Republic of the Philippines
HOUSE OF REPRESENTATIVES
Quezon City

SEVENTEENTH CONGRESS
‘Third Regular Session

HOUSE BILL NO. 9148

Introduced by REP. FERJENEL G. BIRON, M.D.

AN ACT AMENDING CERTAIN PROVISIONS OF REPUBLIC ACT NO. 8293
ENTITLED “AN ACT PRESCRIBING THE INTELLECTUAL PROPERTY CODE AND
ESTABLISHING THE INTELLECTUAL PROPERTY OFFICE, PROVIDING FOR ITS

POWER AND FUNCTIONS AND FOR OTHER PURPOSES”

EXPLANATORY NOTE,

House Bill No, ___ seeks to further amend the provisions of Republic Act No.
8293, also known as the Intellectual Property Code of the Philippines, as previously
amended by Republic Act Nos. 9150, 9502 and 10372.

The legislative measure seeks to strengthen the Intellectual Property Office of
the Philippines as the lead government agency in Intellectual Property, bolstering its
organizational structure to maintain and implement effective, efficient, economical,
responsive, technology-driven and sustainable services and programs; protection,
enforcement and adjudication; promote and steer creativity, innovation, development,
utilization and commercialization that would benefit micro, small and medium
enterprises; enhance learning, advocacy; and support for the enhancement of digital
infrastructure and interconnectivity. Salient changes in this regard include:

Enhancing the functions of the Office of the Director General;

* Adding of a third Deputy Director General with an expertise in business
management;

* Transforming two bureaus (the Documentation, Information, and Technology
Transfer Bureau to become the Bureau of Innovation and Business
Development; the Management Information Service to become the Information
‘Technology Management Service) to enhance their strategic roles and functions
in relation to the Office’s mandate;

*  Institutionalizing an Intellectual Property Academy and the National Committee
on Intellectual Property Rights; and

© Modifying the jurisdiction of the Bureau of Legal Affairs.

The bill also incorporates changes on substantive law in the areas of patents,
trademarks, copyright, and emerging intellectual property related fields to conform
with international standards, trends and obligations and to implement national
policies. Such changes include:

Adopting a policy of international exhaustion for intellectual property rights to
spur innovation, facilitate transfer of technology, boost business or commercial
activity and access to information;

* Providing for secondary liability of infringement of IP rights for those persons
who benefit directly or indirectly from the infringing activity, as provided herein;

* Allowing for parallel filing of applications for patents and utility models;

* Redefinition of the scope of protection of industrial designs;

* Introducing a new part on innovation and licensing, and on creativity,
utilization, and commercialization of intellectual property;

Clarifying the registrability of marks, certification, and collective marks;


Adding the definition of “copyright”, “moral rights”, and “collective management
organizations”, and in clarifying fundamental concepts thereof;

Requiring the accreditation of collective management organizations with the
IPOPHL;

Updating provisions on limitations to copyright and related rights;

Refining provisions for deposit and recordation of copyrighted works and
providing for the cancellation of certificates of deposit and recordation;
Redefining “broadcasting” and “communication to the public of a performance
or sound recording” and defining “rebroadcasting” to incorporate to treaty
language;

Providing for “single equitable remuneration” for performers and producers of
sound recordings;

Clarifying further the limitations on the rights of performers, producers of
sound recordings, and broadcasting organizations; and

Updating provisions on infringement of copyright and related rights.

Furthermore, since the existing law is a consolidation of three (3) different laws

put together (Rep. Act. 165, Rep. Act. 166, and PD 49) in 1997, and of the previous
amendments which were necessary to comply with treaty obligations, this bill has
rationalized and put into logical coherence the common provisions such as
jurisdiction, remedies, and penalties and sanctions.

‘The amendment also seeks to correct typographical errors and inconsistencies

as appearing in the current law, and organize the provisions to make it easier
understood.

requested.

With the foregoing considerations in mind, the p: ge of this bill is earnestly

U
EL G. BIRON, M.D.
4*District, Iloilo


21
22
23

24

25
26
27
28
29
30
31
32

33
34
35
36
37

38
39
40
41

42
43

45
46
47
48
49
50
51
52
53
54
55
56
s7

Republic of the Philippines
HOUSE OF REPRESENTATIVES

Quezon City

SEVENTEENTH CONGRESS
‘Third Regular Session

HOUSE BILL NO. $148

CCEIVED
19

Introduced by REP. FERJENEL G. BIRON, M.D.

AN ACT AMENDING CERTAIN PROVISIONS OF REPUBLIC ACT NO. 8293
ENTITLED “AN ACT PRESCRIBING THE INTELLECTUAL PROPERTY CODE AND
ESTABLISHING THE INTELLECTUAL PROPERTY OFFICE, PROVIDING FOR ITS

POWER AND FUNCTIONS AND FOR OTHER PURPOSES”

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

SECTION 1. Sec. 2 of Rep. Act No. 8293, also known as the Intellectual Property Code
of the Philippines ("IP Code"), as amended by Rep. Act Nos. 9150, 9502 and 10372, is
hereby amended to read as follows:

SEC. 2. Declaration of State Policy. -

A) The State recognizes that an effective intellectual [and industrial]
property system PLAYS A PIVOTAL ROLE IN THE
ADVANCEMENT OF SOCIETY, INDUSTRY, AND THE
ECONOMY. IT is vital to the development of domestic and creative
AND INNOVATIVE activity; ENCOURAGES THE GROWTH OF
BUSINESS; STIMULATES TECHNOLOGICAL INNOVATIONS
AND facilitates transfer of technology; AND attracts foreign
investments,; and ensures market access for our products.

[ItJACCORDINGLY, 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 periods as provided in this
Act.

The use of intellectual property bears a social function. To this
end, the State shall promote the diffusion of knowledge and
information for the promotion of national development and
progress and the common good.

B) TO FACILITATE THE TRADE OF INDUSTRIAL PROPERTY AND
ACCESS TO AND DIFFUSION OF INFORMATION PROTECTED
BY COPYRIGHT AND RELATED RIGHTS, THE STATE
ESPOUSES A REGIME OF EXHAUSTION OF INTELLECTUAL
PROPERTY RIGHTS FOR PRODUCTS SOLD IN THE
PHILIPPINES OR ANYWHERE ELSE IN THE WORLD BY OR
WITH THE CONSENT OF THE INTELLECTUAL PROPERTY
OWNER.

€) It is also the policy of the State to streamline administrative
procedures of registering patents, trademarks and copyright;; to
liberalize the registration on the transfer of technology;;[and] to
enhance the enforcement of intellectual property rights in the
Philippines; AND TO PROMOTE THE USE OF ADVANCED AND
STATE-OF-THE-ART TECHNOLOGIES, INCLUDING ARTIFICIAL
INTELLIGENCE AND DATA ANALYTICS IN PROVIDING MORE
EFFICIENT AND QUALITY SERVICE TO THE PUBLIC.

a
Bl



D) THE STATE LIKEWISE AFFIRMS ITS COMMITMENT TO
PROMOTE AND ENHANCE DIGITAL INFRASTRUCTURE AND
INTERCONNECTIVITY, AND IN FACILITATING DOMESTIC AND
INTERNATIONAL COMMERCIAL ACTIVITIES THROUGH THE
USE OF DATA MESSAGES AND ELECTRONIC DOCUMENTS
WHILE PROMOTING AND UPHOLDING THE RIGHTS GRANTED
UNDER THIS ACT. (n)

