within the

territory where the patent produces its effect.

The right of the prior user may only be transferred or assigned together with
the enterprise or business, or with that part of the enterprise or business in

which the use or preparations for use have been made.

SECTION 75. Use of Invention by Government. —

75.1. A Government agency or third person authorized by the Government may exploit

the invention even without agreement of the patent owner where:

42


a. The public interest, in particular, national security, nutrition, health or the
development of other sectors, as determined by the appropriate agency of
the government, so requires; or

b. 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

c. In the case of drugs and medicines, there is a national emergency or other
circumstance of extreme urgency requiring the use of the invention; or

d. In the case of drugs and medicines, there is a public non-commercial use of
the patent by the patentee, without satisfactory reason; or

e. In the case of drugs and medicines, the demand for the patented article in
the Philippines is not being met to an adequate extent and on reasonable
terms, as determined by the Secretary of the Department of Health.

75.2. Unless otherwise provided herein, the use by the Government, or third person
authorized by the Government shall be subject, where applicable, to the
following provisions:

a. In situations of national emergency or other circumstances of extreme
urgency as provided under Section 75.1 (¢), the right holder shall be notified
as oon as reasonably practicable;

b. In the case of public non-commercial use of the patent by the patentee,
without satisfactory reason, as provided under Section 75.1 (@), the right
holder shall be informed promptly: Provided, That, the Government or third
person authorized by the Government, without making a patent search,
knows or has demonstrable ground to know that a valid patent is or will be
used by or for the Government;

c. Ifthe demand for the patented article in the Philippines is not being met to
an adequate extent and on reasonable terms as provided under Section 75.1
(©), the right holder shall be informed promptly;

a. The scope and duration of such use shall be limited to the purpose for which
it was authorized;

43


e. Such use shall be non-exclusive;
f. The right holder shall be paid adequate remuneration in the circumstances

of each case, taking into account the economic value of the authorization;
and

g. The existence of a national emergency or other circumstances of extreme
urgency, referred to under Section 75.1 (©), shall be subject to the
determination of the President of the Philippines for the purpose of
determining the need for such use or other exploitation, which shall be

immediately executory.

75.8, All cases arising from the implementation of this provision shall be cognizable
by courts with appropriate jurisdiction provided by law.

No court, except the Supreme Court of the Philippines, shall issue any temporary

restraining order or preliminary injunction or such other provisional remedies

that will prevent its immediate execution.

SECTION 76. Extent of Protection and Interpretation of Claims. —
76.1. The extent of protection conferred by the patent shall be determined by the
claims, which are to be interpreted in the light of the description and drawings.

76.2. For the purpose of determining the extent of protection conferred by the patent,
due account shall be taken of elements which are equivalent to the elements
expressed in the claims, so that a claim shall be considered to cover not only all

the elements as expressed therein, but also equivalents.

SECTION 77. Process Patents; Burden of Proof. - If the subject matter of a patent is
a process for obtaining a product, any identical product shall be presumed to have
been obtained through the use of the patented process if the product is new or there
_is substantial likelihood that the identical product was made by the process and the
owner of the patent has been unable despite reasonable efforts, to determine the

process actually used. In ordering the defendant to prove that the process to obtain

44


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.

SECTION 78. Patent Found Invalid May be Cancelled. -In an action for infringement,
if the court shall find the patent or any claim to be invalid, it shall cancel the same,
and the Director of Legal Affairs upon receipt of the final judgment of cancellation by
the court, shall record that fact in the register of the Office and shall publish a notice
to that effect in the IPO Gazette.

SECTION 79, Assessor in Infringement Action. -

79.1, Two (2) or more assessors may be appointed by the court. The assessors shall
be possessed of the necessary scientific and technical knowledge required by
the subject matter in litigation. Either party may challenge the fitness of any

assessor proposed for appointment.

79.2. Each assessor shall receive a compensation in an amount to be fixed by the
court and advanced by the complaining party, which shall be awarded as part
of his costs should he prevail in the action.

Chapter IX REGISTRATION OF UTILITY MODELS

SECTION 80. Applicability of Provisions Relating to Patents. ~
80.1. Subject to Section 81, the provisions governing patents shall apply, mutatis
mutandis, to the registration of utility models.

80.2. Where the right to a patent conflicts with the right to a utility model registration
in the case referred to in Section 33, the said provision shall apply
as if the word "patent" were replaced by the words "patent or utility model

registration."

SECTION 81. Special Provisions Relating to Utility Models. —

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81.1, An invention qualifies for registration as a utility model if it is new and
industrially applicable. Section 25, "Patentable Inventions’, shall apply except

the reference to inventive step as a condition of protection.

81.2. Sections 46, 47, 48, 49, 50, 51 and 52 shall not apply in the case of applications
for registration of a utility model: Provided, That applications for registration
shall be published. Third parties may file with the Director of Patents a swom
adverse information citing grounds or information that the utility model is
nonregistrable. The Director of Patents shall decide whether or not to register
the utility model application based on information or registrability report that

the application does not comply with Section 80.

81.3. A utility model registration shall expire, without any possibility of renewal, after
seven years from the filing date of the application.

81.4, In proceedings under Sections 62, 63, 64 and 65, the utility model registration

shall be cancelled on the following grounds:

a, That the claimed invention does not qualify for registration as a utility
model and does not meet the requirements of registrability, in particular
having regard to Subsection 81.1 and Sections 26, 27, 28 and 31;

b. That the description and the claims do not comply with the prescribed
requirements;

¢. That any drawing which is necessazy for the understanding of the invention
has not been furnished;

d. That the owner of the utility model registration is not the inventor or his

successor in title.

SECTION 82. Conversion of Patent Applications or Applications for Utility
Model Registration. -
82.1. At any time before the grant of a patent, an applicant may, upon payment of

the prescribed fee, convert his application into an application for registration

46


of a utility model, which shall be accorded the filing date of the initial
application. An application may be converted only once.

82.2, At any time before the grant or refusal of a utility model registration, an
applicant for a utility model registration may, upon payment of the prescribed
fee, convert his application into a patent application, which shall be accorded
the filing date of the initial application.

SECTION 83. Filing of Parallel Applications. -An applicant may file two (2)
applications for the same subject, one for registration of utility model and the other
for the grant of an invention patent whether simultaneously or consecutively, within
one year from the filing of the first application. The processing of the applications
shall proceed independently: Provided, That once the patent is granted to the
invention application, the utility model application or registration shall be cancelled
in accordance with the rules promulgated by the Office. In case of provisional patent
application, the applicant cannot file simultaneously or consecutively a utility model

application until the provisional patent application proceeds to a patent application.

Chapter X INDUSTRIAL DESIGNS

SECTION 84. Definition. ~An Industrial Design is any composition of lines or colors
or any three-dimensional form, whether or not associated with lines or colors:
Provided, That such composition or form gives a special appearance to and can serve

as pattern for an industrial product or handicraft.

Parts or components of such product or handicraft may be subject for industrial
design registration independent of the protection given to industrial designs of such
product or handicraft as a whole, provided, that such parts or components meet the

requirements for protection of industrial designs.

SECTION 85. Conditions for Protection. —

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85.1, Independently created industrial designs that are new or original may be
protected. The industrial design may have an ornamental feature or element.
(n)

85.2. Industrial designs dictated essentially by technical or functional considerations
to obtain a technical result or those that are contrary to public order, health or
morals shall not be protected.

SECTION 86. Several Industrial Designs in One Application. - Two (2) or more
industrial designs may be the subject of the same application: Provided, That they
relate to the same sub-class of the International Classification or to the same set or
composition of articles. For this purpose, a “set of articles” which is customarily sold
or used together as a set may be made a proper subject matter in one application for
design registration, provided that each article is of, or has, the same design or a

substantially similar design.

SECTION 87. Application of Other Sections and Chapters. —

87.1. The following provisions relating to patents shall apply mutatis mutandis to an
industrial design registration:

Section 27 - Novelty

Section 28 - Prior art: Provided, That the disclosure is contained in
printed documents or in any tangible form;

Section 29 - Non-prejudicial Disclosure;

Section 32 - Right to a Patent;

Section 33 - First to File Rule;

Section 34 - Inventions Created Pursuant to a Commission;

Section 35 -

Right of Priority: Provided, That the application for
industrial design shall be filed within six (6) months from
the earliest filing date of the corresponding foreign

application;

Section 205- Appointment of Agent or Representative! Representation;
Address for Service.

Section 64 - Refusal of the Application;

48,


Sections 59,208and 60 - Surrender, Correction of and Changes in Patent;

Chapter VII - Remedies of a Person with a Right to Patent;

Chapter VIII and Part VI Chapter IlI-Rights of Patentees and Infringement of
Patents; and

Part VI, Chapter II- Assignment and Transmission of Rights

87.2. If the essential elements of an industrial design which is the subject of an
application have been obtained from the creation of another person. without his

consent, protection under this Chapter cannot be invoked against the injured

party.
SECTION 88. The Term of Industrial Design Registration. -

88.1. The registration of an industrial design shall be for a period of five (6) years
from the filing date of the application.

88.2, The registration of an industrial design may be renewed for not more than two

(2) consecutive periods of five (5) years each, by paying the renewal fee.

88.3, The renewal fee shall be paid within twelve (12) months preceding the expiration
of the period of registration. However, a grace period of six (6) months shall be
granted for payment of the fees after such expiration, upon payment of a

surcharge.

88.4, The Regulations shall fix the amount of renewal fee, the surcharge and other

requirements regarding the recording of renewals of registration.

SECTION 89. Cancellation of Design Registration. —

89.1. At any time during the term of the industrial design registration, any person
upon payment of the required fee, may petition the Director of Legal Affairs to
cancel the industrial design on any of the following grounds:

49


a. If the subject matter of the industrial design is not registrable within the
terms of Sections 84 and 85;

b. Ifthe subject matter is not new; or

c. Ifthe subject matter of the industrial design extends beyond the content of
the application as originally filed.

89.2. Where the grounds for cancellation relate to a part of the industrial design,

cancellation may be effected to such extent only. The restriction may be effected
in the form of an alteration of the effected features of the design.

Chapter XI LAYOUT-DESIGNS (TOPOGRAPHIES) OF INTEGRATED

CIRCUITS

SECTION 90. Definition of Terms. -

90.1. Integrated Circuit means a product, in its final form, or an intermediate form,

90.2.

in which the elements, at least one of which is an active element and some or
all of the interconnections are integrally formed in and/or on a piece of

material, and which is intended to perform an electronic function; and

Layout-Design is synonymous with “Topography” and means the
threedimensional disposition, however expressed, of the elements, at least one
of which is an active element, and of some or all of the interconnections of an
integrated circuit, or such a three-dimensional disposition prepared for an

integrated circuit intended for manufacture.

SECTION 91. Conditions for Protection. —

91.1. Only layout-designs of integrated circuits that are original shall benefit from

protection under this Act. A layout-design shall be considered original if it is
the result of its creator's own intellectual effort and is not commonplace among
creators of layout-designs and manufacturers of integrated circuits at the time

of its creation.

50


91.2. A layout-design consisting of a combination of elements and interconnections
that are commonplace shall be protected only if the combination, taken as a

whole, is original.

SECTION 92. Application of Other Sections and Chapters. - The following provisions
relating to patents shall apply mutatis mutandis to a layout-design of integrated
circuits registration:

Section 32 - Right to a Patent;

Section 33 - First to File Rule;

Section 34- Inventions Created Pursuant to a Commission;

Section 205- Appointment of Agent or Representative/Representations;
Section 59 - Surrender of Patent;

Section 207- Correction of Mistakes of the Office;

Section 208 - Correction of Mistakes in the Application;

Section 60 - Changes in Patents;

Section 61- Form and Publication of Amendment;

Chapter VII - Remedies of a Person with a Right to Patent;

Chapter VITI and Part VII Chapter III- Rights of Patentees and Infringement
of Patents: Provided, That the layout-design rights and
limitation of layout-design rights provided hereunder shall
govern:

Part VI, Chapter II- Assignment and Transmission of Rights

SECTION 93. Rights Conferred on the Owner of a Layout-Design Registration. - The

owner of a layout-design registration shall enjoy the following rights:

93.1. To reproduce, whether by incorporation in an integrated circuit or otherwise, the
registered layout-design in its entirety or any part thereof, except the act of
reproducing any part that does not comply with the requirement of originality;

and

51


93.2. To sell or otherwise distribute for commercial purposes the registered
layoutdesign, an article or an integrated circuit in which the registered layout-

design is incorporated.

SECTION 94. Limitations of Layout Rights. - The owner of a layout design has no
right to prevent third parties from reproducing, selling or otherwise distributing for

commercial purposes the registered layout-design in the following circumstances:

94.1. Reproduction of the registered layout-design for private purposes or for the sole
purpose of evaluation, analysis, research or teaching;

94.2, Where the act is performed in respect of a layout-design created on the basis of
such analysis or evaluation and which is itself original in the meaning as
provided herein;

94,3. Where the act is performed in respect of a registered lay-out-design, or in respect
of an integrated circuit in which such a layout-design is incorporated, that has
been put on the market by or with the consent of the right holder;

94.4, In respect of an integrated circuit where the person performing or ordering such
an act did not know and had no reasonable ground to know when acquiring the
integrated circuit or the article incorporating 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
layout-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 equivalent 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; or

94.5. Where the act is performed in respect of an identical layout-design which is

original and has been created independently by a third party.

SECTION 95. Term of Protection of Layout-Design Registration. - Registration of a
layout-design shalll be valid for a period of ten (10) years, without renewal, and such

52


validity to be counted from the date of commencement of the protection accorded to
the layout-design. The protection of a layout-design under this Act shall commence:

95.1. On the date of the first commercial exploitation, anywhere in the world, of the
layout-design by or with the consent of the right holder: Provided, That an
application for registration is filed with the Office within two (2) years from

such date of first commercial exploitation; or

95.2. On the filing date accorded to the application for the registration of the
layoutdesign if the layout-design has not been previously exploited

commercially anywhere in the world.

Chapter XII COMMON PROVISIONS FOR INDUSTRIAL DESIGN AND
LAYOUTDESIGN

SECTION 96. Contents of the Application. —

96.1. Every application for registration of an industrial design or layout-design shall

contain:

a, A request for registration of the industrial design or layout-design;

b. Information identifying the applicant;

¢. An indication of the kind of article of manufacture or handicraft to which
the industrial design or layout-design shall be applied;

4. A representation of the article of manufacture or handieraft by way of
drawings, photographs or other adequate graphic representation of the
industrial design or of the layout-design as applied to the article of
manufacture or handicraft which clearly and fully discloses those features

for which protection is claimed; and

53


e. The name and address of the creator, or where the applicant is not the
creator, a statement indicating the origin of the right to the industrial
design or layout-design registration.

96.2. The application may be accompanied by a specimen of the article embodying the

industrial design or layout-design and shall be subject to the payment of the

prescribed fee.