Nowsenn

©

9 SECTION 2. Sec. 3 of the IP Code is hereby amended to read as follows:

10 SEC. 3. APPLICABILITY OF International Conventions and
n AGREEMENTS{Reciprocity]. - Any person who is a national or who is
2 domiciled or has a real and effective industrial establishment in a
13 country which is a party to any convention, treaty or agreement relating
4 to intellectual property rights or the repression of unfair competition, to
15 which the Philippines is also a party, or extends reciprocal rights to
16 nationals of the Philippines by law, shall be entitled to benefits to the
v7 extent necessary to give effect to any provision of such convention, treaty
18 or reciprocal law, in addition to the rights to which any owner of an
19 intellectual property right is otherwise entitled by this Act. [(n)] (a)

20

21 SECTION 3. Sec. 4 of the IP Code is hereby amended to read as follows:

22 SEC. 4. Definitions. -

23 4.1, "INTELLECTUAL PROPERTY (IP)" REFERS TO CREATIONS OF
24 THE MIND AND INCLUDES:

25 a) INVENTIONS AND UTILITY MODELS:

26 b) INDUSTRIAL DESIGNS AND LAYOUT-DESIGNS
7 (TOPOGRAPHIES) OF INTEGRATED CIRCUITS;

28 c) TRADEMARKS, SERVICE MARKS, AND GEOGRAPHICAL
29 INDICATIONS; AND

30 d) WORK PROTECTED BY COPYRIGHT AND RELATED RIGHTS,
31 SUCH AS LITERARY AND ARTISTIC WORKS, AND
32 PERFORMANCES, SOUND RECORDINGS, AND BROADCASTS.
33 (n)

34 (4.1]4.2. The term “intellectual property rights” REFERS TO RIGHTS
35 [consists of]:

36 a) PROVIDED UNDER THIS ACT, SUCH AS PATENT RIGHTS,
37 TRADEMARK RIGHTS, AND COPYRIGHT AND RELATED
38 RIGHTS; AND

39 b) IDENTIFIED IN OTHER RELATED LAWS AND INTERNATIONAL
40 AGREEMENTS, SUCH AS GEOGRAPHICAL INDICATIONS AND
41 THE PROTECTION OF UNDISCLOSED INFORMATION.

42 [a) Copyright and Related Rights;]

43 (b) Trademarks and Service Marks;]

44 [c) Geographic Indications;]

4s [d) Industrial Designs;]

46 [e)Patents;]

47 [)Layout-Designs (Topographies) of Integrated Circuits; and]

48 [g)Protection of Undisclosed Information (4.1a) (n, TRIPS).

49 4.3. “INNOVATION” MEANS THE CREATION OF NEW IDEAS THAT

50 RESULTS IN THE DEVELOPMENT OF NEW OR IMPROVED


16
7

18
19
20
21

22
23
24
25
26

27
28

29
30
31
32
33

34
35

36
37
38

39
40

41
42
43
44
45

46
47
43

49
50

51

PRODUCTS, PROCESSES, OR SERVICES WHICH ARE THEN
SPREAD OR TRANSFERRED ACROSS THE MARKET. (N)

[4.2.]4.4 The term "technology transfer arrangements’ refers to contracts
or agreements involving the transfer of systematic knowledge for
the manufacture of a product, the application of a process, or
rendering of a service including management contracts; 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. (4.2)

[4.3.]4.5 The term "Office" refers to the Intellectual Property Office
created by this Act. (4.3)

[4.4.4.6 The term "IPO Gazette’ refers to the PRINTED OR
ELECTRONIC PUBLICATION OF/gazette published by] the Office
under this Act. (4.4)

SECTION 4. Sec. 5 of the IP Code is hereby amended to read as follows:

SEC. 5. Functions of the Intellectual Property Office (IPO). - 5.1. To
administer and implement the State policies declared in this Act, there is
hereby created the Intellectual Property Office (IPO) which shall have the
following functions:

a) Examine applications AND{for] grant of letters patent for
inventions; and register utility models,[and] industrial designs,
LAYOUT-DESIGNS (TOPOGRAPHIES) OF INTEGRATED
CIRCUITS, TRADEMARKS AND OTHER MARKS OF
OWNERSHIP, AND GEOGRAPHICAL INDICATIONS; (5. 1(a)a)

[b}] [Examine applications for the registration of marks, geographic
indication, integrated circuits;]

[c)]_B) Register technology transfer arrangements and settle
disputes [involving technology transferJON payments INVOLVING
THE SAME[covered by the provisions of Part Il, Chapter IX on
Voluntary Licensing] and develop and implement strategies to
promote and facilitate technology transfer; (5.1(c)a)

[d)Promote the use of patent information as a tool for technology
development;}

[e)]_C) Publish regularly in its own publication the patents, marks,
utility models and industrial designs, issued and approved, and
the technology transfer arrangements registered;

[f|D) Administratively adjudicate DISPUTES INVOLVING|affecting]
intellectual property rights; and (5.1(f)a)

E) Coordinate with other government agencies, INSTITUTIONS,
and the private 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. (5.1(g)a)

5.2. 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. (n)

5.3. IN THE EXERCISE OF THESE FUNCTIONS, THE OFFICE SHALL
HAVE THE AUTHORITY TO:

A) ESTABLISH AND COLLECT FEES AND OTHER CHARGES; AND

3


15
16

7
18
19

20
21
22
23
24
25

26
27

28
29

30
31

32
33

34
35

36
37

38
39

41
42
43

44
45
46

a7
48

49
50

B) ESTABLISH RULES AND PROCEDURES INCLUDING
REASONABLE TIMELINES CONSISTENT WITH
INTERNATIONAL TREATIES, AGREEMENTS, AND BEST
PRACTICES, AND COMMENSURATE TO THE EXTREMELY
COMPLICATED AND EXCEPTIONALLY TECHNICAL FIELD OF
INTELLECTUAL PROPERTY. THESE RULES OF PROCEDURES,
WHICH MAY INCLUDE THE GRANT OF PATENTS,
REGISTRATION OF UTILITY MODELS, INDUSTRIAL DESIGNS,
LAYOUT-DESIGNS (TOPOGRAPHIES) OF INTEGRATED
CIRCUITS, MARKS OF OWNERSHIP, AND THE ADJUDICATION
OF INTELLECTUAL PROPERTY DISPUTES, SHALL BE
EXEMPTED FROM ANY LAW THAT PRESCRIBES TIMELINES
FOR GOVERNMENT TRANSACTIONS. (N)

SECTION 5. Sec. 6 of the IP Code is hereby amended to read as follows:

SEC. 6. The Organizational Structure of the IPO. - 6.1 The Office shall be
headed by a Director General who shall be assisted by THREE (3) [two
(2)] Deputies Director General.