SECTION 97. Formality Examination. —

97.1.

97.2.

97.3.

The Office shall accord as the filing date the date of receipt of the application
containing indications allowing the identity of the applicant to be established
and a representation of the article embodying the industrial design or the
layout-design or a pictorial representation thereof.

If the application does not meet these requirements, the filing date should be
that date when all the elements specified in Section 96 are filed or the mistakes
corrected. Otherwise if the requirements are not complied within the

prescribed period, the application shall be considered withdrawn.

‘After the conduct of a formality examination and upon full compliance with the
prescribed formality requirements, the application for registration shall be
published. Third parties may file with the Director of Patents adverse
information citing grounds or information that the design is not new or not
yegistrable. The Director shall decide whether or not to grant the industrial

design registration based on such information.

An applicant has the option to file a request for deferred publication
simultaneously with the filing of the application or at any time prior to
publication date, The maximum period allowed for the deferred publication of
an Industrial Design application shall be thirty (30) months from the filing
date or priority date of the application. In case the request for the deferred

54


publication is made after the filing of the application, the allowable period for
the deferred publication shall be the remaining time from the allowed thirty
(30) months deferred publication period. The applicant/s may request for a
specific time for this Office to publish the application, provided it does not go
beyond the allowed deferment period of thirty (30) months.

SECTION 98. Registration. —

98.1.

The conditions referred to in Sections 84 and85 are deemed fulfilled in the
absence of adverse information or where an adverse information was resolved
by the Director in favor of the applicant, the Director shall issue the
registration of the industrial design or layout-design; otherwise, it shall refuse
the application.

‘The Director may decide whether or not to register the industrial design or layout-

98.2.

98.3.

98.4,

design application based on information or registrability report that the
application does not comply with Sections 84 and 85.

The form and contents of an industrial design or layout-design certificate shall
be established by the Regulations: Provided, That the name and address of the

creator shall be mentioned in every case.

Registration shall be published in the form and within the period fixed by the
Regulations.

The Office shall record in the register any change in the identity of the
proprietor of the industrial design or layout-design or his representative, if
proof thereof is furnished to it. A fee shall be paid, with the request to record
the change in the identity of the proprietor. If the fee is not paid, the request
shall be deemed not to have been filed. In such case, the former proprietor and
the former representative shall remain subject to the rights and obligations as
provided in this Act.

55


98.5, Anyone may inspect the Register and the files of registered industrial designs

or layout-designs including the files of cancellation proceedings.

PART IV INNOVATION AND LICENSING Chapter I DEFINITIONS

SECTION 99. Definition of Terms. — As used in Part IV:

99.1. “Bureau” means the Bureau of Innovation and Business Development; (n)
99.2. “Commercialization” as a form of utilization, refers to the process of deriving

economic gain from a technology, such as but not limited to the creation of a
spin-off company, or through licensing, or the sale of the technology and/or
intellectual property rights;

993. “Innovation and Technology Support Offices” refer to patent libraries and
research-related institutions, that facilitate the promotion, creation,
protection, commercialization, and utilization of intellectual property;

99,4,

ES

“Licensing” refers to a contract or agreement wherein an intellectual property
rights owner and another who is authorized to use such rights in exchange for
an agreed payment, fee, or royalty;

995, “Utilization” refers to the use of intellectual property or intellectual property

rights, whether or not for commercial use.

Chapter II PROMOTING CREATION, INNOVATION, UTILIZATION,
AND COMMERCIALIZATION OF INTELLECTUAL PROPERTY

SECTION 100. Stimulating Innovation. — The Bureau shall implement policies and
programs to promote and support innovation through, but not limited to the following:
100.1. Capacity building on _— intellectual property management

and commercialization;

100.2. Technical assistance on valuation of intellectual property;

56


100.3. Assistance to inventors and micro, small, and medium enterprises in getting
support for research and development, management, and commercialization of

their intellectual property;

100.4. Enter into partnerships with other agencies, institutions, organizations, or
entities, public or private, covering intellectual property promotion, creation,

protection, commercialization, and utilization; and

100.5. Establishment of Innovation and Technology Support Offices in research and
development institutions, state universities and colleges, other higher
educational institutions, technical-vocational institutions, and other relevant

public or private institutions.

SECTION 101. Adoption of Intellectual Property (IP) Policies. - Schools universities,
research and development institutions and public entities shall adopt intellectual
property policies and programs. Similarly, private entities are encouraged to adopt
intellectual property policies. These policies may be developed in relation to licensing
agreements entered into for purposes of implementing the state policies under this
Act.

CHAPTER III VOLUNTARY LICENSING
SECTION 102. Voluntary License Contract. -
102.1. To encourage the transfer and dissemination of technology, prevent or control
practices and conditions that may in particular cases constitute an abuse of
intellectual property rights having an adverse effect on competition and trade,

all technology transfer arrangements shall comply with the provisions of this
Chapter.

57


102.2. Prohibited Clauses. - Except in cases under Section 102.4, the following
provisions shall be deemed prima facie to have an adverse effect on competition
and trade:

a. Those which impose upon the licensee the obligation to acquire from a
specific source capital goods, intermediate products, raw materials, and
other technologies, or of permanently employing personnel indicated by the
licensor: Provided, That such imposition is essential for maintaining the
quality of the products or services produced or rendered under the
agreements: Provided further, That this does not constitute anticompetitive
behavior;

b. Those pursuant to which the licensor reserves the right to fix the sale or
resale prices of the products manufactured on the basis of the license;

c. Those that contain restrictions regarding the volume and structure of
production;

4. Those that prohibit the use of competitive technologies in a non-exclusive
technology transfer agreement;

e. Those that establish a fulll or partial purchase option in favor of the
licensor;

£. Those that obligate the licensee to transfer for free to the licensor the
inventions or improvements that may be obtained through the use of the
licensed technology;

g. Those that require payment of royalties to the owners of patents for patents
which are not used;

h. Those that prohibit the licensee to export the licensed product unless
justified for the protection of the legitimate interest of the licensor such as
exports to countries where exclusive licenses to manufacture and/or
distribute the licensed product(s) have already been granted;

i. Those which restrict the use of the technology supplied after the expiration
of the technology transfer arrangement, except in cases of early termination
of the technology transfer arrangement due to reason(s) attributable to the
licensee;

58


j. Those which require payments for patents and other industrial property
rights after their expiration, termination arrangement;

k. Those which require that the technology recipient shall not contest the
validity of any of the patents of the technology supplier;

1. Those which restrict the research and development activities of the licensee

designed to absorb and adapt the transferred technology to local conditions

or to initiate research and development programs in connection with new
products, processes or equipment;

m. Those which prevent the licensee from adapting the imported technology to
local conditions, or introducing innovation to it, as long as it does not impair
the quality standards prescribed by the licensor;

n, Those which exempt the licensor for liability for non-fulfillment of his
responsibilities under the technology transfer arrangement and/or liability
arising from third party suits brought about by the use of the licensed
product or the licensed technology; and

0. Other clauses with equivalent effects.

1023. Mandatory Provisions. - The following provisions shall be included in voluntary
license contracts:

a, That the laws of the Philippines shall govern the interpretation of the same
and in the event of litigation or any other mode of dispute resolution, the
venue shall be the proper court in the place where the licensee has its
principal office;

b. Continued access to improvements in techniques and processes related to
the technology shall be made available during the period of the technology
transfer arrangement;

c. The Philippine taxes on all payments relating to the technology transfer
arrangement shall be borne by the licensor; and

d. The technology transfer arrangement shall provide for arbitration or any
other mode of alternative dispute resolution including mediation, which
shall be conducted in a manner agreed upon by the parties. In the absence

59


of any agreement by the parties, the Rules on Alternative Dispute
Resolution promulgated by the Office shall apply. In all cases, the venue
shall be the Philippines or in any neutral third country.

102.4. Exceptional Cases. - The Bureau of Innovation and Business Development may
grant exemption from any of the above requirements, after evaluation thereof
in a case by case basis, in exceptional or meritorious cases where substantial

benefits will accrue to the economy, such as:

high technology content;

b. increase in foreign direct investment;

c. employment generation;

d. regional dispersal of industries and/or substitution with or use of local
raw materials; or

e. in the case of Board of Investments, registered companies with pioneer

status.

SECTION 103. Effect of Non-Registration with the Bureau of Innovation and Business
Development, “Technology transfer arrangements that conform with the provisions of
Sections 102.2 and 102.8 need not be registered with the Bureau of Innovation and
Business Development. Non-conformance with any of the said provisions however,
shall automatically render the technology transfer arrangement unenforceable,
unless said technology transfer arrangement is approved and

registered with the Bureau under the provisions of Section 102.4 on exceptional cases.

SECTION 104. Rights in a Licensing Agreement. —

104.1. Rights of Licensor. - In the absence of any provision to the contrary in the
technology transfer arrangement, the grant of a license shall not prevent the
licensor from granting further licenses to third person nor from exploiting the
subject matter of the technology transfer arrangement.

60


1042. Rights of Licensee. - The licensee shall be entitled to exploit the subject matter
of the technology transfer arrangement during the whole term of the

technology transfer arrangement.

SECTION 105. License Contracts. —

105.1 Any license contract concerning the registration of a mark, or an application
therefor, shall provide for effective control by the licensor of the quality of the
goods or services of the licensee in connection with which the mark is used. If
the license contract does not provide for such quality control, or if such quality

control is not effectively carried out, the license contract shall not be valid.

105.2 A license contract shall be submitted to the Office which shalll keep its contents
confidential but shall record it and publish a reference thereto. A license
contract shall have no effect against third parties until such recording is
effected. The Regulations shall fix the procedure for the recording of the license
contract.

SECTION 106. Jurisdiction to Settle Disputes on Royalties. -The Director of the
Bureau of Innovation and Business Development shall exercise quasi-judicial
jurisdiction in the settlement of disputes between parties to a technology transfer
arrangement arising from technology transfer payments, including the fixing of
appropriate amount or rate of royalty.

Chapter IV 3;COMPULSORY LICENSING

SECTION 107. Grounds for Compulsory Licensing. - The Director General may grant
a license to exploit a patented invention, even without the agreement of the patent
owner, in favor of any person who has shown his capability to exploit the invention,
under any of the following circumstances:

107.1. National emergency or other circumstances of extreme urgency;

61


107.2. 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;

107.8. 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;

107.4. In case of public non-commercial use of the patent;

107.5. 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; or

107.6. Where the demand for patented drugs and medicines is not being met to an
adequate extent and on reasonable terms, as determined by the Secretary of

the Department of Health.

SECTION 108. Period for Filing a Petition for a Compulsory License. —

108.1. A compulsory license may not be applied for on the ground stated in Subsection
107.5 before the expiration of a period of four (4) years from the date of filing
of the application or three (8) years from the date of the patent whichever

period expires later.

108.2. A compulsory license which is applied for on any of the grounds stated in
Subsections 107.2, 107.8, 107.4, 107.6 and Section 111 may be applied for at
any time after the grant of the patent.

SECTION 109. Requirement to Obtain a License on Reasonable Commercial Terms. ~
109.1. The license will only be granted after the petitioner has made efforts to obtain
authorization from the patent owner on reasonable commercial terms and
conditions but such efforts have not been successful within a reasonable period

of time.

62


109.2.

109.3.

109.4.

109.5.

The requirement under Subsection 109.1 shall not apply in any of the following

cases:

a. Where the petition for compulsory license seeks to remedy a practice
determined after judicial or administrative process to be anti-competitive;

b. In situations of national emergency or other circumstances of extreme
urgency;

c. In cases of public non-commercial use; and

4. In cases where the demand for the patented drugs and medicines in the
Philippines is not being met to an adequate extent and on reasonable terms,

as determined by the Secretary of the Department of Health.

In situations of national emergency or other circumstances of extreme urgency,

the right holder shall be notified as soon as reasonably practicable.

In the case of public non-commercial use, where the government or contractor,
without making a patent search, knows or has demonstrable grounds to know
that a valid patent is or will be used by or for the government, the right holder
shall be informed promptly.

Where the demand for the patented drugs and medicines in the Philippines is
not being met to an adequate extent and on reasonable terms, as determined
by the Secretary of the Department of Health, the right holder shall be
informed promptly.

SECTION 110. Compulsory Licensing of Patents Involving Semiconductor Technology.

-In the case of compulsory licensing of patents involving semiconductor 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 anticompetitive.

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SECTION 111. Compulsory License Based on Interdependence of Patents.- If the
invention protected by a patent, hereafter referred to as the "second patent," within
the country cannot be worked without infringing another patent, hereafter referred
to as the "first patent," granted on a prior application or benefiting from an earlier
priority, a compulsory license may be granted to the owner of the second patent to the
extent necessary for the working of his invention, subject to the following conditions:
111.1, The invention claimed in the second patent involves an important technical
advance of considerable economic significance in relation to the first patent;
111.2. The owner of the first patent shall be entitled to a cross-license on reasonable
terms to use the invention claimed in the second patent;
111.3, The use authorized in respect of the first patent shall be non-assignable
except with the assignment of the second patent; and
111.4, The terms and conditions of Sections 109, 110, 112 to 114.

SECTION 112, Form and Contents of Petition. -The petition for compulsory licensing
must be in writing, verified by the petitioner and accompanied by payment of the
required filing fee. It shall contain the name and address of the petitioner as well as
those of the respondents, the number and date of issue of the patent in connection
with which compulsory license is sought, the name of the patentee, the title of the
invention, the statutory grounds upon which compulsory license is sought, the
ultimate facts constituting the petitioner's cause of action, and the relief prayed for.

SECTION 113. Procedure for Compulsory Licensing. —

113.1. Notice of Hearing. ~ Upon filing of a petition with the Bureau of Legal Affairs,
the Director of Legal Affairs shall forthwith serve notice of the filing thereof
upon the patent owner and all persons having grants or licenses, or any other
right, title or interest in and to the patent and invention covered thereby as
appears of record in the Office, and of notice of the date of hearing thereon, on
such persons and petitioner. The resident agent or representative appointed in
accordance with Section 205 hereof, shall be bound to accept service of notice

of the filing of the petition within the meaning of this Section.


113.2,

In every case, the notice shall be published by the said Office in a newspaper
of general circulation, once a week for three (3) consecutive weeks and once in

the IPOPHL Gazette at the applicant's expense.

Recommendation to the Director General. — After the conduct of hearing and
appropriate proceedings by the Bureau of Legal Affairs, the Director of Legal
Affairs shall make the recommendation to the Director General on whether or

not to give due course to the petition for compulsory licensing.

The Office of the Director General shall review and approve the
recommendation of the Director of Legal Affairs, and shall have the authority
to uphold, in whole or part, or deny the recommendation on the petition for

compulsory license.

SECTION 114. Terms and Conditions of Compulsory License. -

114.1. The basic terms and conditions including the adequate remuneration of a

compulsory license shall be fixed by the Director General subject to the

following conditions:

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 invention is being exploited;
4. Use of the subject matter of the license shall be devoted predominantly
for the supply of the Philippine market: Provided, That this limitation
shall not apply where the grant of the license is based on the ground that
the patentee’s manner of exploiting the patent is determined by judicial

or administrative process, to be anti-competitive.

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114.2.

1143.

The license may be terminated upon proper showing that circumstances which
led to its grant have ceased to exist and are unlikely to recur: Provided, That
adequate protection shall be afforded to the legitimate interest of the licensee;

and

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

anticompetitive practice may be taken into account in fixing the amount of

remuneration.

SECTION 115. Amendment, Cancellation, Surrender of Compulsory License. ~

115.1.

115.2,

115.4.

Upon the request of the patentee or the licensee, the Director General may
amend the decision granting the compulsory license, upon proper showing of

new facts or circumstances justifying such amendment.

Upon the request of the patentee, the Director General may cancel the

compulsory license:

a, If the ground for the grant of the compulsory license no longer exists and
is unlikely to recur;

b. Ifthe licensee has neither begun to supply the domestic market nor made
serious preparation therefor; or

c. If the licensee has not complied with the prescribed terms of the license.

. The licensee may surrender the license by a written declaration submitted to

the Office.

The Director General shall cause the amendment, surrender, or cancellation in
the Register, notify the patentee, and/or the licensee, and cause notice thereof
to be published in the IPOPHL Gazette.

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SECTION 116. Licensee's Exemption from Liability. - Any person who works a
patented product, substance and/or process under a license granted under this
Chapter, shall be free from any liability for infringement: Provided however, That in
the case of voluntary licensing, no collusion with the licensor is proven. This is
without prejudice to the right of the rightful owner of the patent to recover from the

licensor whatever he may have received as royalties under the license.

Chapter V SPECIAL COMPULSORY LICENSING

SECTION 117. Procedures on Issuance of a Special Compulsory License under the

TRIPS Agreement, ~

117.1, The Director General, upon the written recommendation of the Secretary of the
Department of Health, shall, upon filing of a petition, grant a special
compulsory license for the importation of patented drugs and medicines. The
special compulsory license for the importation contemplated under this
provision shall be an additional special alternative procedure to ensure access
to quality affordable medicines and shall be primarily for domestic
consumption: Provided, That adequate remuneration shall be paid to the
patent owner either by the exporting or importing country. The compulsory
license shall also contain a provision directing the grantee of the license to
exercise reasonable measures to prevent the re-exportation of the products

imported under this provision.
The grant of a special compulsory license under this provision shall be an
exception to Sections114.1 (d) and 114.3 of this Act and shall be immediately

executory.

No court, except the Supreme Court of the Philippines, shall issue any

temporary restraining order or preliminary injunction or such other

67


provisional remedies that will prevent the grant of the special compulsory

license.

117.2. A compulsory license shall also be available for the manufacture and export of
drugs and medicines to any country having insufficient or no manufacturing
capacity in the pharmaceutical sector to address public health problems:
Provided, That, a compulsory license has been granted by such country or such
country has, by notification or otherwise, allowed importation into its
jurisdiction of the patented drugs and medicines from the Philippines in
compliance with the TRIPS Agreement.

1173. The right to grant a special compulsory license under this section shall not limit
or prejudice the rights, obligations and flexibilities provided under the
TRIPS Agreement and under Philippine laws, particularly Sections 73 (a) and
75 of this Act, as amended. It is also without prejudice to the extent to which
drugs and medicines produced under a compulsory license can be exported as
allowed in the TRIPS Agreement and applicable laws.

PART V
TRADEMARKS, SERVICE MARKS, AND TRADE NAMES

Chapter I DEFINITIONS

SECTION 118. Definitions. -As used in Part V, the following terms have the following
meanings:

118.1, "Bureau" means the Bureau of Trademarks;

1182. “Certification mark” means any sign, used or intended for use in commerce with
the owner's permission by someone other than its owner, to certify regional or
other geographic origin, material, mode of manufacture, quality, accuracy, or

other characteristics of someone’s goods or services, or that the work or labor

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118.3.

118.4,

1185.

118.6.

118.7.

118.8.

on goods or services was performed by members of a union or other

organizations;

"Collective mark" means any sign designated as such in the application for
registration and eapable of distinguishing the origin or any other common
characteristic, including the quality of goods or services of different enterprises
which use the sign under the control of the registered owner of the collective

mark;

"Director" means the Director of Trademarks;

"Examiner" means the trademark examiner;

"Mark" means any sign or any combination of signs as may be prescribed by
the Regulations, capable of distinguishing the goods (trademark) or services
(service mark) of an enterprise from that of another and may include a

stamped or marked container of goods;

"Regulations" means the Rules of Practice in Trademarks and Service Marks
formulated by the Director of Trademarks and approved by the Director

General; and

"Trade name" means the name or designation identifying or distinguishing an

enterprise.

Chapter II RIGHT TO A MARK

SECTION 119. Rights to a Mark. — Any person who intends to use or uses a mark for

goods or services may file an application for its registration. The rights in a mark

shall

be acquired through registration made validly in accordance with the provisions

of this law.

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Chapter III REGISTRABILITY

SECTION 120. _—_Registrability. -

120.1. A mark may be registered if it is distinctive. On the other hand, a mark cannot

be registered if it:

a.

Consists of matter which:

. is offensive, immoral, deceptive or scandalous, or suggests a distortion

of values;

. may disparage or falsely suggest a connection with living or dead

persons, institutions, entities, beliefs, customs, values, or national

symbols, national identity, heritage or patrimony; or

. brings any of the foregoing into contempt, disrespect, or disrepute;

Consists of the flag, coat of arms or other insignia of the Philippines or
any of its political subdivisions, or of its agencies, or of any foreign
nation, or of any foreign international organization, or any simulation

thereof;

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

surviving spouse, if any, except by written consent of the latter;

Is identical with or is confusingly similar to a registered mark belonging
to a different proprietor or a mark with an earlier filing or priority date,
in respect of the same goods or services, or closely related goods or
services; or nearly resembles a registered mark belonging to a different
proprietor or a mark with an earlier filing or priority date as to likely

deceive or cause confusion;

70


e. Is identical with, or confusingly similar to, or constitutes a translation
of a mark which is considered by the competent authority of the
Philippines as prescribed in the Regulation to be well-known
internationally or in the Philippines, whether or not it is registered here,
as being already the mark of a person other than the applicant for
registration, and used for identical or similar goods or services:
Provided, That use of the mark in relation to those goods or services
which are not similar to those with respect to which registration is
applied for and that the use of such mark in those goods and services
would indicate a connection between those goods or services, and the
owner of the well-known mark and that the interests of the owner of the
well-known mark are likely to be damaged by such use; Provided finally,
That in determining whether a mark is well-known, account shall

be taken of the knowledge of the relevant sector of the public, rather than
of the public at large, including knowledge in the Philippines which has

been obtained as a result of the promotion of the mark;

f, Is likely to mislead the public, particularly as to the nature, quality,
characteristics or geographical origin of the goods or services;

g. Consists exclusively of signs that are generic for the goods or services
that they seek to identify;

h, Consists exclusively of signs or of indications that have become
customary or usual to designate the goods or services in everyday

language or in bona fide and established trade practice;

i. Consists exclusively of signs or of indications that may serve in trade to
designate the kind, quality, quantity, intended purpose, value,
geographical origin, subject matter, time or production of the goods or

rendering of the services, or other characteristics of the goods or

nm


120.2.

1203.

services, except when the application is for the registration of a collective

or certification mark covering geographical indication;

j. Consists of shapes that may be necessitated by technical factors or by
the nature of the goods themselves or factors that affect their intrinsic

value;

k. Consists of color alone, unless defined by a given form;

1. Lacks distinctiveness;

m. Impairs or dilutes the distinctiveness, or harms the reputation of a
wellknown mark, as declared by competent authority, whether

registered or not; or

n. Is contrary to public order, public policy, or morality.

For the purpose of declaring a mark well-known as provided in paragraph (e),
the Director General, Bureau of Legal Affairs, Bureau of Trademarks and
judicial authorities are considered competent authorities in relation to their

respective functions or jurisdictions.

In determining the likelihood of confusion in paragraphs (4) and (e), primordial
consideration shall be given to the dominant feature of the marks.

The similarity of the goods or services covered by the marks is also considered.
Goods or services that are in the same class are not necessarily similar.
Likewise, goods or services that are in different classes are not necessarily

dissimilar.

R


120.4.

1205.

‘As regards signs or devices mentioned in paragraphs (j), (j), and (k) or those
where the shapes of the goods themselves or portion thereof are not
necessitated by technical factors, their packaging, or containers, nothing shall
prevent the registration of any such sign or device which has become distinctive
in relation to the goods for which registration is requested as a result of the use
that have been made of it in commerce in the Philippines. The Office may
accept as prima facie evidence that the mark has become distinctive, as used
in connection with the applicant’s goods or services in commerce, proof of
substantially exclusive and continuous use thereof by the applicant in
commerce in the Philippines for at least three (8) years before the date on which
the claim of distinctiveness is made.

The nature of the goods to which the mark is applied will not constitute an

obstacle to registration.

Chapter IV TRADEMARK APPLICATION

SECTION 121. Requirements of Application. -

121.1. The application for the registration of the mark shall be in Filipino or in English

and shall contain the following:

a. A request for registration;

b. The name and address of the applicant;

c, The name of a State of which the applicant is a national or where he has
domicile; and the name of a State in which the applicant has a real and
effective industrial or commercial establishment, if any;

a. Where the applicant is a juridical entity, the law under which it is organized
and existing;

e. The appointment of an agent or representative, if the applicant is not
domiciled in the Philippines;

f. Where the applicant claims the priority of an earlier application, an
indication of:

7B


121.2.

121.3.

1. The name of the State with whose national office the earlier
application was filed or if filed with an office other than a national
office, the name of that office,

2. The date on which the earlier application was filed, and
3. Where available, the application number of the earlier application;

g. Where the applicant claims color as a distinctive feature of the mark, a
statement to that effect as well as the name or names of the color or colors
claimed and an indication, in respect of each color, of the principal parts of
the mark which are in that color;

h. Where the mark is a three-dimensional mark, a statement to that effect;

i. One or more reproductions of the mark, as prescribed in the Regulations;

j. A transliteration or translation of the mark or of some parts of the mark,
as prescribed in the Regulations;

k. The names of the goods or services for which the registration is sought,
grouped according to the classes of the Nice Classification, together with
the number of the class of the said Classification to which each group of
goods or services belongs; and

1. A signature by, or other self-identification of, the applicant or

representative.

One (1) application may relate to several goods and/or services, whether they

belong to one (1) class or to several classes of the Nice Classification.

If during the examination of the application, the Office finds factual basis to
reasonably doubt the veracity of any indication or element in the application,

it may require the applicant to submit sufficient evidence to remove the doubt.

SECTION 122. Disclaimers. -'‘The Office may allow or require the applicant to disclaim

an unregistrable component of an otherwise registrable mark but such disclaimer

shall

not prejudice or affect the applicant’s or owner's rights then existing or

thereafter arising in the disclaimed matter, nor such shall disclaimer prejudice or

74


affect the applicant’s or owner's right on another application of later date if the
disclaimed matter became distinctive of the applicant’s or owner’s goods, business or

services.

SECTION 123. Filing Date. —

123.1. Requirements. — The filing date of an application shall be the date on which the
Office received the duly accomplished prescribed application form containing
the following in English or Filipino:

a. The identity of the applicant;

b. Contact details of the applicant and his representative, if any;
c. Areproduction of the mark to be registered; and

d. The list of the goods and/or services covered by the mark.

1232, Payment of the required filing fee on or immediately after the date of filing of
the above requirements shall confirm the filing date and application number

accorded to the application.

SECTION 124. Signature and Other Means of Self-Identification. — 124.1.
Where a signature is required, the Office shall accept:
a, Ahand-written signature; or
b. The use of other forms of signature, such as an electronic, printed or
stamped signature, or the use of a seal, instead of a hand-written signature:
Provided, That where a seal is used, it should be accompanied by an
indication in letters of the name of the signatory.

124.2. The Office shall accept communications to it by electronic means or the latest
technologies subject to the conditions or requirements that will be prescribed
by the Regulations.

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1243.

No attestation, notarization, authentication, legalization or other certification
of any signature or other means of self-identification referred to in the
preceding paragraphs, will be required, except, where the signature concerns
the surrender of a registration.

SECTION 125. Priority Right. -

125.1.

125.2.

125.3.

An application for registration of a mark filed in the Philippines by a person
referred to in Section 3, and who previously duly filed an application for
registration of the same mark in one of those countries, shall be considered as
filed as of the day the application was first filed in the foreign country:
Provided, That the application in the Philippines is filed within six months
from the date on which the application was first filed in the foreign country.

Nothing in this section shall entitle the owner of a registration granted under
this section to sue for acts committed prior to the date on which his mark was
registered in this country: Provided, That, notwithstanding the foregoing, the
owner of a well-known mark as defined in Section 120.1(e) of this Act, that is
not registered in the Philippines, may, against an identical or confusingly
similar mark, oppose its registration, or petition the cancellation of its
registration or sue for unfair competition, without prejudice to availing himself

of other remedies provided for under the law.

In like manner and subject to the same conditions and requirements, the right
provided in this section may be based upon a subsequent regularly filed
application in the same foreign country: Provided, That any foreign application
filed prior to such subsequent application has been withdrawn, abandoned, or
otherwise disposed of, without having been laid open to publie inspection and
without leaving any rights outstanding, and has not served, nor thereafter

shall serve, as a basis for claiming a right of priority.

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Chapter V PROCEDURE FOR REGISTRATION OF TRADEMARK

SECTION 126. Application Number and Filing Date. -

126.1. The Office shall examine whether the application satisfies the formalities and
substantive requirements for the grant of registration, If the application does
not satisfy the registration requirements, the applicant shall be given the
opportunity to complete or correct the application as required, otherwise, the

application shall be considered abandoned.

126.2. An abandoned application may be revived as a pending application upon good

cause shown and the payment of the required fee.

SECTION 127. Maintenance of Mark. -
127.1. To maintain the application or registration of the mark, it must be used on
goods or services. For this purpose, the applicant or registrant shall file a
declaration of actual use of the mark with evidence to that effect within:
a. Three (8) years and six (6) months from the filing date of the application;
b. One (1) year from the fifth anniversary of the registration;
c. One (1) year from date of renewal to be reckoned from the date of renewal;
and

a, One (1) year from the fifth anniversary of each renewal.

In case of non-use, the applicant or registrant, when warranted, shall instead
file a declaration of non-use indicating the grounds and justification therefor

as provided under the regulations.