6.2. The Office shall COMPRISE [be divided into] seven (7) Bureaus AND
AN INTELLECTUAL PROPERTY ACADEMY, each of which shall be
headed by a Director and [assisted by] an Assistant Director AND SUCH
OTHER OFFICES AS MAY BE ESTABLISHED BY THE DIRECTOR
GENERAL.[The] THE SEVEN (7) Bureaus OF THE OFFICE are AS
FOLLOWS:

a) The Bureau of Patents;
b) The Bureau of Trademarks;

c) The Bureau of [Legal Affairs] COPYRIGHT AND RELATED
RIGHTS;

@) The (Documentation, Information and Technology Transfer]
Bureau OF LEGAL AFFAIRS

e) The [Management Information System and EDP] Bureau OF
INNOVATION AND BUSINESS DEVELOPMENT;

f) The (Administrative, Financial and Personnel Service Bureau]
INFORMATION TECHNOLOGY MANAGEMENT SERVICE; and

g) The [Bureau of Copyright and Other Related Rights] FINANCIAL
MANAGEMENT AND ADMINISTRATIVE BUREAU. (6.2a)

6.3. The Director General, Deputies Director General, Directors and
Assistant Directors shall be appointed by the President.[and] 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 6. Sec. 7 of the IP Code is hereby amended to read as follows:

SEC. 7. The OFFICE OF THE Director General [and Deputies Director
General}. -

[7.4.]7.1. [The Office of the Director General.) COMPOSITION - The Office
of the Director General shall consist of the Director General and the


Rune

au

10

cB
12

13
14
15

16
7
18
19
20
21
22

23
24

25
26

27
28
29
30
31
32
33
34
35
36

37
38
39
40

41
42

43
44
45
46

47
48
49
50

51
52

Deputies Director General, their immediate staff, and such Offices and
Services that the Director General will set up to support direetly the
PLANS AND PROGRAMS OF THE Office of the Director General-,
INCLUDING BUT NOT LIMITED TO:

A) INTELLECTUAL PROPERTY POLICY, ADVOCACY, AND

RESEARCH;

B) INTERNATIONAL AFFAIRS;
(C) COMMUNICATIONS, PROMOTION, AND MARKETING;

D) STRATEGY AND KNOWLEDGE MANAGEMENT; AND

E) INTELLECTUAL PROPERTY RIGHTS ENFORCEMENT.

THE DIRECTOR GENERAL MAY ALSO SET UP REGIONAL,
PROVINCIAL, AND SATELLITE OFFICES AS NEEDED.

[7.1.]7.2. Functions. - The OFFICE OF THE Director General, THROUGH

THE DIRECTOR GENERAL, shall exercise the following powers
and functions:

Manage and direct all functions and activities of the Office,
including the promulgation of rules and regulations to implement
the objectives, policies, plans, programs and projects of the Office:
Provided, That THE DIRECTOR GENERAL SHALL BE SUBJECT
TO THE SUPERVISION OF THE SECRETARY OF TRADE AND
INDUSTRY in the exercise of the 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 government in relation

to the enforcement of intellectual property rights;

(3) [the recognition of attorneys, agents, or other persons

representing applicants or other parties before the Office;
and (4)] the establishment of fees for the filing and
processing of an application for a patent, utility model or
industrial design, LAYOUT-DESIGN (TOPOGRAPHY) OF
AN INTEGRATED CIRCUIT, or mark or a collective mark,
geographic indication and other marks of ownership, and
for all other services performed and materials furnished by
the Office, EXCEPT THE FEES THAT MAY BE CHARGED
BY THE IP ACADEMY; AND

(4) DESIGNATE INTELLECTUAL PROPERTY ATTACHES TO

OTHER COUNTRIES OR REPRESENTATIVES TO
INTERNATIONAL oR LOCAL AGENCIES,
ORGANIZATIONS, AND ENTITIES.

b) EXERCISE, IN CONTESTED PROCEEDINGS IN THE OFFICE,

THE FOLLOWING:
(1) EXCLUSIVE ORIGINAL JURISDICTION OVER THE

GRANT OF COMPULSORY LICENSES, AS WELL AS
SPECIAL COMPULSORY LICENSES INVOLVING
PATENTED DRUGS AND MEDICINES.

THE DECISIONS OF THE OFFICE OF THE DIRECTOR
GENERAL UNDER THIS PROVISION SHALL BE
APPEALABLE TO THE COURT OF APPEALS IN
ACCORDANCE WITH THE RULES OF COURT; (N)

(2) [Exercise] exclusive appellate jurisdiction over all decisions

rendered by the Director of Legal Affairs, the Director of

5


44
45,
46
47
48
49
50
51
52
53
54
55
56
57
58

Patents, the Director of Trademarks, the Director of
Copyright and Other] Related Rights, and the Director of
the [Documentation, Information and Technology Transfer]
Bureau OF INNOVATION AND BUSINESS
DEVELOPMENT.

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.

The decisions of the OFFICE OF THE Director General in
the exercise of {his|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 [Other] Related Rights shall be
appealable to the Court of Appeals in accordance with the
Rules of Court; and those in respect of the decisions of the
[Director of Documentation, Information and Technology
‘Transfer|Bureau OF INNOVATION AND BUSINESS
DEVELOPMENT shall be appealable to the Secretary of
‘Trade and Industry.

(3) THE POWER TO HOLD IN CONTEMPT ALL THOSE WHO
DISREGARD ORDERS OR WRITS ISSUED IN THE
COURSE OF THE PROCEEDINGS PROVIDED IN THE

PRECEDING TWO SUBSECTIONS; (7.1(b)a)

©) xxx

4) Conduct visits during reasonable hours to establishments and
businesses BASED ON REPORT OR INFORMATION BY THE
OWNER(S) OR HOLDER(S) OF THE INTELLECTUAL PROPERTY
RIGHTS received by the office, OF [engaging in] activities
SUSPECTED TO BE IN VIOLATION [violating intellectual property
rights and provisions] of this Act; [and]

E) BASED ON A VERIFIED COMPLAINT, REPORT OR
INFORMATION RECEIVED BY THE OFFICE, TO COORDINATE
WITH THE APPROPRIATE AGENCY, BODY, OR
INTERMEDIARY SERVICE PROVIDER, TO UNDERTAKE
URGENT MEASURES TO ADDRESS ANY ALLEGED VIOLATION
OF INTELLECTUAL PROPERTY RIGHTS, SUCH AS THROUGH
BLOCKING ACCESS TO WEBSITES OR TAKING DOWN
ALLEGEDLY INFRINGING MATERIALS;

F) ((e)] Such other functions in furtherance of THE [protecting IP
rights and] objectives of this Act.

[7.2.]7.3.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 TWO (2) DEPUTIES [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 THIRD DEPUTY DIRECTOR GENERAL SHALL HAVE
AT LEAST A MASTER’S DEGREE IN BUSINESS MANAGEMENT OR
OTHER SIMILAR COURSES WITH SEVEN (7) YEARS EXPERIENCE IN
MANAGEMENT. [in] In the selection of the Director General and the
Deputies Director General, consideration shall be 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.


13

14
15

16
17

18
19
20
21
22
23
24
25

26
27
28

29
30
31

32
33

34

35
36

37
38
39

4
42
43
44
45,
46
a7

48
49
50

7.3.7.4. Term of Office. - The Director General and the Deputies
Director General shall be appointed by the President for a FULL term of
five (5) years, RECKONED FROM THE DATE OF APPOINTMENT, and
shall be eligible for reappointment only once: [Provided, That the first
Director General shall have a first term of seven (7) years. Appointment
to any vacancy shall be only for the unexpired term of the predecessor.]
(7.3a)

(7.4. The Office of the Director General. - 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 directly the Office of the Director
General]

SECTION 7. Sec. 8 of the IP Code is hereby amended to read as follows:

SEC. 8. The Bureau of Patents. - The Bureau of Patents shall have the
following functions:

B.1.xxx
8.2.xxx

8.3. ACCEPT AND HOLD IN CUSTODY, IN ACCORDANCE WITH THE
RELEVANT LAWS ON ARCHIVING, ALL THE APPLICATIONS 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;[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. (n)]

8.4ESTABLISH AND MAINTAIN REGISTRIES OR DATABASES OF
PATENTS, INDUSTRIAL DESIGNS, UTILITY MODELS, AND LAYOUT-
DESIGNS OF INTEGRATED CIRCUITS;

8.5. PUBLISH APPLICATIONS AND GRANTS OF PATENTS; AND
REGISTRATIONS OF INDUSTRIAL DESIGNS, UTILITY MODELS, AND
LAYOUT-DESIGNS OF INTEGRATED CIRCUITS; AND

8.6. PERFORM SUCH OTHER FUNCTIONS RELATED TO THE
FOREGOING.

SECTION 8. Scc. 9 of the IP Code is hereby amended to read as follows:

SEC. 9. The Bureau of Trademarks. - The Bureau of Trademarks shall
have the following functions:

9.1. Search and examination of the applications for the registration of
marks, geographicAL indications and [other marks of ownership} and the
issuance of the certificates of registration; [and] (a)

9.2. 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; (N) [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. (n)]

9.3 ESTABLISH AND MAINTAIN REGISTRIES OR DATABASES OF
TRADEMARKS, WELL-KNOWN MARKS, OTHER MARKS OF
OWNERSHIP, AND GEOGRAPHICAL INDICATIONS; (N)


9.4. PUBLISH APPLICATIONS AND REGISTRATIONS OF

2 TRADEMARKS, OTHER MARKS OF OWNERSHIP, AND
3 GEOGRAPHICAL INDICATIONS; AND (N)

4 9.5. PERFORM SUCH OTHER FUNCTIONS RELATED TO THE
5 FOREGOING. (N)

6 SECTION 9. Section 9A of the IP Code is hereby amended to read as follows:

SEC. 9A. The Bureau of Copyright and [Other] Related Rights. - The

8 Bureau of Copyright and Other Related Rights shall have the following
9 functions:

10 9A.1. Exercise original jurisdiction to resolve disputes relating to
uu COPYRIGHT AND RELATED RIGHTS, EXCEPT THOSE FALLING
12 WITHIN THE JURISDICTION OF THE BUREAU OF LEGAL
13 AFFAIRS|the terms of a license involving the author’s right to public
14 performance or other communication of his work;]

15 9A.2. ACCEPT, REVIEW AND DECIDE ON APPLICATIONS FOR THE
16 ACCREDITATION OF COLLECTIVE MANAGEMENT ORGANIZATIONS.
17 OR SIMILAR ENTITIES;

18 9A.3. FORMULATE AND IMPLEMENT PLANS AND PROJECTS TO
19 PROMOTE A CULTURE OF CREATIVITY AND RESPECT FOR
20 ARTISTIC CREATION;[Conduct studies and researches in the field of
aa copyright and related rights; and (n)]

2 9A.4. ESTABLISH AND MAINTAIN REGISTRIES OR DATABASES
2B INVOLVING COPYRIGHT AND RELATED RIGHTS IN COORDINATION
24 WITH OTHER GOVERNMENT AGENCIES, ENTITIES, AND PRIVATE
25 STAKEHOLDERS;(Provide other copyright and related rights service and
26 charge reasonable fees therefor; and (n)]

27 9A.5. PERFORM SUCH OTHER FUNCTIONS AND SERVICES
28 RELATED TO THE FOREGOING. (9A.4)

29 ~SECTION 10. Sec. 10 of the IP Code is hereby amended to read as follows:
30 SEC. 10. The Bureau of Legal Affairs. - The Bureau of Legal Affairs shall
31 have the following functions:

32 10.1. Hear and decide opposition to the application for registration of
33 marks; DECLARATION OF WELL-KNOWN MARKS; cancellation of
34 trademarks, REVOCATION OF DECLARATION OF WELL-KNOWN
35 MARKS; subject to the provisions of Section 64, cancellation of patents,
36 utility models, and industrial designs, AND LAYOUT-DESIGNS OF
37 INTEGRATED CIRCUITS; PETITION FOR DECLARATION AS TRUE
38 AND ACTUAL INVENTOR; REVOCATION OF DECLARATION AS TRUE
39 AND ACTUAL INVENTOR; PETITION FOR DECLARATION OF
40 OWNERSHIP OR OF HAVING THE RIGHT TO INTELLECTUAL
41 PROPERTY, REVOCATION OF DECLARATION OF OWNERSHIP OR OF
a2 HAVING THE RIGHT TO INTELLECTUAL PROPERTY; [and petitions for
43 compulsory licensing of patents;] (10. 1a)

44 10.2.

45 (a) Exercise original AND EXCLUSIVE jurisdiction in administrative
46 complaints for violations of laws involving intellectual property
47 rights: Provided, [That its jurisdiction is limited to complaints
48 where the total damages claimed are not less than Two hundred
49 thousand pesos (Php 200,000): Provided further,] That availment
50 of the provisional remedies may be granted in accordance with the
Sl Rules of Court. The [Director of Legal Affairs|]BUREAU shall have
52 the power to hold and punish for contempt alll those who disregard

53 orders or writs issued in the course of the proceedings. (10.2(a)a)


oe vow

©

10
1

12
13
14

15
16
7
18
19
20
21
22

23

24
25
26
27
28
29
30
31

32
33
34
35
36

37
38
39

40
41
42
43
44
45

46
a7

48
49

(b) After formal investigation, the [Director for Legal Affairs|BUREAU
may impose one (1) or more of the following administrative
penalties:

fi)
(ii)

(iii)

(iv)

tv)

(vi)

(vii)

wii)

(ix)

&)

xxx

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:

(1) 2000
(2) x00
(3) xxx
(4) x20

The [Director of Legal Affairs]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 [Director of Legal Affairs|BUREAU, such as by 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 [he] may provide;

xx

‘The imposition of administrative fines in such amount as
deemed reasonable by the Director of Legal Affairs, which
shall in no case be less than Five thousand pesos (Php
5,000) nor more than FIVE [One] hundred [fifty] thousand
pesos (Php 500,000[150,000)]. In addition, an additional
fine of not [more]LESS than One thousand pesos (Php
1,000) shall be imposed for each day of continuing
violation;

‘The cancellation of any [permit,] 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 [Director of Legal Affairs]BUREAU may deem
reasonable which shall not exceed one (1) year;

The withholding of any [permit,] 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, ATTORNEY'S FEES, AND
COSTS OF LITIGATION;

Censure; and

Other analogous penalties or sanctions. (10.2(b)a)

10.3. SETTLE DISPUTES INVOLVING TECHNOLOGY TRANSFER
PAYMENTS; (11.8A)

10.4. ADMINISTER AN ALTERNATIVE DISPUTE RESOLUTION
‘MECHANISM; AND (N)


wWOVaue ene

12

13
14
15
16
7

18
19
20

21
22
23
24
25
26

27
28
29

30
31
32

33
34
35
36
37
38

39
40
a

a2
43

44
45

46
47
48
49
51

52

10.5. PROVIDE ASSISTANCE TO OTHER BUREAUS AND OFFICES OF
‘THE IPO, INCLUDING LEGAL REVIEW, STUDY, AND SIMILAR TASKS.
«N)

{10.3.]10.6. 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. (10.3a, 231)

SECTION 11. Sec. 11 of the IP Code is hereby amended to read as follows:

SEC. 11 [The Documentation, Information and Technology Transfer]
Bureau OF INNOVATION AND BUSINESS DEVELOPMENT. - The
[Documentation, Information and Technology Transfer] Bureau of
INNOVATION AND BUSINESS DEVELOPMENT shall have the following
functions:

11.1. FOSTER INNOVATION AND BUSINESS DEVELOPMENT
‘THROUGH: [Support the search and examination activities of the Office
through the following activities:]

(a) PROMOTING THE USE OF PATENT INFORMATION AS A
STRATEGIC TOOL TO FACILITATE THE DEVELOPMENT OF
TECHNOLOGY IN THE COUNTRY; [Maintain and upkeep
classification systems whether they be national or international
such as the International Patent Classification (IPC) system;]
(5.1(d)a)

(b) PERFORMING PATENT SEARCH, ANALYTICS, MAPPING, AND
SIMILAR ACTIVITIES;[Provide advisory services for the
determination of search patterns;] (n)