127.2. Effect of Non-Filing of Declaration of Actual Use or Declaration of Non-Use - An
application or registration shall be deemed abandoned for non-filing of the
declaration of actual use or declaration of non-use. An abandoned application

or registration may be revived upon the filing of a petition for revival within

7


three (3) months from the date of abandonment upon payment of the required
fees, otherwise the mark shall be refused or removed from the register.

SECTION 128. Opposition. - Any person who believes that he would be damaged by
the registration of a mark may, upon payment of the required fee and within thirty

(30) days after the publication of the application, file with the Bureau of Legal Affairs
an opposition thereto. For good cause shown and upon payment of the required

surcharge, the time for filing an opposition may be extended by the Director of Legal
Affairs, who shall notify the applicant of such extension.

SECTION 129. Notice and Hearing. - Upon the filing of an opposition, the Office shall
serve notice of the filing on the applicant, and of the date of the hearing thereof upon
the applicant and the opposer and all other persons having any right, title or interest
in the mark covered by the application, as appear of record in the Office.

SECTION 130. Remand of Application to the Examiner, — The Examiner may again
exercise jurisdiction over the application upon remand of the Director on the ground
of newly discovered information or objection to the registration of the mark. After
remand of an application, the amendment(s) recommended by the Examiner, if any,
may be approved by the Director and may be made without withdrawing the
allowance. The Examiner may likewise issue a subsequent action on the basis of the

newly discovered information or objection.

SECTION 131. Issuance and Publication of Certificate. - When the period for filing
the opposition or appeal has expired or the decision or order has become final and
executory, and upon payment by the applicant of the required fee, the Office shall
issue the certificate of registration and publish in the IPOPHL Gazette.

SECTION 132. Classification of Goods and Services. -Each registration, and any
publication of the Office which concerns an application or registration effected by the
Office shall indicate the goods or services by their names, grouped according to the

78


classes of the Nice Classification, and each group shall be preceded by the number of
the class of that Classification to which that group of goods or services belongs,
presented in the order of the classes of the said Classification.

SECTION 133. Duration. - A certificate of registration shall remain in force for ten
(10) years from the date of registration.

Tn case where a motion for extension for the period to file an opposition is granted by
the Bureau of Legal Affairs, the mark is deemed registered the day following the

expiration of the extension period.

When an opposition is filed, a mark shall be considered registered on the date the
decision or final order giving due course to the application becomes final and

executory.

Chapter VI RENEWAL OF TRADEMARK REGISTRATION

SECTION 134. Renewal. — A certificate of registration may be renewed for periods of
ten (10) years at its expiration upon payment of the prescribed fee and upon filing of
a request in accordance with the Rules promulgated by the Office.

Chapter VII RIGHTS OF REGISTRANTS

SECTION 135. Rights Conferred. -
135.1. Except in cases of importation of drugs and medicines allowed under Section
78 (a)of this Act and of off-patent drugs and medicines, the owner of a
registered mark shall have the exclusive right to prevent, prohibit, and
restrain all third parties not having the owner’s consent from using in the
course of trade identical or similar signs or containers for goods or services
which are identical or similar to those in respect of which the trademark is

registered where such use would result in a likelihood of confusion.

73


135.2. In case of the use of an identical sign for identical goods or services, a likelihood

of confusion shalll be presumed.

SECTION 136. Use of Indications by Third Parties for Purposes Other than those for
which the Marh is Used. - Registration of the mark shall not confer on the registered
owner the right to preclude third parties from using bona fide their names, addresses,
pseudonyms, a geographical name, or exact indications concerning the kind, quality,
quantity, destination, value, place of origin, or time of production or of supply, of their
goods or services: Provided, That such use is confined to the purposes of mere
identification or information and cannot mislead the public as to the source of the

goods or services.

Chapter VIII CANCELLATION OF TRADEMARKS
SECTION 137. Cancellation. -

137.1. Cancellation upon Application by Registrant; Amendment or Disclaimer of
Registration. - Upon application of the registrant, the Office may permit any
registration to be surrendered for cancellation, and upon cancellation the
appropriate entry shall be made in the records of the Office. Upon application
of the registrant and payment of the prescribed fee, the Office for good cause
may permit any registration to be amended or to be disclaimed in part.

137.2. Cancellation of Registration. - A petition to cancel a registration of a mark
under this Act may be filed with the Bureau of Legal Affairs by any interested
person at any time:

1. if the registration was contrary to the provisions of this Act;
.. if the registration was obtained fraudulently;

2.
8. if the registration was obtained in bad faith;
4, if the mark has been abandoned;

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5. if the registered owner of the mark without legitimate reason fails to use
the mark within the Philippines, or to cause it to be used in the
Philippines by virtue of a license during an uninterrupted period of three
and a half (3 1/2) years or longer;

6. if the mark is being used to misrepresent the source of the goods or
services on or in connection with which the mark is used; or

7. if the mark has become generic.

If the registered mark becomes the generic name for less than all of the
goods or services for which it is registered, a petition to cancel the
registration for only those goods or services may be filed. A registered mark
shall not be deemed to be the generic name of goods or services solely
because such mark is also used as a name of or to identify a unique product
or service. The primary significance of the registered mark to the relevant
public rather than purchaser motivation shall be the test for determining
whether the registered mark has become the generic name of goods or

services on or in connection with which it has been used.

137.3. Notwithstanding the foregoing provisions, the court or the administrative
agency vested with jurisdiction to hear and adjudicate any action to enforce the
rights to a registered mark shall likewise exercise jurisdiction to determine
whether the registration of said mark may be cancelled in accordance with this
Act. The filing of a suit to enforce the registered mark with the proper court or
agency shall exclude any other court or agency from assuming jurisdiction over
a subsequently filed petition to cancel the same mark. On the other hand, the
earlier filing of petition to cancel the mark with the Bureau of Legal Affairs
shall not constitute a prejudicial question that must be resolved before an
action to enforce the rights to same registered mark may be decided.

Chapter IX TRADE NAMES OR BUSINESS NAMES

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SECTION 138. Trade Names or Business Names. - A name or designation may not be
used as a trade name if by its nature or the use to which such name or designation
may be put, it is contrary to public order or morals and if, in particular, it is liable to
deceive trade circles or the public as to the nature of the enterprise identified by that

name.

SECTION 139. Protection of Trade Names against Unlawful Acts. —
139.1. Notwithstanding any laws or regulations providing for any obligation to
register trade names, such names shall be protected, even prior to or without

registration, against any unlawful act committed by third parties.
139.2. In particular, any subsequent use of the trade name by a third party, whether
as a trade name or a mark or collective mark, or any such use of a similar trade

name or mark, likely to mislead the public, shall be deemed unlawful.

SECTION 140. The following provisions shall also be applicable to trade names, when

appropriate:

Section 129- Notice and Hearing;

Section 137- Cancellation of Registration;

Section 218- Remedies under Section 218 with respect to
Trade Names

Section 143 - Collective Marks;

Sections148 and 223- Unfair Competition, —Rights,
Regulation and Remedies;

Section 149- False Designations of Origin; False
Description or Representation; and

Sections 223- Injunction and Damages.

SECTION 141. Assignment and Transfer of Ownership of Trade Names. - Any change

in the ownership of a trade name shall be made with the transfer of the enterprise or

82


part thereof identified by that name. The provisions of Sections 212 to 215 apply

mutatis mutandis.

SECTION 142. Goods Bearing Infringing Marks or Trade Names. - No article of
imported merchandise which shall copy or simulate the name of any domestic
product, or manufacturer, or dealer, or which shall copy or simulate a mark registered
in accordance with the provisions of this Act, or shall bear a mark or trade name
calculated to induce the public to believe that the article is manufactured in the
Philippines, or that it is manufactured in any foreign country or locality other than
the country or locality where it is in fact manufactured, shall be admitted to entry at
any custom house of the Philippines. In order 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 certificate 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, the name of the locality in which his goods are manufactured, or his
registered mark or trade name, and thereupon the Collector of Customs shall cause
one (1) or more copies of the same to be transmitted to each collector or to other proper

officer of the Bureau of Customs.

Chapter X COLLECTIVE MARKS AND CERTIFICATION
MARKS

SECTION 143. Collective Marks and Certification Marks. Subject to Sections 144 and
146, Sections 119 to 137 and 142 shall apply to collective marks, except that

references therein to "mark" shall be read as "collective mark" or “certification mark.”

SECTION 144. Registration of Collective Marks or Certification Marks. - An
application for registration of a collective mark shall designate the mark as a
collective mark and shall be accompanied by a copy of the agreement, if any,

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governing the use of the collective mark. An application for registration of a
certification mark shall designate the mark as a certification mark and shall be
accompanied by a copy of the standards set by the certifier governing the use of the

certification mark.

SECTION 145. Duty to Notify Changes in Agreement or Standards. - The
registered owner of a collective mark or a certification mark shall notify the Director

of any changes made in respect of the agreement referred to in Section 144.

SECTION 146. Cancellation of Collective Marks or Certification Marks. - In addition
to the grounds provided in Sections 212 to 215, the Office or the court shall cancel the
registration of a collective mark or certification mark if the person requesting the
cancellation proves that the registered owner uses the mark, or uses or permits its
use in contravention of the agreements referred to in Sections 144 and 145 or uses or
permits its use in a manner liable to deceive trade circles or the public as to the origin

or any other common characteristics of the goods or services concerned.

SECTION 147. Prohibition against Licensing of Collective Marks or Certification
Marks. - The registration of a collective or certification mark, or an application

therefor shall not be the subject of a license contract.

Chapter XI
PROTECTION AGAINST UNFAIR COMPETITION, FALSE DESIGNATIONS
OF ORIGIN, AND FALSE DESCRIPTION OR REPRESENTATION

SECTION 148. Protection Against Unfair Competition. —

148.1. A person who has identified in the mind of the public the business, services or
goods that such person manufactures or deals in, from those of others, whether
or not a registered mark is employed, has a property right in the goodwill
thereof, which will be protected in the same manner as other property rights.


148.2, Any person who shall employ deception or any other means contrary to good
faith by which that person shall pass off the business, services or goods
manufactured or dealt in by such person for those of the one having established
such goodwill, or who shall commit any acts calculated to produce said result,
shall be guilty of unfair competition, and shall be subject to an action therefor.

148.8. In particular, and without in any way limiting the scope of protection against
unfair competition, the following shall be deemed guilty of unfair competition:

a, Any person, who is selling his goods and gives them the general appearance
of goods of another manufacturer or dealer, cither as to the goods
themselves or in the wrapping of the packages in which they are contained,
or the devices or words thereon, or in any other feature of their appearance,
which would be likely to influence purchasers to believe that the goods
offered are those of a manufacturer or dealer, other than the actual
manufacturer or dealer, or who otherwise clothes the goods with such
appearance as shall deceive the public and defraud another of his legitimate
trade, or any subsequent vendor of such goods or any agent of any vendor
engaged in selling such goods with a like purpose;

b, Any person who by any artifice, or device, or who employs any other means
calculated to induce the false belief that such person is offering the services
of another who has identified such services in the mind of the public; or

c. Any person who shall make any false statement in the course of trade or
who shall commit any other act contrary to good faith of a nature calculated

to discredit the goods, business or services of another.

148.4, The remedies provided by Sections 223 and 224.2 apply mutatis mutandis.

SECTION 149. Protection Against False Designations of Origin; False Description or
Representation. ~Any person who, on or in connection with any goods or services, or

any container for goods, uses in commerce any word, term, name, symbol, or device,

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or any combination thereof, or any false designation of origin, false or misleading

description of fact, or false or misleading representation of fact, which:

149.1. Is likely to cause confusion, or to cause mistake, or to deceive as to the
affiliation, connection, or association of such person with another person, or as
to the origin, sponsorship, or approval of his or her goods, services, or

commercial activities by another person; or

149.2. In commercial advertising or promotion, misrepresents the nature,
characteristics, sponsorship, qualities, or geographic origin of goods, services,
or commercial activities, shall be liable to a civil action for damages and

injunction provided in Section 228 of this Act by any interested person.

SECTION 150. Remedies. — Any person who may be or likely to be damaged by the
acts in this Chapter may institute a civil action for damages and injunction provided

in Section 223 which apply mutatis mutandis.

PART VI
COPYRIGHT AND RELATED RIGHTS Chapter I DEFINITIONS

SECTION 151. Definitions. - For the purpose of this Act, the following terms have the

following meaning:

151.1. "Author" is the natural person who has created the work;

151.2. “Copyright” refers to the bundle of exclusive economic rights granted by law to
an author and subject to certain limitations;

151.3. “Collective Management Organization” shall be any entity engaged in
collective management of copyright and related rights subject to the rules and

regulations of the Office.

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151.5.

151.6,

151.

151.8.

151.9.

"Collective work" is a work which has been created by two (2) or more natural
persons at the initiative and under the direction of another with the
understanding that it will be disclosed by the latter under his own name and
that contributing natural persons will not be identified;

"Communication to the public or "communicate to the public" means any
communication to the public, including broadcasting, rebroadcasting,
retransmitting by cable, broadcasting and retransmitting by satellite, and
includes the making of a work available to the public by wire or wireless means
in such a way that members of the public may access these works from a place

and time individually chosen by them;

“Computer” is an electronic or similar device having information-processing

capabilities;

"Computer program is a set of instructions expressed in words, codes, schemes
or in any other form, which is capable when incorporated in a medium that the
computer can read, or causing the computer to perform or achieve a particular
task or result;

"Public lending” is the transfer of possession of the original or a copy of a work
or sound recording for a limited period, for non-profit purposes, by an
institution the services of which are available to the public, such as public

library or archive;

"Public performance," in the case of a work other than an audiovisual work, is
the recitation, playing, dancing, acting or otherwise performing the work,
either directly or by means of any device or process; in the case of an

audiovisual work, the showing of its images in sequence and the making of the

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sounds accompanying it audible; and, in the case of a sound recording, making
the recorded sounds audible at a place or at places where persons outside the
normal circle of a family and that family’s closest social acquaintances are or
can be present, irrespective of whether they are or can be present at the same
place and at the same time, or at different places and/or at different times, and
where the performance can be perceived without the need for communication

within the meaning of Subsection 151.5;

151.10. "Published works" means works, which, with the consent of the authors, are
made available to the public by wire or wireless means in such a way that
members of the public may access these works from a place and time
individually chosen by them: Provided, That availability of such copies has
been such, as to satisfy the reasonable requirements of the public, having

regard to the nature of the work;

151.11. "Rental" is the transfer of the possession of the original or a copy of a work or
a sound recording for a limited period of time, for profit-making purposes;

151.12. "Reproduction" is the making of one (1) or more copies, temporary or
permanent, in whole or in part, of a work or a sound recording in any manner

or form without prejudice to the provisions of Section160 of this Act;

151.13. “Rights management information” means information which identifies the
work, sound recording or performance; the author of the work, producer of the
sound recording or performer of the performance; the owner of any right in the
work, sound recording or performance; or information about the terms and
conditions of the use of the work, sound recording or performance; and any
number or code that represent such information, when any of these items is
attached to a copy of the work, sound recording or fixation of performance or
appears in conjunction with the communication to the publie of a work, sound

recording or performance.