(c) REGISTERING TECHNOLOGY TRANSFER ARRANGEMENTS;
[Maintain search files and search rooms and reference libraries;
and] (n)

(d) MAINTAINING REGISTRIES OF SECURITY AGREEMENTS, AS
WELL AS 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. (n) [Adapt and package industrial property information. |

(e) DEVELOPING PROGRAMS TO PROMOTE CREATIVITY,
INNOVATION, AND UTILIZATION OF INTELLECTUAL
PROPERTY;

(f) PROVIDING TRAINING AND SERVICES RELATED TO THE
FOREGOING; AND (n)
11.2. Establish networks WITH [orJINNOVATORS AND INNOVATING
CENTERS [intermediaries or regional representatives.] (11.2a)

{11.3. Educate the public and build awareness on intellectual property
through the conduct of seminars and lectures, and other similar
activities;]

[11.4. Establish working relations with research and development
institutions as well as with local and international intellectual property
professional groups and the like;]

{11.5. Perform state-of-the-art searches;]

10


1 [11.6. Promote the use of patent information as an effective tool to

2 facilitate the development of technology in the country:]

3 [11.7. Provide technical, advisory, and other services relating to the

4 licensing and promotion of technology, and carry out an efficient and

5 effective program for technology transfer; and]

6 [11.8. Register technology transfer arrangements, and settle disputes

7 involving technology transfer payments. (n)]

8

9 SECTION 12. A new Sec. 11A is hereby inserted after Sec. 11 of the IP Code, to

10 read as follows:

cb

2 SEC. 114. INTELLECTUAL PROPERTY ACADEMY (IP ACADEMY). -
B 11A.1, AN ACADEMY FOR INTELLECTUAL PROPERTY SHALL SERVE AS
14 THE COUNTRY’S CENTER OF TRAINING AND RESEARCH ON
15 INTELLECTUAL PROPERTY. FOR THIS PURPOSE, THE IP ACADEMY
16 SHALL:

v7 A) ADOPT AND IMPLEMENT CAPACITY BUILDING PROGRAMS AND
18 ACTIVITIES TO BUILD AWARENESS AND RESPECT FOR
19 INTELLECTUAL PROPERTY;

20 B) PREPARE MODULES AND COURSES, CONDUCT LECTURES ON
21 INTELLECTUAL PROPERTY AND SUBJECT MATTER RELATED TO
2 INTELLECTUAL PROPERTY, AND GRANT THE CORRESPONDING
23 CERTIFICATES AND DIPLOMAS;

24 C) ADMINISTER PROGRAMS ON THE RECOGNITION OF ATTORNEYS,
25 AGENTS, OR OTHER PERSONS REPRESENTING APPLICANTS OR
26 OTHER PARTIES BEFORE THE OFFICE;

27 D) ESTABLISH PARTNERSHIPS AND COOPERATION ARRANGEMENTS
28 WITH OTHER LOCAL OR FOREIGN AGENCIES, EDUCATIONAL
29 INSTITUTIONS, AND ORGANIZATIONS TO PROMOTE
30 INTELLECTUAL PROPERTY EDUCATION IN THE COUNTRY;

31 E) ACCEPT DONATIONS FROM ANY LEGAL OR LEGITIMATE SOURCE,
32 FOREIGN OR LOCAL, FOR USE IN ANY OF ITS PROGRAMS,
33 PROJECTS AND ACTIVITIES; AND

34 F) ESTABLISH A ROSTER OF FACULTY AND LECTURERS, AND
35 ENGAGE THE SERVICES OF CURRENT EMPLOYEES OF THE
36 OFFICE, AND OTHER RESOURCE PERSONS AND EXPERTS IN THE
37 FIELD.

38 11A.2. THE DIRECTOR GENERAL SHALL APPROVE THE:

39 A) FEES CHARGED BY THE ACADEMY;

40 B) THE POOL OF LECTURERS AND THEIR REMUNERATION; AND

a1 C) THE HONORARIA THAT MAY BE PAID TO EMPLOYEES OF THE
42 OFFICE.

43

44 SECTION 13. Sec. 12 of the IP Code is hereby amended to read as follows:

4s

46 SEC. 12. The INFORMATION TECHNOLOGY Management [information]
47 Service. - The INFORMATION TECHNOLOGY Management [Information]

48 Service shall:

iw


Nousune

10
1

12
13
14

15
16
7
18
19
20

a

22
23
24
25
26
27
28
29
30
31
32
33
34

35
36

37
38
39

41
42
43
4a
45

46
47

49

50
51
52
53
54
55

12.1. 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 [Conduct testing of
systems, contracts with firms, contracting, purchase and maintenance of
equipment, design and maintenance of systems, user consultation, and the
like; and]

12.2, DEVELOP AND MAINTAIN DATABASES, APPLICATION SYSTEMS,
AND NETWORK INFRASTRUCTURE SYSTEMS TO SUPPORT ALL OFFICE
AND BUREAU OPERATIONS. [Provide management information support and
service to the Office.]

SECTION 14. Sec. 13 of the IP Code is hereby amended to read as follows:

SEC. 13. The FINANCIAL MANAGEMENT AND ADMINISTRATIVE
[Administrative, Financial and Human Resource Development Service]
Bureau. - THE FINANCIAL MANAGEMENT AND ADMINISTRATIVE
BUREAU SHALL COMPRISE THREE (3) DIVISIONS, NAMELY: THE
ADMINISTRATIVE DIVISION, THE FINANCIAL MANAGEMENT
DIVISION, AND THE HUMAN RESOURCE DEVELOPMENT DIVISION.

13.1, The Administrative DIVISION [Service] shall:

(a) Provide services relative to procurement and allocation of supplies
and equipment, transportation, messengerial work, cashiering,
payment of salaries and other [Office's] obligations OF THE
OFFICE, [office] maintenance-AND proper safety and security of
the Office, AS WELL AS [and] other utility services; [and]

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

(6) {(b)] Receive all applications filed with the Office and collect fees
therefore; [and (c) Publish patent applications and grants,
trademark applications, and registration of marks, industrial
designs, utility models, geographic indication, and lay-out-designs
of integrated circuits registrations.]

(13.2. The Patent and Trademark Administration Services shall perform
the following functions among others:]

[(a) Maintain registers of assignments, mergings, licenses, and
bibliographic on patents and trademarks;}

[(b) Collect maintenance fees, issue certified copies of documents in
its custody and perform similar other activities; and]

[(cJHold in custody all the applications filed with the office, and all
patent grants, certificate of registrations issued by the office, and the
like.]

[13.3.]13.2. The Financial MANAGEMENT DIVISION [Service] 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; and (13.3a)

(13.4.]13.3, The Human Resource Development DIVISION [Service] 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. (13.4a)

12


SECTION 15.
Code, to read as follows:

SEC. 13A. THE NATIONAL COMMITTEE ON INTELLECTUAL
PROPERTY RIGHTS (NCIPR). - THERE SHALL BE CREATED A
NATIONAL COMMITTEE ON INTELLECTUAL PROPERTY RIGHTS
UNDER THIS ACT.