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151.14. “Technological measure” means any technology, device or component that, in
the normal course of its operation, restricts acts in respect of a work,
performance or sound recording, which are not authorized by the authors,

performers or producers of sound recordings concerned or permitted by law;

151.15. “Work of applied art” is an artistic creation with utilitarian functions or
incorporated in a useful article, whether made by hand or produced on an
industrial scale;

151.16. "Work of the Government of the Philippines" is a work created by an officer
or employee of the Philippine Government or any of its subdivisions and
instrumentalities, including government-owned or controlled corporations as

part of his regularly prescribed official duties.

Chapter IIT ORIGINAL WORKS

SECTION 152. Literary and Artistic Works. —

152.1. Literary and artistic works, hereinafter referred to as "works", are original
intellectual creations in the literary and artistic domain protected from the
moment of their creation. Originality means that the work was independently
created by the author’s own skill, labor and judgment, whatever may be the
mode or form of its expression, and shall include in particular:

a. Books, pamphlets, articles and other writings;

b. Periodicals and newspapers;

c. Lectures, sermons, addresses, dissertations and other works of the same
nature;

d. Letters and other written communications;

e. Dramatic or dramatico-musical compositions; choreographic works and
entertainment in pantomimes;

f. Musical compositions, with or without words;

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g. Works of drawing, painting, architecture, sculpture, engraving,
lithography or other works of art; models or designs for works of art;

h. Original ornamental designs or models for articles of manufacture,
whether or not registrable as an industrial design, and other works of
applied art;

i, Drawings, illustrations, maps, plans, sketches, charts and
threedimensional works relative to geography, topography, architecture
or science;

j. Photographic works including works produced by a process analogous to
photography; lantern slides;

k. Audiovisual works and cinematographic works and works produced by a
process analogous to cinematography or any process for making
audiovisual recordings;

1. Pictorial illustrations and advertisements;

m. Computer programs; and

n. Other literary, scholarly, scientific and artistic works.

152.2. Works are protected by the sole fact of their creation, without need of any
formality or registration, irrespective of their mode, medium, or form of

expression, as well as of their content, quality and purpose.

Chapter III DERIVATIVE WORKS

SECTION 153. Derivative Works. —
453.1. The following derivative works shall also be protected by copyright:
a, Dramatizations, translations, adaptations, abridgments, arrangements,
and other alterations of literary or artistic works; and
b. Collections of literary, scholarly or artistic works, and compilations of data
and other materials which are original by reason of the selection or

coordination or arrangement of their contents.

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453.2. The works referred to in paragraphs (a) and (b) of Subsection 153.1 shall be
protected as new works: Provided however, That such new work shall not affect
the force of any subsisting copyright upon the original works employed or any
part thereof, or be construed to imply any right to such use of the original

works, or to secure or extend copyright in such original works.

Chapter IV WORKS NOT PROTECTED

SECTION 154. Unprotected Subject Matier. - Notwithstanding the provisions of
Sections152 and 153, no protection shall extend, under this Act, to any of the
following:

154.1 Any idea, procedure, system, method of operation, concept, principle, discovery
or mere data as such, even if they are expressed, explained, illustrated or
embodied in a work;

154.2 A functional design;

154.3 Article of manufacture;

154.4 News of the day and other miscellaneous facts having the character of mere
items of press information; or

154.5 Any official text of a legislative, administrative or legal nature, as well as any
official translation thereof.

SECTION 155. Works of the Government. -

155.1, No copyright shall subsist in any work of the Government of the Philippines.
However, prior approval of the government agency or office wherein the work
is created shall be necessary for exploitation of such work for profit. Such
agency or office may, among other things, impose as a condition the payment
of royalties. No prior approval or conditions shall be required for the use of any
purpose of statutes, rules and regulations, and speeches, lectures, sermons,
addresses, and dissertations, pronounced, read or rendered in courts of justice,
before administrative agencies, in deliberative assemblies and in meetings of

public character.

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155.2, The author of speeches, lectures, sermons, addresses, and dissertations
mentioned in the preceding paragraphs shall have the exclusive right of

making a collection of such works.

155.3, Notwithstanding the foregoing provisions, the Government is not precluded
from receiving and holding copyrights transferred to it by assignment, bequest
or otherwise; nor shall publication or republication by the government in a
public document of any work in which copyright is subsisting be taken to cause
any abridgment or annulment of the copyright or to authorize any use or

appropriation of such work without the consent of the copyright owner.

Chapter V COPYRIGHT OR ECONOMIC RIGHTS

SECTION 156. Copyright or Economic Rights. - Subject to the provisions of Chapter
VII, copyright or economic rights shall consist of the exclusive right to carry out,
authorize or prevent the following acts:

156.1 Reproduction of the work or substantial portion of the work;

156.2 Dramatization, translation, adaptation, abridgment, arrangement or other
transformation of the work;

156.3 The first public distribution of the original and each copy of the work by sale or
other forms of transfer of ownership;

156.4 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;

156.5 Public display of the original or a copy of the work;

156.6 Public performance of the work; and

156.7 Other communication to the public of the work.

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Chapter VI ;0WNERSHIP OF COPYRIGHT

SECTION 157. Rules on Copyright Ownership. - Copyright ownership shall be

governed by the following rules:

157.1.

157.2.

157.3.

157.4.

Subject to the provisions of this Section, in the case of original literary and
artistic works, copyright shall belong to the author of the work;

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

In the case of work created by an author during and in the course of his

employment, the copyright shall belong to:

a, The employee, if the creation of the object of copyright is not a part of the
employee's regular duties even if the employee uses the time, facilities and
materials of the employer.

b. The employer, if the work is the result of the performance of the employee's
regularly-assigned duties, unless there is an agreement, express or implied,

to the contrary.

In the case of a work commissioned by a person other than an employer of the
author and who pays for it and the work is made in pursuance of the
commission, the person who so commissioned the work shall have ownership
of the work, but the copyright thereto shall remain with the creator, unless
there is a written stipulation to the contrary;

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157.5. In the case of audiovisual work, the copyright shall belong to the producer, the
author of the scenario, the composer of the music, the film director, and the
author of the work so adapted. However, subject to contrary or other
stipulations among the creators, the producer shall exercise the copyright to
an extent required for the exhibition of the work in any manner, except for the
right to collect performing license fees for the performance of musical

compositions, with or without words, which are incorporated into the work; and

157.6. In respect of letters, the copyright shall belong to the writer subject to the
provisions of Article 723 of the Civil Code.

SECTION 158. Anonymous and Pseudonymous Works. - For purposes of this Act, the
publishers shall be deemed to represent the authors of articles and other writings
published without the names of the authors or under pseudonyms, unless the
contrary appears, or the pseudonyms or adopted name leaves no doubts as to the
author's identity, or if the author of the anonymous works discloses the author's

identity.

Chapter VII LIMITATIONS ON COPYRIGHT

SECTION 159. Limitations on Copyright. —

159.1 Notwithstanding the provisions of Chapter V, the following acts shall not
constitute infringement of copyright:

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
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summaries: Provided, That the source and the name of the author, if

appearing on the work, are mentioned;

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 nature, 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;

The reproduction and communication to the public of literary, scientific or
artistic works as part of reports of current events by means of
photography, cinematography or broadcasting to the extent necessary for
the purpose;

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 compatible with
fair use: Provided, That the source and of the name of the author, if

appearing in the work, are mentioned;

The recording made in schools, universities, 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 were first broadcast: Provided,
further, That such recording may not be made from audiovisual works
which are part of the general cinema repertoire of feature films except for

brief excerpts of the work;

The making of ephemeral recordings by a broadcasting organization by

means of its own facilities and for use in its own broadcast;

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The use made of a work by or under the direction or control of the
Government or by educational, scientific or professional institutions
where such use is in the public interest or public good and is compatible

with fair use;

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;

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 the original or the copy displayed has been sold, given
away or otherwise transferred to another person by the author or his

successor in title;

Any use made of a work for the purpose of any judicial proceedings or for
the giving of professional advice by a legal practitioner; and

The reproduction, distribution, and making available to the public or
works in an accessible format or copy for of published articles or materials
in a specialized format exclusively for the use of the blind, or
visuallyimpaired and those unable, through physical disability, to hold or
manipulate a book or to focus or move the eyes to the extent that would
be normally acceptable for reading. These limitations on copyright cover
the changes needed to make the work in accessible format copies for the
aforementioned beneficiaries: Provided, That such copies and distribution
shall be made on a nonprofit basis and shall indicate the copyright owner
and the date of the original publication.

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159.2. The provisions of this section shall be interpreted in such a way as to allow the
work to be used in a manner which does not conflict with the normal
exploitation of the work and does not unreasonably prejudice the right holder's

legitimate interests.

SECTION 160. Fair Use of a Copyrighted Work. ~

160.1. The fair use of a copyrighted work for criticism, comment, news reporting,
teaching including limited number of copies for classroom use, scholarship,
research, and similar purposes is not an infringement of copyright.

Decompilation, which is understood here to be the reproduction of the code and
translation of the forms of a computer program to achieve the interoperability
of an independently created computer program with other programs, may also
constitute fair use under the criteria established by this section, to the extent
that such decompilation is done for the purpose of obtaining the information
necessary to achieve such interoperability. In determining whether the use
made of a work in any particular case is fair use, the factors to be considered
shall include:

a. The purpose and character of the use, including whether such use is of a
commercial nature or is for non-profit educational purposes;

b. The nature of the copyrighted work;

¢. The amount and substantiality of the portion used in relation to the
copyrighted work as a whole; and

a. The effect of the use upon the potential market for or value of the
copyrighted work.

160.2. The fact that a work is unpublished shall not by itself bar a finding of fair use

if such finding is made upon consideration of all the above factors.

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SECTION 161. Work of Architecture. - Copyright in a work of architecture shall
include the right to control the erection of any building which reproduces the whole
or a substantial part of the work either in its original form or in any form recognizably
derived from the original; Provided, That the copyright in any such work shall not
include the right to control the reconstruction or rehabilitation in the same style as
the original of a building to which that copyright relates.

SECTION 162. Published Edition of Work. - In addition to the right to publish granted
by the author, his heirs or assigns, the publisher shall have a copyright consisting
merely of the right of reproduction of the typographical arrangement of the published
edition of the work.

SECTION 163. Reproduction of Published Work. —

163.1. Notwithstanding the provision of Section 156, and subject to the provisions of
Subsection 163.2, the private reproduction of a published work in a single copy,
where the reproduction is made by a natural person exclusively for research
and private study, shall be permitted, without the authorization of the owner
of copyright in the work.

163.2. The permission granted under Subsection 163.1 shall not extend to the

reproduction of:

a. Awork of architecture in the form of building or other construction;

b. Anentire book, or a substantial part thereof, or of a musical work in graphic
form by reprographic means;

c. Acompilation of data and other materials;

a. A computer program except as provided in Section 165; and

e. Any work in cases where reproduction would unreasonably conflict with a
normal exploitation of the work or would otherwise unreasonably prejudice

the legitimate interests of the author.

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SECTION 164. Reprographic Reproduction by Libraries ~

164.1.

164.2.

Notwithstanding the provisions of Subsection 156.1, any library or archive
whose activities are not for profit may, without the authorization of the author
or copyright owner, make a limited number of copies of the work, as may be
necessary for such institutions to fulfill their mandate, by reprographic

reproduction:

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 the reproduction is necessary to
supply them; when this is considered expedient, to persons 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 limited copies 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.

Notwithstanding the above provisions, it shall not be permissible to produce a
volume of a work published in several volumes or to produce missing tomes or
pages of magazines or similar works, unless the volume, tome or part is out of
stock; Provided, That every library which, by law, is entitled to receive copies
of a printed work, shall be entitled, when special reasons so require, to
reproduce a copy of a published work which is considered necessary for the
collection of the library but which is out of stock.

SECTION 165. Reproduction of Computer Program. —

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165.1.

165.2.

165.3.

Notwithstanding the provisions of Section 156, the reproduction in one (1)
back-up copy or adaptation of a computer program shall be permitted, without
the authorization of the author of, or other owner of copyright in, a computer
program, by the lawful owner of that computer program: Provided, That the

copy or adaptation is necessary for:

a. The use of the computer program in conjunction with a computer for the
purpose, and to the extent, for which the computer program has been
obtained; and

b. 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.

No copy or adaptation mentioned in this Section shall be used for any purpose
other than the ones determined in this Section, and any such copy or
adaptation shall be destroyed in the event that continued possession of the copy

of the computer program ceases to be lawful.

This provision shall be without prejudice to the application of Section 160

whenever appropriate.

Chapter VIII RECORDATION AND DEPOSIT

SECTION 166. Recordation and Deposit with the National Library of the Philippines

and the Supreme Court Library. —

166.1.

The recordation and deposit of a work, as provided in this section, are not
conditions for copyright protection and are merely for the purpose of
completing the records of the National Library of the Philippines (“National
Library”) and the Supreme Court Library.

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166.2. At any time during the subsistence of the copyright, the owner of the copyright
or of any exclusive right in the work may, for the purpose of completing the
records of the National Library and the Supreme Court Library, register and
deposit with them, two (2) complete copies or reproductions of the work in such
form as the Directors of the said libraries may prescribe in accordance with
regulations: Provided, That only works in the field of law shall be deposited
with the Supreme Court Library. Such registration and deposit is not a
condition of copyright protection.

166.3. The aforementioned libraries may deputize the Office to receive deposits and

issue certificates of recordation and deposit in their behalf.

SECTION 167. Ownership of Deposit and Instruments. - All copies deposited and
instruments in writing filed with the National Library and the Supreme Court
Library in accordance with the provisions of this Act shall become the property of the

Government.

SECTION 168. Public Records. - The section or division of the National Library and
the Supreme Court Library charged with receiving copies and instruments deposited
and with keeping records required under this Act and everything in it shall be opened
to public inspection. The National Library is empowered to issue such safeguards and
regulations as may be necessary to implement this Section and other provisions of
this Act.

SECTION 169. National Library Fees. -The National Library shall have the power to
collect, for the discharge of its services under this Act, such fees as may be
promulgated by it from time to time in accordance with the applicable laws and

regulations.

SECTION 170. Cancellation of Certificate of Recordation and Deposit —

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170.1. A certificate of recordation and deposit shall be cancelled by the government
agency that issued the same by virtue of final order or decision of the Director
of Legal Affairs, Director of Copyright, or Director General of the Office, or of

the appropriate court, pursuant to which a new certificate may be issued.