13A.1. COMPOSITION. - THE COMMITTEE SHALL BE COMPOSED OF
THE INTELLECTUAL PROPERTY OFFICE AS CHAIR WITH THE
FOLLOWING MEMBERS:

A) DEPARTMENT OF TRADE AND INDUSTRY;

B) DEPARTMENT OF JUSTICE;

C) DEPARTMENT OF INTERIOR AND LOCAL GOVERNMENT;

D) BUREAU OF CUSTOMS;

E) NATIONAL TELECOMMUNICATIONS COMMISSION;

F) OPTICAL MEDIA BOARD;

G) NATIONAL BUREAU OF INVESTIGATION;

H) PHILIPPINE NATIONAL POLICE;

1) FOOD AND DRUG ADMINISTRATION;

J) NATIONAL BOOK DEVELOPMENT BOARD;

K) OFFICE OF THE SPECIAL ENVOY FOR TRANSNATIONAL
CRIMES; AND

1) SUCH OTHER AGENCIES AS MAY BE CALLED UPON BY THE
COMMITTEE. (N)

13A.2. FUNCTIONS. - THE NCIPR SHALL ACT AS THE
COORDINATING 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;

D) 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
IPR ENFORCEMENT. (N)

13A.3. TO PERFORM THE FUNCTIONS IN THE IMMEDIATELY
PRECEDING SUBSECTION, 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 OWN FUNDS. (N)

13A.4, THE IPO SHALL PROVIDE SECRETARIAT SERVICES TO THE
COMMITTEE. (N)

SECTION 16. Sec. 14 of the IP Code is hereby amended to read as follows:

13

‘A new Section 13A is hereby inserted after Section 13 of the IP


1 SEC. 14. Use of Intellectual Property Rights Fees by the IPO. - 14.1. For a
2 more effective and expeditious implementation of this Act, the Director
3 General shall be authorized to retain, without need of a separate
4 approval from any government agency, and subject only to the existing
5 accounting and auditing rules and regulations, all the fees, fines,
6 royalties and other charges, collected by the Office, INCLUDING
7 INTEREST INCOME, under this Act and the other laws that the Office
8 will be mandated to administer. SUCH AMOUNTS AND INTEREST MAY

9 BE USEDJ, for use in its] to PERFORM ITS MANDATE, TO IMPROVE
10 THE DELIVERY OF ITS SERVICES TO THE PUBLIC, OR TO SUPPORT
1 ITS PROGRAMS and operations, SUCH ASjlike upgrading of its facilities,
2 equipment outlay,JHUMAN RESOURCE DEVELOPMENT AND CAPITAL
B OUTLAY, {human resource development, andJINCLUDING the
14 acquisition of EQUIPMENT, LAND AND/OR CONSTRUCTION of the
15 appropriate office spaceS AND FACILITIES, AND ANY IMPROVEMENTS
16 THEREON. [among others, to improve the delivery of its services to the
7 public.) This amount, [which shall be in addition to the Office's annual
18 budget,] shall be deposited and maintained in aN [separate] account or
19 fund, which may be used or disbursed directly by the Director General.

20 14.2. xxx

21

22

23 SECTION 17. Sec. 19 of the IP Code is hereby amended to read as follows:
24

2s SEC. 19. Disqualification of Officers and Employees of the Office. - All
26 officers and employees of the Office shall not apply or act as an attorney
27 or patent agent of an application for a grant of patent, for the registration
28 of a utility model, industrial design, LAYOUT-DESIGN OF AN
29 INTEGRATED CIRCUIT, or mark, OR GEOGRAPHICAL INDICATION
30 nor acquire, except by hereditary succession, any patent or utility model,
31 design registration, or mark or any right, title or interest therein during
32 their employment and for one (1) year thereafter.

33

34 SECTION 18. The title of Part II of the IP Code is hereby amended to read as
35 follows:

36

7 PART II

38 [THE LAW ON] PATENTS, UTILITY MODELS, INDUSTRIAL DESIGNS,
39 AND LAYOUT-DESIGNS (TOPOGRAPHIES) OF INTEGRATED

40 CIRCUITS

41

42 SECTION 19. Section 20 of the IP Code is hereby amended to read as follows:
43 SEC. 20.Definition of Terms [Used in Part Il, The Law on Patents]. - As
44 used in Part II, the following terms shall have the following meanings:

45 20.1. "Bureau" means the Bureau of Patents;

46 20.2. "Director" means the Director of Patents;

47 20.3. "Regulations" means the Rules of Practice in Patent, UTILITY
48 MODEL, AND INDUSTRIAL DESIGN Cases OR THE LAYOUT-DESIGNS
49 (TOPOGRAPHIES) REGULATIONS formulated by the Director of Patents
50 and promulgated by the Director General, WHICHEVER IS
51 APPLICABLE, AS THE CASE MAY BE; (a)

14


1 20.4, "Examiner" means the patent examiner;

2 20.5. "Patent application” or “application” means an application for a
3 patent for an invention except in Chapters X{XIl] and XI[XII], where
4 application means an application for a utility model and an industrial
5 design or TOPOGRAPHY OF INTEGRATED CIRCUIT, respectively; and
6 (a)

7 20.6. "Priority date” means the date of filing of the foreign application for
8 the same invention referred to in Section 31 of this Act. (n)

9

10 SECTION 20. Section 46.2 of the IP Code is hereby amended to read as follows:
a 46.2. Received written notice that the invention that he was using was
2 the subject matter of a published application being identified in the said
B notice by its serial number: Provided, That the action may not be filed
4 until after the grant of a patent on the published application. [and within
15 four (4) years from the commission of the acts complained of.]

16

17 SECTION 21. Section 50.3 of the IP Code is hereby deleted.

18 (50.3. A patent shall take effect on the date of the publication of the
19 grant of the patent in the IPO Gazette. (Sec. 18, R.A. No. 165a).]

20

21 SECTION 22. Section 67 of the IP Code is hereby amended to read, as follows:
22 SEC. 67.REMEDY OF THE TRUE AND ACTUAL INVENTOR OR A
23 PERSON HAVING THE RIGHT TO A PATENT. - A PERSON WHO WAS
24 DEPRIVED OF THE PATENT OR THE RIGHT TO FILE A PATENT
25 APPLICATION, WITH OR WITHOUT FRAUD, MAY FILE AN ACTION
26 WITH THE COURT OR WITH THE BUREAU OF LEGAL AFFAIRS FOR
a7 A DECLARATION AS THE TRUE AND ACTUAL INVENTOR, OR AS A
28 PERSON HAVING THE RIGHT TO A PATENT OR TO FILE A PATENT
29 APPLICATION. (n)

30 [SEC. 67. Patent Application by Persons Not Having the Right to a
31 Patent. - 67.1. If a person referred to in Section 29 other than the
32 applicant, is declared by final court order or decision as having the right
33 to the patent, such person may, within three (3) months after the
34 decision has become final:]

35 [(a) Prosecute the application as his own application in place of the

36 applicant;}

37 [(b) File a new patent application in respect of the same invention;]

38 {(c) Request that the application be refused; or]

39 {(@) Seek cancellation of the patent, if one has already been issued.]

40 (67.2. The provisions of Subsection 38.2 shall apply mutatis mutandis to
41 a new application filed under Subsection 67.1(b). (n)]

42

43 SECTION 23. Sec. 68 of the IP Code is hereby amended to read as follows:
44

45 SEC. 68, EFFECT OF DECLARATION AS THE TRUE AND ACTUAL
46 INVENTOR OR A PERSON HAVING THE RIGHT TO A PATENT. - A
a7 PERSON DECLARED BY FINAL ORDER OR DECISION OF THE
48 COURT OR BY THE BUREAU OF LEGAL AFFAIRS TO BE THE TRUE
49 AND ACTUAL INVENTOR OR TO HAVE THE RIGHT TO THE PATENT
50 OR TO FILE A PATENT APPLICATION MAY, WITHIN THREE (3)

15


32
33
34
35
36

37
38

39
40

41

42
43

44
45
46
47
48
49
50
51

SECTION 26.