170.2. Upon submission of any instrument or deed transferring, assigning, or
conveying the copyright ownership, the existing certificate shall be cancelled

and a new one issued.

Chapter IX

SECTION 171. Scope of Moral Rights. - The author of a work shall, independently of
the economic rights in Section 158 or the grant of an assignment or license with
respect to such right, have the following rights:

171.1. Right of Attribution. - To require that the authorship of the works be attributed
to him or her, in particular, the right that his or her name, as far as practicable,
be indicated in a prominent way on the copies, and in connection with the public
use of his work;

171.2. Right of Alteration. - To make any alterations of his or her work prior to, or to
withhold it from publication;

171.3. Right of Objection to Modification. To object to any distortion, mutilation or
other modification of, or other derogatory action in relation to, his or her work

which would be prejudicial to his or her honor or reputation; and

171.4. Right against False Attribution. - To restrain the use of his or her name with
respect to any work not of his or her own creation or in a distorted version of

his or her work.

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SECTION 172. Waiver of Moral Rights. -An author may waive his or her rights
mentioned in Section 171 by a written instrument, but no such waiver shall be valid

where its effects is to permit another:

172.1. To use the name of the author, or the title of his work, or otherwise to make
use of his or her reputation with respect to any version or adaptation of his or
her work which, because of alterations therein, would substantially tend to

injure the literary or artistic reputation of said author; or

172.2. To use the name of the author with respect to a work he or she did not create.

SECTION 173. Non-transferability of Moral Rights. — Moral rights enumerated under
this Chapter shall not be assignable or subject to license.

SECTION 174. Breach of Contract. -An author cannot be compelled to perform his or
her contract to create a work or for the publication of his work already in existence.

However, he may be held liable for damages for breach of such contract.

SECTION 175. Contribution to Collective Work. - When an author contributes to a
collective work, his right to have his contribution attributed to him is deemed waived

unless he expressly reserves it.

SECTION 176. Editing, Arranging and Adaptation of Work. - In the absence of a
contrary stipulation at the time an author licenses or permits another to use his or
her work, the necessary editing, arranging or adaptation of such work, for
publication, broadcast, use in a motion picture, dramatization, or mechanical or
electrical reproduction in accordance with the reasonable and customary standards
or requirements of the medium in which the work is to be used, shall not be deemed
to contravene the author's rights secured by this chapter. Nor shall complete
destruction of a work unconditionally transferred by the author be deemed to violate

such rights.

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SECTION 177. Term of Moral Rights. - The rights of an author under this Chapter
shall be coterminous with the economic rights. Failure to attribute at anytime beyond
any period provided herein shall not exempt the person from being charged with
unethical behavior and violations under other applicable laws. In cases of
posthumous enforcement, the rights shall devolve in accordance with the rules of
succession. However, in the default of the heirs, such rights shall be with the Director
of the National Library.

SECTION 178. Enforcement Remedies. ~
178.1. Who may enforce. —

a. During his or her lifetime, only the author may seek enforcement of his or
her moral rights. (n)

b. In respect of the enforcement of moral rights after the author's death and
during the subsistence of the same, the person or persons to be charged
with
the posthumous enforcement of these rights shall be named in a written
instrument which shall be filed with the National Library.

For purposes of this section, “person” shall mean any individual,
partnership, corporation, association, or collective management
organization. The Director of the National Library may prescribe
reasonable fees to be charged for his or her services in the application of the

provisions of this section.
¢. In default of such person or persons, such enforcement shall devolve upon

either the author's heirs, and in default of the heirs, the Director of the
National Library.

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178.2, Remedies available. - Violation of any of the rights conferred by this Chapter
shall entitle those charged with their enforcement to the same rights and
remedies available to a copyright owner, except infringement. In addition,
damages which may be availed of under the Civil Code may also be recovered.
Any damage recovered after the creator's death shall be held in trust for and
remitted to his heirs, and in default of the heirs, shall belong to the

government.

Chapter X RIGHTS TO PROCEEDS IN SUBSEQUENT TRANSFERS

SECTION 179. Sale or Lease of Work. - In every sale or lease of an original work of
painting or sculpture or of the original manuscript of a writer or composer,
subsequent to the first disposition thereof by the author, the author or his heirs shall
have an inalienable right to participate in the gross proceeds of the sale or lease to
the extent of five percent (5%). This right shall exist during the lifetime of the author
and for fifty (50) years after his death.

SECTION 180. Works Not Covered. - The provisions of this Chapter shall not apply to
prints, etchings, engravings, works of applied art, or works of similar kind wherein

the author primarily derives gain from the proceeds of reproductions.

Chapter XI
RIGHTS OF PERFORMERS, PRODUCERS OF SOUND RECORDINGS
AND BROADCASTING ORGANIZATIONS

DEFINITIONS

SECTION 181. Definitions. - For the purpose of this Act, the following terms shall

have the following meanings:

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181.1, "Audiovisual work or fixation" is a work that consists of a series of related
images which impart the impression of motion, with or without accompanying
sounds, susceptible of being made visible and, where accompanied by sounds,

susceptible of being made audible;

1812, "Broadcasting" means the transmission by wireless means for the public
reception of sounds or of images, or images and sounds or of the representations
thereof; such transmission by satellite is also "broadcasting;" transmission of
encrypted signals is “broadcasting” where the means for decrypting are

provided to the public by the broadcasting organization or with its consent;

1813. "Broadcasting organization" shall include a natural person or a juridical entity
duly authorized to engage in broadcasting;

181.4, "Communication to the public of a performance or a sound recording" means the
transmission to the public, by any medium, otherwise than by broadcasting, of
an unfixed performance, or sounds of a performance or the representation of
sounds fixed in a sound recording or audiovisual work, or a performance fixed
in a sound recording or an audiovisual work but excludes the act making

available to the public of a performance under Section 181.5 or of Section 186.4.

1815. "Fixation" means the embodiment of sounds, or of the representations thereof,
from which they can be perceived, reproduced or communicated through a

device;

181.6. "Performers" are actors, singers, musicians, dancers, and other persons who act,
sing, declaim, play in, interpret, or otherwise perform literary and artistic

work, or expressions of folklore;

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181.7. "Producer of a sound recording" means the person, or the legal entity, who or
which takes the initiative and has the responsibility for the first fixation of the

sounds of a performance or other sounds, or the representation of sounds;

181.8. "Publication of a fixed performance or a sound recording" means the offering of
copies of the fixed performance or the sound recording to the public, with the
consent of the right holder: Provided, That copies are offered to the public in
reasonable quantity. For purposes of this Section, sound recordings made
available to the public under Section 187.4 shall be considered as if they had
been published;

1819. “Rebroadcasting” means the simultaneous broadcasting by one broadcasting

organization of the broadcast of another broadcasting organization; and

181.10. "Sound recording" means the fixation of the sounds of a performance or of other
sounds, or representation of sound, other than in the form of a fixation

incorporated in a cinematographic or other audiovisual work.
PERFORMERS

SECTION 182. Scope of Performers’ Rights. - Subject to the provisions of Section 192,
performers shall enjoy the following exclusive rights:

182.1. As regards their performances, the right of authorizing:
a. The broadcasting and other communication to the public of their
performance; and

b. The fixation of their unfixed performance;

182.2, The right of authorizing the direct or indirect reproduction of their
performances fixed in sound recordings or audiovisual works or fixations in any

manner or form;

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182.3.

182.4.

182.5.

Subject to the provisions of Section 185, the right of authorizing the first public
distribution of the original and copies of their performance fixed in the sound
recordings or audiovisual works or fixations through sale or rental of other

forms of transfer of ownership;

The right of authorizing the commercial rental to the public of the original and
copies of their performances fixed in sound recordings or audiovisual works or
fixations, even after distribution of them by, or pursuant to the authorization

by the performer; and

The right of authorizing the making available to the public of their
performances fixed in sound recordings or audiovisual works or fixations, 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.

SECTION 183. Moral Rights of Performers. —

183.1.

183.2.

183.3.

Rights Granted. - Independently of a performer's economic rights, the
performer, shall, as regards live aural performances or performances fixed in
sound recordings or in audiovisual works or fixations, have the right to claim
to be identified as the performer of the performances, except where the
omission is dictated by the manner of the use of the performance, and to object
to any distortion, mutilation or other modification of the performances that

would be prejudicial to the person’s reputation.

Term of Protection. - The rights granted to a performer in accordance with
Subsection 182.1 shall be maintained and exercised fifty (50) years after the
performer’s death, by the performer's heirs, and in default of heirs, the

government, where protection is claimed.

Enforcement Remedies. — In the enforcement of these rights, Section 223
applies mutatis mutandis.

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SECTION 184, Limitation on Right. —

184.1. Subject to the provisions of Section185, once the performer has authorized the
broadcasting or fixation of his performance, the exclusive rights under
Subsections 181.2 to 181.5 shall be owned or exercised by or transferred to the
producer of the sound recording, or of the audiovisual work or fixation, subject
to any written contract to the contrary between the performer and the

producer.

184.2. The provisions of Sections 159 and 160 apply mutatis mutandis to performers.

SECTION 185. Additional Remuneration for Subsequent Communications or
Broadcasts. - Unless otherwise provided in the contract, in every communication to
the public or broadcast of a performance subsequent to the first communication or
broadcast thereof by the broadcasting organization, the performer shall be entitled to
an additional remuneration equivalent to at least five percent (5%) of the original

compensation he or she received for the first communication or broadcast.

SECTION 186. Contract Terms. -Nothing in this Chapter shall be construed to deprive
performers of the right to agree by contracts on terms and conditions more

favorable for them in respect of any use of their performance.

SgPRODUCERS OF SOUND RECORDINGS

SECTION 187. Scope of Right. -Subject to the provisions of Section 192, producers
of sound recordings shall enjoy the following exclusive rights:

187.1. 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;

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187.2, The right to authorize the first public distribution of the original and copies of
their sound recordings through sale or rental or other forms of transferring

ownership;

187.3. The right to authorize the 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; and

187.4. The right to authorize the making available to the public of their sound
recordings in such a way that members of the public may access the sound
recording from a place and at a time individually chosen or selected by them,

as well as other transmissions of a sound recording with like effect.

SECTION 188. Limitation of Right. -Sections 159 and 160 shall apply mutatis

mutandis to the producer of sound recordings.

SINGLE EQUITABLE REMUNERATION

SECTION 189. Single Equitable Remuneration. - Performers and producers of sound
recordings shall enjoy the right to a single equitable remuneration for the direct or
indirect use of sound recordings published for commercial purposes, for broadcasting

or for any communication to the public.

For purposes of this Section, "communication to the public" includes making the
sounds or representations of sounds fixed in a sound recording audible to the public
or the images and/or sounds in a performance fixed in an audiovisual work or fixation

visible and/or audible to the public.

BROADCASTING ORGANIZATIONS

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SECTION 190. Scope of Right. - Subject to the provisions of Section 192, broadcasting
organizations shall enjoy the exclusive right to carry out, authorize or prevent any of

the following acts:

190.1. The rebroadcasting of their broadcasts;

190.2. The fixation of the broadcast for the purpose of communication to the public;

and

190.3. The use for fresh transmissions of the fixated broadcast or the reproduction of
the fixated broadcast.

Chapter X COLLECTIVE MANAGEMENT ORGANIZATIONS OR
SOCIETIES

SECTION 191. Collective Management Organizations (CMO) or Societies. -

191.1. Designation of CMO or Societies. - The owners of copyright and related rights
or their heirs may designate a society of artists, writers, composers and other
right-holders to collectively manage their economic or moral rights on their
behalf.

191.2. Mandatory Accreditation with the Office. - For the said CMO or societies to
enforce the rights of their members, they shall first secure the necessary
accreditation from the Office. Both local and foreign CMOs and individuals or
entities engaging in any of the activities in Section 191.3 in behalf of more than
one right holder are required to apply for accreditation if the actual exercise of

economic rights took place in the Philippines.

Any person may refuse the payment or remittance of royalties to a CMO which
is not accredited. Any person may also refuse payment or remittance of
royalties to a CMO for a rights holder if the latter is not a registered member

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of the CMO. In addition, any such organization found functioning as a CMO
without said accreditation after due notice and hearing shall be liable for an
administrative fine which shall in no case be less than fifty thousand pesos
(P50,000.00).

191.3. Effect of Accreditation. - Accreditation shall authorize a CMO to negotiate,
grant licenses, collect and distribute royalties, and other remuneration of its

members.

191.4. Posthumous Enforcement of Moral Rights. - A duly accredited CMO may

enforce the moral rights of its deceased members, when named in a written
instrument which shall be filed with the National Library, as provided in
Sections 221 and 223.

191.5. The accredited CMOs representing performers and sound recording producers
respectively shall be required to enter into an agreement on who shall collect
the single equitable remuneration as provided in Section 189, including the
rate of sharing and the obligation to remit the same within a reasonable period.
Absent any agreement as to the rate of sharing, the two parties shall share
equally the amount collected. The payment of the single equitable
remuneration shall be made only through the CMO identified in the said

agreement.

CHAPTER XI LIMITATIONS ON PROTECTION OF RELATED
RIGHTS

SECTION 192. Limitations on the Rights of Performers, Producers of Sound

Recordings, and Broadcasting Organizations. —

192.1. Sections 182, 187, 189, and 190 shall not apply where the acts referred to in
those sections are related to:

a. the use by a natural person exclusively for his own personal purposes;

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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 160.

192.2, In addition to those in the preceding subsection, the limitations provided in the
provisions of Chapter VII apply mutatis mutandis to the rights of performers,

producers of sound recordings and broadcasting organizations.

Chapter XII TERM OF PROTECTION

SECTION 193. Term of Protection. —

193.1. Subject to the provisions of Subsections 193.2 to 193.5, the copyright in works
under Sections 152 and 153 shall be protected during the life of the author and
for fifty (50) years after his death. This rule also applies to posthumous works.

193.2. 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.

193.8. In case of anonymous or pseudonymous works, the copyright shall be protected
for fifty (50) years from the date on which the work was first lawfully published:
Provided, That where, before the expiration of the said period, the author's
identity is revealed or is no longer in doubt, the provisions of
Subsections 193.1 and 193.2 shalll apply, as the case may be: Provided, further,
‘That such works if not published before shall be protected for fifty (50) years
counted from the making of the work.

198.4. In case of works of applied art the protection shall be for a period of twentyfive
(25) years from the date of making.

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193.5. 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.

198.6. In case of audio-visual works including those produced by process analogous to
photography or any process for making audio-visual recordings, the term shall
be fifty (60) years from date of publication and, if unpublished, from the date
of making.

SECTION 194, Calculation of Term. - The term of protection subsequent to the death
of the author provided in the preceding Section shall run from the date of his death
or of publication, but such terms shall always be deemed to begin on the first day of

January of the year following the event which gave rise to them.

SECTION 195. Term of Protection for Performers, Producers and Broadcasting

Organizations. ~

195.1. The rights granted to performers and producers of sound recordings under this
law shall expire:

a. For performances not incorporated in recordings, 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.

195.2. In case of broadcasts, the term shall be twenty (20) years from the date the
broadeast took place. The extended term shall be applied only to old works with

subsisting protection under the prior law.

SECTION 196. Presumption of Authorship. -

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196.1.

196.2.

The natural person whose name is indicated on a work in the usual manner
as the author shall, in the absence of proof to the contrary, be presumed to
be the author of the work. This provision shall be applicable even if the name
is a pseudonym, where the pseudonym leaves no doubt as to the identity of
the author.

The person or body corporate whose name appears on an audiovisual work
or on sound recording in the usual manner shall, in the absence of proof to
the contrary, be presumed to be the maker of said work or the producer of

said sound recording.

Chapter XII SCOPE OF APPLICATION

SECTION 197. Points of Attachment for Works under Sections 152 and152. —
197.1. The protection afforded by this Act to copyrightable works under Sections152
and 153 shall apply to:

a.

Works of authors who are nationals of, or have their habitual residence
in, the Philippines;

Audio-visual works the producer of which has his headquarters or
habitual residence in the Philippines;

Works of architecture erected in the Philippines or other artistic works
incorporated in a building or other structure located in the Philippines;
Works first published in the Philippines; and

Works first published in another country but also published in the
Philippines within thirty days, irrespective of the nationality or residence
of the authors.

197.2. The provisions of this Act shall also apply to works 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.

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SECTION 198. Points of Attachment for Performers. -The provisions of this Act shall
be extended to:
198.1. Performers who are nationals of the Philippines;
198.2. Performers who are not nationals of the Philippines subject to any of the
following conditions:
a. Performance takes place in the Philippines; or
b. Performance is incorporated in sound recordings or in audiovisual
fixations that are protected under this Act; or
c Performance which has not been fixed in sound recording or in
audiovisual fixations but is carried by broadcast qualifying for
protection under this Act.

SECTION 199. Points of Attachment for Sound Recordings. -The provisions of this Act
on the protection of sound recordings shall apply to:

199.1, sound recordings the producers of which are nationals of the Philippines; and
199.2. sound recordings that were first published in the Philippines,

SECTION 200. Points of Attachment for Broadcasts. ~The provisions of this Act on
the protection of broadcasts shall apply to:

200.1. Broadcasts of broadcasting organizations the headquarters of which are
situated in the Philippines; and

200.2. Broadcasts transmitted from transmitters situated in the Philippines.

SECTION 201. Applicability of Protection under International Conventions. - The
provisions of this Act shall also apply to performers who, and to producers of sound
recordings and broadcasting organizations which, 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.

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PART VII COMMON PROVISIONS

Chapter I GENERAL PROVISIONS

SECTION 202. Ownership of Intellectual Property. ~ Ownership of the intellectual

property is acquired by intellectual creation.

SECTION 203. Rights of Joint Owners. - If two (2) or more persons jointly own an

intellectual property, neither of the joint owners shalll be entitled to grant licenses or

to assign his right, title or interest or part thereof without the consent of the other

owner or owners, or without proportionally dividing the proceeds with such other

owner or owners.

SECTION 204. Certificates.

204.1,

204.2.

204.3.

Letters Patent and Certificate of Registration of Utility Models, Industrial
Design, and Layout-Designs of Integrated Circuits. - These are evidence of the
correctness and validity of the registration, the ownership of the patent, utility
model, or industrial design and layout designs of integrated circuits, and of the

owner’s exclusive rights thereto.

Certificates of Registration of a Mark. - A certificate of registration of a mark
shall be 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 specified in the certificate and those

that are related thereto.

Certificate of Recordation and Deposit of Copyrighted Works. ~A Certificate of
Recordation and Deposit shall constitute prima facie evidence of the creation
of the work, validity of recordation of the copyright, and the submission of the
attached affidavit evidence. Registration and deposit of a work with the

17


National Library, the Supreme Court Library, or the Office shall not carry with
it the presumption of ownership of the copyright by the registrant or depositor,

nor shall it be considered a condition for a claim of copyright infringement.

SECTION 208. Representation; Address for Service. -If the applicant is not domiciled
or has no real and effective commercial establishment in the Philippines, he shall
designate by a written document filed in the office, the name and address of a
Philippine resident who may be served notices or process in proceedings affecting the
mark. Such notices or services may be served upon the person so designated by
leaving a copy thereof at the address specified in the last designation filed. If the
person so designated cannot be found at the address given in the last designation,

such notice or process may be served upon the Director.

SECTION 206. Publication of Registered or Granted Intellectual Property; Inspection
of Register. The Office shall publish the intellectual property registered, in the order

of their registration or grant, reproducing all the particulars referred therein.

Intellectual property that is registered at the Office may be inspected, upon payment
of applicable charges and any person may obtain copies thereof at his own expense
and with the approval of the Office. This provision shall also be applicable to

transactions recorded in respect of intellectual property.

SECTION 207. Correction of Mistakes Made by the Office. Letters Patent, Certificate
of registration of utility models, industrial design, and layout-designs of integrated
circuit or Certificate of trademark registration may be cancelled or corrected in
accordance with the Regulations. All certificates of correction heretofore issued in
accordance with the Regulations and the registration to which they are attached shall
have the same force and effect as if such certificates and their issuance had been

authorized by this Act.

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SECTION 208. Correction of Mistake in the Letters Patent, Utility Model, Industrial
Design, Layout-Design, Trademark Registrations and Copyright Recordation. -On
request of any interested person and payment of the prescribed fee, the Office is
authorized to correct any formal or clerical mistake in a patent, utility model,
industrial design, layout-design, trademark registrations and copyright recordation,
not incurred through the fault of the Office.

SECTION 209. Certified Copies as Evidence. - Copies of any records, books, papers,
or drawings belonging to the Office relating to marks, invention patents, utility
models, industrial designs and layout of integrated circuits, copyrighted works, and
copies of registration, letters patent and certificate of registration of utility models,
industrial design, layout-designs of integrated circuit and certificate of recordation
and deposit of copyrighted works or, when certified by a duly authorized official of the
Office, shall be evidence in all cases wherein the originals would be evidence; and any

person who applies and pays the prescribed fee shall secure such copies.

SECTION 210. Confidential Information - Confidential information as determined by
the Office, or those covered by the constitution, existing laws, or jurisprudence, or

other issuances shall be safeguarded by the Office.

SECTION 211. Public Domain. - Copyright, utility models, industrial designs, layout
designs and patents shall belong to the public domain under any of the following

instances:

Expiration of the corresponding term of protection;

a.
b. Non-compliance with protection and maintenance requirements;

°

Surrender of rights provided for in this act;

a

. Final judgment of the court or the Office; or

e. Other circumstances analogous to any of the above.

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Chapter II TRANSMISSION OF INTELLECTUAL PROPERTY
RIGHTS

SECTION 212. Transmission of Rights, - Intellectual property rights and the objects
to which these relate shall be protected in the same way as under the New Civil Code

in so far as it is not inconsistent with this Act.

SECTION 213. Contracts and Transmission of Rights... Contracts and transmission
of rights relating to intellectual property shall be governed by the relevant provisions
of the New Civil Code.

SECTION 214. Form of Assignment and Other Forms of Transmission of Rights. ~The
assignment or transmission of rights must be in writing, acknowledged before a
notary public or other officer authorized to administer oath or perform notarial acts,
and certified under the hand and official seal of the notary or such other officer. An

assignment or a transmission of rights may be limited to a specified territory.

SECTION 215. Recordation of Rights. —

215.1. The Office shall record security agreements, assignments, licenses and other
instruments relating to the transmission of any right, title or interest in and
to intellectual property rights or applications to which they relate, which are
presented in due form to the Office for registration, in books and records kept
for the purpose. The certified true copy of the documents or its authenticated
digital copy shall be filed, and the contents thereof shall be kept confidential.
The Office may require that the original document be presented for
verification. Upon recording, the notice of the recordation shall be published in
the IPOPHL Gazette.

215.2. Such instruments shall not bind third persons unless it is so recorded in the
Office.

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SECTION 216. Intellectual Property and Material Object. Intellectual property is
distinct from the material object subject to it, Consequently, the transfer, assignment
or licensing of the intellectual property right shall not itself constitute a transfer of
the material object. Nor shall a transfer or assignment of the material object imply
transfer, assignment or licensing of the intellectual property right.

Chapter II INFRINGEMENT; CAUSES OF ACTION

SECTION 217. Patent, Utility Model, Industrial Design and Layout-Design
Infringement.- The making, using, offering for sale, selling, or importing a patented
or registered product or a product obtained directly or indirectly from a patented or
registered process, or the use of a patented or registered process without the
authorization of the patentee or registrant constitutes infringement: Provided, That,
this shall not apply to instances covered by Sections 73.1 and 73.4; Section 75; Section.
107.6; and Section 117 of this Code.

SECTION 218. Trademark Infringement

218.1. Infringing Acts. — The following acts committed without the consent of the
owner, shall constitute infringement:

a. The use in commerce of any reproduction, counterfeit, copy, or colorable
imitation of a registered mark or container or a dominant feature thereof
in connection with the sale, offering for sale, distribution, advertising of any
goods or services including other preparatory steps necessary to carry out
the sale of any goods or services on or in connection with which such use is

likely to cause confusion, or to cause mistake, or to deceive;

b. The reproduction, counterfeiting, copying or colorably imitation of a
registered mark or a dominant feature thereof and applying such
reproduction, counterfeit, copy or colorable imitation to labels, signs, prints,

packages, wrappers, receptacles or advertisements intended to be used in

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218.2.

commerce upon or in connection with the sale, offering for sale, distribution,
or advertising of goods or services on or in connection with which such use
is likely to cause confusion, or to cause mistake, or to deceive, shall be liable
in a civil action for infringement by the registrant for the remedies
hereinafter set forth; or

‘The possession of a counterfeit good or goods which he knows, or ought to
know, to be a counterfeit for purposes of selling, offering for sale,
distribution, or advertising of goods or services on or in connection with
which such use is likely to cause confusion, or to cause mistake, or to

deceive.

There shall be no infringement of trademarks or trade names of imported or

sold patented drugs and medicines allowed under Section 73.1 of this Act,
as well as imported or sold off-patent drugs and medicines; Provided, That
said drugs and medicines bear the registered marks that have not been
tampered, unlawfully modified, or infringed upon, under Section 218.1 of
this Code.

SECTION 219. Unfair Competition. The acts described in Sections 148.2 to 148.3

constitute unfair competition.

SECTION 220. False Designations of Origin; False Description or Representation. The

acts described in Section 149 constitute false designations of origin; or false

description or representations.

SECTION 221. Copyright and Related Rights Infringement. — Copyright or related

right infringement is the act of violating any of the exclusive economic rights of the

authors, performer's, producers of sound recordings, broadcasting organizations or

their assignees or successors-in-interest. Infringement is also committed when any

personwho at the time when copyright or a related right subsists in a work has

122


possession of an article which he knows, or ought to know, to be an infringing copy of

the work for the purpose of:

Selling, letting for hire, or by way of trade offering or exposing for sale,

or hire, the article;

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

Trade exhibit of the article in public, shall be guilty of an offense and

shall be liable on conviction to imprisonment and fine as above mentioned.

SECTION 222. Persons Liable for Infringement. — Any person who:

222.1.

. Directly commits an infringing act as defined in Sections 217, 218.1, 219,

220, and 221;

. With knowledge of infringing activity, induces, causes or materially

contributes to the infringing conduct of another;

. Aids, abets or directly or indirectly benefits from the infringing activity

of another person if the person benefiting has been given notice of the
infringing activity of another and has the right and ability to control the

activities of the other person;

. In case of patent infringement, provides the infringer with a component

of a patented product or of a product produced from a patented process
or knowing it to be especially adopted for infringing the patented
invention and not falling under the exceptions and limitations under
this Act.

222.2. Notwithstanding 222.1 (¢), internet service providers, domain name registries

and registrars, website owners, online intermediaries which merely provides
technical, automatic and passive data transmission, access or storage services

or such other similar online enablers shall not be liable for infringement or

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damages if upon obtaining knowledge or awareness of the infringing activity,
it will take down or block access to the infringing material or website within a

reasonable time.

Chapter IV CIVIL AND ADMINISTRATIVE REMEDIES

SECTION 223. Remedies. — The following remedies shall be available in civil and/or
administrative actions for infringement or violation of intellectual property rights
under this Act:

223.1. Provisional Remedies. —

a. Preliminary injunction including temporary restraining order;

b. Preliminary attachment; and

c. Seizure and impoundment during the pendency of the action upon such
terms and conditions as the court may prescribe, sales invoices and other
documents evidencing sales, all articles and their packaging alleged to
infringe an intellectual property right and implements as well as all plates,
molds, or other means for making such infringing goods as the court or the
office may order. In appropriate cases, the court may order the destruction
of any or all of the seized or impounded articles and their packaging, and
implements as well as all plates, molds, or other means for making such

infringing goods.

223.2. Other Remedies.

a. Permanent injunction;

b. Delivery and Disposal. - The infringing person shall deliver for
destruction or disposal without any compensation outside the channels
of commerce all infringing goods, devices, implements as well as all
plates, molds, or other means for making such infringing goods as the
court or the Office may order.

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In lieu of destruction, the court or the Office may, if warranted such as
in the nature of relief for victims of calamities and natural disasters
and/or humanitarian purposes, and upon consent of the right holder,
order the donation to distressed communities through the local
government units, or to charitable or disaster relief public and private
institutions. In the exercise of this power, the court or office shall ensure
that the infringing goods are disposed of outside the channels of
commerce in such a manner as to avoid any harm caused to the right
holder, and to minimize the risks of further infringement. In regard to
counterfeit goods, the simple removal of the trademark affixed shall not
be sufficient other than in exceptional cases which shall be determined
by the Regulations, to permit the release of the goods into the channels
of commerce: Provided further, That counterfeit or infringing goods that
pose a threat, or are harmful, to health, safety, and security shall not be
donated.

. Actual damages, including legal costs and other expenses, as may be
incurred due to the infringement as well as the profits the infringer may
have made due to such infringement, including advertising revenues
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
claimed, or, in lieu of actual damages and profits, such damages which
to the court or Office shall appear to be just and adequate, as well as
moral and exemplary damages, attorney’s fees, which the court or the
Office may deem proper and equitable; and the destruction of infringing
goods, articles and implements even in the event of acquittal in a

criminal case; or

In lieu of the above damages, statutory damages for all infringements
involved in the action at the election of the intellectual property right

owner at any time before final judgment is rendered a sum equivalent

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to the filing fee of the infringement action or one hundred thousand
pesos (PHP100,000.00) for copyright and three hundred thousand pesos
(PHP300,000.00) for trademark, patents, utility models, industrial
design and lay-out of integrated circuits.