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 REFUSED; OR

(D)SEEK CANCELLATION OF THE PATENT, 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. (67a, 68a)

[SEC. 68. Remedies of the True and Actual Inventor. - If a person, who
was deprived of the patent without his consent or through fraud is
declared by final court order or decision to be the true and actual
inventor, the court shall order for his substitution as patentee, or at the
option of the true inventor, cancel the patent, and award actual and
other damages in his favor if warranted by the circumstances. (Sec. 33,
RA. No. 165a)]

SECTION 24. Sec. 69 of the IP Code is hereby amended to read as follows:

SEC. 69. Publication of the Court Order. - The court shall furnish the
Office a copy of the order or decision referred to in Section{s 67 and] 68,
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. (a)

SECTION 25. Sec. 70 of the IP Code is hereby amended to read as follows:

SEC. 70. Time to File Action [in Court). - The actions indicated in Sections
67 and 68 MAY [shall] be filed AT ANY TIME BUT NOT LATER THAN
[within] one (1) year from the GRANT OF PATENT.[the date of
publication made in accordance with Sections 44 and 51, respectively.]

(a)

Chapter VIII
RIGHTS OF PATENTEES [AND INFRINGEMENT OF PATENTS]

SECTION 27. Sec. 71 of the IP Code is hereby amended to read as follows:

SEC. 71. Rights Conferred by Patent. - 71.1. 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.

16

Secs. 71 to 75 of the IP Code are hereby collectively designated
under Part II, Chapter VII, under the following amended heading:


1 71.2. RIGHTS TO ASSIGNMENT OR TRANSFER. - Patent owners shall
2 also have the right to assign, or transfer by succession the patent, and to
3 conclude licensing contracts for the same. (Sec. 37, R.A. No. 165a)

4 [SEC. 107.]71.3. RIGHTS OF JOINT OWNERS. - IF TWO (2) OR MORE
5 PERSONS JOINTLY OWN A PATENT AND THE INVENTION COVERED
6 THEREBY, EITHER BY THE ISSUANCE OF THE PATENT IN THEIR
7 JOINT FAVOR OR BY REASON OF THE ASSIGNMENT OF AN
8 UNDIVIDED SHARE IN THE PATENT AND INVENTION OR BY
9 REASON OF THE SUCCESSION IN TITLE TO SUCH SHARE, EACH OF

10 ‘THE JOINT OWNERS SHALL BE ENTITLED TO PERSONALLY MAKE,
u USE, SELL, OR IMPORT THE INVENTION FOR HIS OWN PROFIT:
2 PROVIDED, HOWEVER, THAT NEITHER OF THE JOINT OWNERS
23 SHALL BE ENTITLED TO GRANT LICENSES OR TO ASSIGN HIS
14 RIGHT, TITLE OR INTEREST OR PART THEREOF WITHOUT THE
15 CONSENT OF THE OTHER OWNER OR OWNERS, OR WITHOUT
16 PROPORTIONALLY DIVIDING THE PROCEEDS WITH SUCH OTHER
v7 OWNER OR OWNERS. (107) (Sec. 54, R.A. No. 165)

18 SECTION 28. Sec. 72.1 of the IP Code is hereby amended to read as follows:
19 72.1, Using aNY patented product which has been put on the market in
20 the Philippines OR ANYWHERE ELSE IN THE WORLD by the owner of
21 the product, [or] with [his|THE OWNER’S express consent, OR BY ANY
22 PARTY AUTHORIZED TO USE THE INVENTION insofar as such use is
23 performed after that product has been so put on the said market:
24 Provided, That with regard to drugs and medicines, the [limitation on
25 patent rights shall apply after a drug or medicine has been introduced in
26 the Philippines or anywhere else in the world by the patent owner, or by
27 any party authorized to use the invention: Provided, further, That the]
28 right to import theM [drugs and medicines contemplated in this section
29 shall be available to any government agency or any private third party;

30 SECTION 29. Secs. 76 to 83 of the IP Code are hereby collectively designated as
31 Part Il, Chapter IX, Infringement of Patent Rights, as follows:

32 Chapter IX

33 INFRINGEMENT OF PATENT RIGHTS

34

35 SECTION 30. Sec. 76 of the IP Code is hereby amended to read, as follows:
36 SEC. 76.[Civil Action for/-PATENT Infringement. - 76.1. The making,
37 using, offering for sale, selling, or importing a patented product or a
38 product obtained directly or indirectly from a patented process, or the
39 use of a patented process without the authorization of the patentee
40 constitutes patent infringement. Provided, That, this shall not apply to
41 instances covered by Sections 72.1 and 72.4 (Limitations of Patent
a2 Rights); Section 74 (Use of Invention by Government); Section
43 [93.6]110.6 (Compulsory Licensing); and Section [93-A]120 (Procedures
44 on Issuance of a Special Compulsory License under the TRIPS
45 Agreement) of this Code. (a)

46 ANYONE WHO ACTIVELY INDUCES THE INFRINGEMENT OF A
47 PATENT OR PROVIDES THE INFRINGER WITH A COMPONENT OF A
48 PATENTED PRODUCT OR OF A PRODUCT PRODUCED FROM A
49 PATENTED PROCESS KNOWING IT TO BE ESPECIALLY ADOPTED
50 FOR INFRINGING THE PATENTED INVENTION AND NOT SUITABLE
51 FOR SUBSTANTIAL NON-INFRINGING USE SHALL BE LIABLE AS A
52 CONTRIBUTORY INFRINGER AND WILL BE JOINTLY AND
53 SEVERALLY LIABLE WITH THE INFRINGER. (76.6)

54 76.2. REMEDIES. -

7


SECTION 31.

A) Any patentee, or anyone possessing any right, title or interest in
and to the patented invention, whose rights have been infringed,
may bring a civil action before a court of competent jurisdiction, to
recover from the infringer such damages sustained thereby, plus
attorney's fees and other expenses of litigation, and to secure an
injunction for the protection of his rights. (76.2)

B) [76.3.] If the damages are inadequate or cannot be readily
ascertained with reasonable certainty, the court may award by
way of damages a sum equivalent to reasonable royalty. (76.3)

C) (76.4.] The court may, according to the circumstances of the case,
award damages in a sum above the amount found as actual
damages sustained: Provided, That the award does not exceed
three (3) times the amount of such actual damages; and (76.4)

D) [76.5.] The court may, in its discretion, order that the infringing
goods, materials and implements predominantly used in the
infringement be disposed of outside the channels of commerce or
destroyed, without compensation; (76.5) [and] (Sec. 42, R.A. No.
165a)

(76.6. Anyone who actively induces the infringement of a patent or
provides the infringer with a component of a patented product or of a
product produced because of a patented process knowing it to be
especially adopted for infringing the patented invention and not suitable
for substantial non-infringing use shall be liable as a contributory
infringer and shall be jointly and severally liable with the infringer.]

{[SEC. 77. Infringement Action by a Foreign National. - Any foreign
national or juridical entity who meets the requirements of Section 3 and
not engaged in business in the Philippines, to which a patent has been
granted or assigned under this Act, may bring an action for infringement
of patent, whether or not it is licensed to do business in the Philippines
under existing law. (Sec. 41-A, R.A. No. 165a}]

SEC. [78.]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 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. (n)

[SEC. 79. Limitation of Action for Damages. - No damages can be
recovered for acts of infringement committed more than four (4) years
before the institution of the action for infringement. (Sec. 43, R.A. No.
165)]

[SEC. 80. Damages; Requirement of Notice. - Damages cannot be
recovered for acts of 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 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. (Sec. 44, R.A. No. 165a)]

|SEC. 81. Defenses in Action for Infringement. - In an action for
infringement, the defendant, in addition to other defenses available to

18

Sections 77, 79, 80, 81, and 84 of the IP Code are hereby removed
from Part Il and are consolidated with other provisions, or later restored with
modifications in a new Part VI below, and the remaining provisions of this Chapter are
accordingly renumbered, as follows:


38

39
40
41
a2

43

45

a7

49
50
st
52

53
54

him, may show the invalidity of the patent, or any claim thereof, on any
of the grounds on which a petition of cancellation can be brought under
Section 61 hereof. (Sec. 45, R.A. No. 165)]

SEC. [82.] 78. Patent Found Invatid 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. (Sec. 46, R.A. No. 165a)

SEC. [83.]79.Assessor in Infringement Action. - [83.1] 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.