However, in case the copyright infringer was not aware and had no reason to
believe that such acts constitute an infringement of copyright, the court
or office in its discretion may reduce the award of statutory damages to
a sum of not more than ten thousand pesos (PHP10,000.00), subject to
Subsection 224.8 below.

‘The amount of actual or statutory damages to be awarded for copyright
infringement shall be doubled against any person who:
i. Circumvents effective technological measures; or
ii, Having reasonable grounds to know that it will induce, enable, facilitate
or conceal the infringement, remove or alter any electronic rights
management information from a copy of a work, sound recording, or
fixation of a performance, or distribute, import for distribution, broadcast,
or communicate to the public works or copies of works without authority,
kmowing that electronic rights management information has been

removed or altered without authority.

d. Indirect contempt as provided for in Section 232.

203.3. Such other applicable remedies as may be provided under this Act, existing laws
or the Rules of Court.

SECTION 224. Notice Requirement for Claim of Damages. —

224.1. Damages cannot be recovered for acts of patent infringement committed before
the infringer had known, or had reasonable grounds to know of the patent.It
is presumed that the infringer had known of the patent if on the patented

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224.2,

224.3,

product, or on the container or package in which the article is supplied to the
public, or on the advertising material relating to the patented product or
process, are placed the words "Philippine Patent" with the number of the
patent.

This provision shall apply mutatis mutandis to utility model, industrial design
and layout-designs (topographies) of integrated circuits.

Likewise, in any suit for infringement, the owner of the registered mark shall
not be entitled to recover profits or damages unless the acts have been
committed with knowledge that such imitation is likely to cause confusion, or
to cause mistake, or to deceive. Such knowledge is presumed if the registrant
gives notice that his mark is registered by displaying with the mark the words
"Registered Mark" or the letter R within a circle or if the defendant had

otherwise actual notice of the registration.

Misrepresentation or false representation of such notice shall be punishable

under applicable laws.

Chapter V JURISDICTION

SECTION 225. Jurisdiction. —

225.1

225.2.

Civil or administrative actions under Part VII of this Act shall be cognizable by
the courts or by the Office and other administrative agencies with appropriate

jurisdiction under existing laws.

In any action involving intellectual property, the court or the Office may
determine the right to registration or ownership, and if applicable, order the
cancellation of a registration, in whole or in part, and otherwise rectify the
register by the substitution by the rightful owner as the registrant with
respect to the registration of any party to the action in the exercise of this.
Where the determination was made by the court, the judgment and orders
shall be certified by the court to the Director General, who shall cause the

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entry of the appropriate annotation upon the records of the respective Bureau,
and shall be controlled thereby.

225.3. The filing of a suit for infringement of intellectual property rights with the
proper court or the Office or other administrative agency shall exclude any
other court, the Office or other administrative agency from assuming
jurisdiction over a subsequently filed suit for infringement to enforce the
same. On the other hand, the earlier filing of petition for cancellation with the
Bureau of Legal Affairs shall not constitute a prejudicial question that must
be resolved before the court or other administrative agency decides the

infringement suit.

SECTION 226. Defenses in Action for Infringement. — In an action for infringement,
the defendant, in addition to other defenses available to him, may show the invalidity
of the patent, utility model, design or layout-design (topography) of integrated circuits
or any claim thereof, of the mark of ownership, or of the copyright, based on any of
the grounds on which a petition for cancellation can be brought under this Act
including Section 6 of R.A. No. 623, as amended by R.A. No. 5700.

SECTION 227. Notice of Filing Suit Given to the Director General. - It shall be the
duty of the clerks of such courts within one (1) month after the filing of any action,
suit, or proceeding involving any intellectual property granted protection by a mark
registered under the provisions of this act, to notify the director general in writing
setting forth: the names and addresses of the litigants and designating the number
of the registration or registrations and within one (1) month after the judgment is
entered or an appeal is taken, the clerk of court shall give notice thereof to the Office,
and the latter shall endorse the same upon the filewrapper of the said registration or
registrations, if applicable, and incorporate the same as a part of the contents of said

filewrapper.

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SECTION 228. Appeals - Appeals from decisions of courts shall be governed by the
Rules of Court.

Appeals from decisions of the Office shall be governed by Section 7.2(b) of this Act;
while those of other administrative agencies, as may be provided under the applicable

laws.

Chapter VI INSTITUTION OF ACTIONS

SECTION 229. Period to File Actions. — Actions may be filed for causes of action that
accrues during the term of protection of the intellectual property rights. Except as
otherwise provided in this Act; the period to file actions for infringement, unfair
competition and false designations of origin or false description of representation
under this Act may be filed within four (4) years from the time the cause of action
accrues or was discovered. Such right to institute actions is subject to estoppel, laches,

and acquiescence, where applicable.

Chapter VII CRIMINAL ACTIONS AND PENALTIES

SECTION 230. Criminal Action and Penalties. —

230.1 Independent of the civil and administrative remedies, persons liable for
infringement shall, upon conviction, shall be punished, by imprisonment and/or
fine, or both, at the discretion of the court, as follows:

a. Patent Infringement. — In infringement of industrial design, the offender
shall suffer imprisonment for a period of not less than three (3) years
but not more than five (5) years and/or a fine of not less than One
hundred thousand pesos (PHP 100,000.00) but not more than Three
hundred thousand pesos (PHP 300,000.00).

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b. Repetition of Patent Infringement. - If infringement of invention patents,
utility models, layout of integrated circuits is repeated by the infringer
or by anyone in connivance with him after finality of the judgment of the
court against the infringer, the offender shall suffer imprisonment for a
period of not less than three (3) years but not more than five (5) years
and/or a fine of not less than One hundred thousand pesos (PHP
100,000.00) but not more than Three hundred thousand pesos (PHP
300,000.00).

c. Trademark Infringement and Unfair Competition. — In trademark
infringement, the infringer shall suffer :

1. Imprisonment from three (8) years to five (5) years, or a fine ranging
from One hundred thousand pesos (PHP 100,000.00) to Four
hundred thousand pesos (PHP 400,000.00), or both for the first
offense;

2. Imprisonment from five (5) years and one (1) day to seven (7) years,
or a fine ranging from over Four hundred thousand pesos (PHP
400,000.00) to Two million pesos (PHP 2,000,000.00), or both for the
second offense;

3. Imprisonment from seven (7) years and one (1) day to ten (10) years,
or a fine ranging from over Two million pesos (PHP 2,000,000.00) to
Four million pesos (PHP 4,000,000.00), or both for the third or
oftener offense;

4. In case of counterfeit goods that threaten life and public health and
safety, the court shall impose the maximum penalty of ten (10) years
of imprisonment or a fine of Four million pesos (PHP 4,000,000), or
both.

d. False Designations of Origin; False Description or Representation. — Any
person committing the acts under Sec. 149 shall be punished by

imprisonment of two (2) years to five (6) years and a fine ranging from

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Fifty thousand pesos (PHP 50,000.00) to Two hundred thousand pesos
(PHP 200,000.00).

e. Copyright and Related Rights Infringement. — In copyright and related
rights infringement, the infringer shall suffer:

1. Imprisonment from three (3) years to five (5) years, or a fine ranging
from one hundred thousand pesos (P100,000) to three hundred
thousand pesos (P300,000), or both for the first offense;

2. Imprisonment from five (5) years and one (1) day to seven (7) years,
or a fine ranging from over three hundred thousand pesos (P300,000)
to one million pesos (P1,000,000), or both for the second offense;

3. Imprisonment from seven (7) years and one (1) day to ten (10) years,
or a fine ranging from over one million pesos (P1,000,000) to three
million pesos (P3,000,000), or both for the third or oftener offense;

Provided, that the respective maximum penalty stated above for the first,
second, third and subsequent offenses, shall be imposed when the infringement.
is committed through the circumvention of effective technological measures; or
the removal or alteration of any electronic rights management information from
a copy of a work, sound recording, or fixation of a performance, by a person,
knowingly and without authority; or the distribution, importation for
distribution, broadcast, or communication to the public of works or copies of
works, by a person without authority, knowing that electronic rights
management information has been removed or altered without authority; or

illicit streaming.

230.2 In determining the number of years of imprisonment and the amount of
fine, the court shall consider the value of the infringing materials that
the defendant has produced or manufactured and the damage that the

right owner has suffered

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by reason of the infringement. The court may also take into account whether the
infringement was committed willfully and/or in commercial scale or in relation
to other laws such as R.A. No, 10175, otherwise known as the Cybercrime
Prevention Act of 2012 and R.A. No. 8792, otherwise known as the Electronic
Act of 2000.

230.3 In all cases, subsidiary imprisonment in cases of insolvency.

Chapter VIII OTHER SANCTIONS

SECTION 231. Revocation of Business Permit, License, or Authority; Blacklisting from
Government Procurement. - Any person who refuses or fails to comply with the
decision or order of the Director General, the appropriate agency, including local
government units, upon recommendation of the Office, shall cancel, revoke, or
suspend any business permit, license and/or authority. Such person shall also be

blacklisted from government procurement transactions.

SECTION 232. Contempt

a. Direct Contempt. - A person guilty of misbehavior so as to obstruct or interrupt the
proceedings before the Office, including disrespect towards them, offensive
personalities toward others, or refusal to be sworn or to answer as a witness, or to
subscribe an affidavit or deposition when lawfully required to do so, may be
summarily adjudged in contempt and punished by a fine not exceeding Two
thousand pesos (PHP 2,000.00).

b. Indirect Contempt. - After a charge in writing has been filed, and an opportunity
given to the respondent to comment thereon within such period as may be fixed
by the Office and to be heard by himself or counsel, a person guilty of any of the

following acts may be punished for indirect contempt:

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a. Disobedience of or resistance to a lawful writ, process, order, or judgment
of the Office;

b. Any abuse of or any unlawful interference with the processes or proceedings
of not constituting direct contempt under this section;

c. Any improper conduct tending, directly or indirectly, to impede, obstruct,
or degrade the administration of justice;

d. Failure to obey a subpoena duly served.

If the respondent is adjudged guilty of indirect contempt he may be punished
by a fine not exceeding thirty thousand pesos (PHP 30,000.00).

c. The Director General shall promulgate the rules of procedure for the punishment

of contempt.

Chapter IX BORDER MEASURES

SECTION 233. Prohibition of Eniry into the Philippines. - Any infringing goods or
articles shall not be imported into the Philippines or admitted entry at any
customhouse of the Philippines. The owner, importer, or consignee of goods refused
entry at any customhouse under this section may have any recourse under the
customs revenue laws or may have the remedy given by this Act in cases involving

goods refused entry or seized.

SECTION 234. Importation and Exportation of Infringing Materials. - Subject to the
approval of the Secretary of Finance, the Commissioner of Customs is hereby
empowered to make rules and regulations for preventing the importation or
exportation of infringing articles prohibited under Part VI of this Act and under
relevant treaties and conventions to which the Philippines may be a party and for
seizing and condemning and disposing of the same in case they are discovered after

they have been imported or before they are exported.

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provisions of this Act, unless the applicants elect to prosecute said applications in
accordance with the Acts under which they were filed.

SECTION 240. Preservation of Existing Rights — Nothing herein shall adversely affect
the rights on the enforcement of rights in patents, utility models, industrial designs,

marks and works, acquired in good faith prior to the effective date of this Act.

SECTION 241. Notification on Berne Appendix ~ The Philippines shall by proper
compliance with the requirements set forth under the Appendix of the Berne
Convention (Paris Act, 1971) avail itself of the special provisions regarding
developing countries, including provisions for licenses grantable by competent
authority under the Appendix.

SECTION 242. Transitory Provision. - The employees of the offices or units that will
be abolished upon the effectivity of this Act shall be absorbed by the Office without
diminution of their rank, salaries, and other emoluments, in accordance with the

Office’s staffing pattern, subject to civil service laws, rules, and regulations.

SECTION 243. —-Repeals. ~

241.1. All laws, Acts, parts of Acts, rules of court, executive orders, and administrative
regulations which are inconsistent with this Code are hereby repealed.
Republic Act No.10372 or an Act Amending certain provisions of Republic Act
No. 8293; Republic Act 8293, as amended; Republic Act No. 165, as amended;
Republic Act No. 166, as amended; and Articles 188 and 189 of the Revised
Penal Code; Presidential Decree No. 49, including Presidential Decree No. 285,

as amended, are hereby repealed.
241.2. Marks registered under Republic Act No. 166 and Republic Act No. 8293 shall

remain in force but shall be deemed to have been granted under this Act and

shall be due for renewal within the period provided for under this Act and, upon

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SECTION 235. Disclosure of Information. - Where any article or its packaging or an
implement for making it is seized or detained under a valid search and seizure under
this Act is, or is reasonably suspected to be, by an authorized enforcement officer, in
violation of this Act, the said officer shall, wherever reasonably practicable, notify the
owner of the intellectual property rights in question or his authorized agent of the

seizure or detention, as the case may be.

PART VII $sFINAL PROVISIONS

SECTION 236. Equitable Principles to Govern Proceedings. - In all inter partes
proceedings in the Office under this Act, the equitable principles of laches, estoppel,

and acquiescence where applicable, may be considered and applied.

SECTION 287. Reverse Reciprocity of Foreign Laws. - Any condition, restriction,
limitation, diminution, requirement, penalty or any similar burden imposed by the
law of a foreign country on a Philippine national seeking protection of intellectual
property rights in that country, shall reciprocally be enforceable upon nationals of
said country, within Philippine jurisdiction.

SECTION 238. Compensation Structure. - The Office shall also institute its own
compensation structure: Provided, That the Office shall make its own system to
conform as closely as possible with the principles provided for under Republic Act No.
6758, as amended. The Office shall not be subject to the provisions of Republic Act
No. 7430.

SECTION 239. Applications Pending on Effective Date of Act — All applications for
patents pending in the Bureau of Patents, Trademarks and Technology Transfer shall
be proceeded with and patents thereon granted in accordance with the Acts under
which said applications were filed, and said Acts are hereby continued to be enforced,
to this extent and for this purpose only, notwithstanding the foregoing general repeal
thereof: Provided, That applications for utility models or industrial designs pending
at the effective date of this Act, shall be proceeded with in accordance with the

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renewal, shall be reclassified in accordance with the International
Classification.

241.3. The provisions of this Act shall apply to works in which copyright protection
obtained prior to the effectivity of this Act is subsisting: Provided, That the
application of this Act shall not result in the diminution of such protection.

SECTION 244. Separability - If any provision of this Act or the application of such
provision to any circumstances is held invalid, the remainder of the Act shall not be
affected thereby.

SECTION 245. Hffectivity This Act shalll take effect immediately upon its publication
in the Official Gazette or in at least two (2) newspapers of general circulation in the

Philippines.

Approved,

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