[83.2.]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. [(Sec. 47,
R.A. No. 165a)]

[SEC. 84. Criminal Action for Repetition of Infringement. - If infringement
is repeated by the infringer or by anyone in connivance with him after
finality of the judgment of the court against the infringer, the offenders
shall, without prejudice to the institution of a civil action for damages, be
criminally liable therefor and, upon conviction, shall suffer imprisonment
for the period of not less than six (6) months but not more than three (3)
years and/or a fine of not less than One hundred thousand pesos (PhP
100,000) but not more than ‘Three hundred thousand pesos (Php
300,000}, at the discretion of the court. The criminal action herein
provided shall prescribed in three (3) years from date of the commission
of the crime. (Sec. 48, R.A. No. 165a) (84)]

SECTION 32. _The entire Chapters IX and X respectively on Voluntary Licensing
and Compulsory Licensing are transferred from Part II of this Act and to a new Part III
as provided for below.

SECTION 33. Part Il, Chapter XI, Assignment and Transmission of Rights
becomes the new Part Il, Chapter X, Assignment and Transmission of Patent Rights
‘and the Sections therein are accordingly renumbered, as follows, except Section 107
which is transferred to become Sec. 71.3 of the IP Code:

Chapter X/XI]
ASSIGNMENT AND TRANSMISSION OF PATENT RIGHTS

SEC. [103]80. Transmission of Rights. - [105.1.)80.1. Patents or
applications for patents and invention to which they relate, shall be
protected in the same way as the rights of other property under the Civil
Code. (103.1)

[103.2.]80.2. Inventions and any right, title or interest in and to patents
and inventions covered thereby, may be assigned or transmitted by
inheritance or bequest or may be the subject of a license contract.
(103.2) (Sec. 50, R.A. No. 165a)

SEC. [104,]81. Assignment of Inventions. -

81.1. SCOPE OF ASSIGNMENT. - An assignment may be of the entire
right, title or interest in and to the patent and the invention covered
thereby, or of an undivided share of the entire patent and invention, in

which event the parties become joint owners thereof. An assignment may
be limited to a specified territory. (104) (Sec. 51, R.A. No. 165)

[SEC. 105.]81.2. Form of Assignment. - The assignment must be in
writing, acknowledged before a notary public or other officer authorized

19


1 to administer oath or perform notarial acts, and certified under the hand
2 and official seal of the notary or such other officer. (105) (Sec. 52, R.A.
3 No. 165)

4 SEC. [106.] 82. Recording. - 106.1. The Office shall record SECURITY
5 ‘AGREEMENTS, assignments, licenses and other instruments relating to
6 the transmission of any right, title or interest in and to inventions, and
7 patents or application for patents or inventions to which they relate,
8 which are presented in due form to the Office for registration, in books

9 and records kept for the purpose. The original documents together with a
10 signed duplicate thereof shall be filed, and the contents thereof should be
ree kept confidential. If the original is not available, an authenticated copy
2 thereof in duplicate may be filed. Upon recording, the Office shall retain
B the duplicate, return the original or the authenticated copy to the party
14 who filed the same and notice of the recording shall be published in the
15 IPO Gazette.

16 106.2. Such instruments shall be void as against any subsequent
7 purchaser or mortgagee for valuable consideration and without notice,
18 unless, it is so recorded in the Office, within three (3) months from the
19 date of said instrument, or prior to the subsequent purchase or
20 mortgage. (Sec. 53, R.A. No. 165a}

21 [SEC. 107. Rights of Joint Owners. - If two (2) or more persons jointly
22 own a patent and the invention covered thereby, either by the issuance of
23 the patent in their joint favor or by reason of the assignment of an
24 undivided share in the patent and invention or by reason of the
25 succession in title to such share, each of the joint owners shall be
26 entitled to personally make, use, sell, or import the invention for his own
27 profit: Provided, however, That neither of the joint owners shall be
28 entitled to grant licenses or to assign his right, title or interest or part
29 thereof without the consent of the other owner or owners, or without
30 proportionally dividing the proceeds with such other owner or owners.
31 (Sec. 54, R.A. No. 165)]

32

33 SECTION 34. Chapter XII of Part II of the IP Code Registration of Utility Models

34 becomes the new Chapter XI of the same, and the Sections therein are accordingly
35 amended and/or renumbered, as follows:

36

37 Chapter XI[XII]

38 REGISTRATION OF UTILITY MODELS

39 SEC. [108]83.Applicability of Provisions Relating to Patents. —
40 [108.1,]83.1. Subject to Section 84 [109], the provisions governing
a1 patents shall apply, mutatis mutandis, to the registration of utility
a2 models. (108)

43 [108.2.]83.2. Where the right to a patent conflicts with the right to a
4a utility model registration in the case referred to in Section 29, the said
45 provision shall apply as if the word "patent" were replaced by the words
46 “patent or utility model registration.” (108.2) (Sec. 55, R.A. No. 165a)

47 SEC. [109.]84. Special Provisions Relating to Utility Models. -
48 [109.1]84.1.

49 (a) invention qualifies for registration as a utility model if it is new
50 and industrially applicable.

51 (b) Section 21, "Patentable Inventions’, shall apply except the
52 reference to inventive step as a condition of protection. (109.1)

53 {109.2.]84.2. Sections 43 to 49 shall not apply in the case of applications
54 for registration of a utility model;PROVIDED, THAT APPLICATIONS

20


1 FOR REGISTRATION SHALL BE PUBLISHED. THIRD PARTIES MAY
2 FILE WITH THE DIRECTOR OF PATENTS ADVERSE INFORMATION
3 CITING GROUNDS OR INFORMATION THAT THE UTILITY MODEL IS
4 NOT NEW OR REGISTRABLE. (109.2)

5 [109.3.]84.3. A utility model registration shall expire x x x

6 [109.4.]84.4. In proceedings under Sections 61 to 64, the utility model
7 registration shall be cancelled on the following grounds:

8 (a) That the claimed invention does not qualify for registration as a
9 utility model and does not meet the requirements of registrability,
10 in particular having regard to Subsection 84.1[109.1] and
11 Sections 22, 23, 24 and 27;

12 (b) That the description and the claims do not comply with the
B prescribed requirements;

14 (c) That any drawing which is necessary for the understanding of the
15 invention has not been furnished

16 (d) That the owner of the utility model registration is not the inventor
17 or his successor in title. (109.4a)(Secs. 55, 56, and 57, R.A. No.
18 165a)

19 SEC. [110.]85.Conversion of Patent Applications or Applications for Utility
20 Model Registration. - [110.1.}85.1. At any time before the grant [or
2 refusal] of a patent, an applicant [for a patent] may, upon payment of the
22 prescribed fee, convert his application into an application for registration
23 of a utility model, which shall be accorded the filing date of the initial
24 application. An application may be converted only once. (110.1)

25 [110.2,]85.2. At any time before the grant or refusal of a utility model
26 registration, an applicant for a utility model registration may, upon
27 payment of the prescribed fee, convert his application into a patent
28 application, which shall be accorded the filing date of the initial
29 application. (110.2) (Sec. 58, R.A. No. 165a)

30 SEC. [111.] 86.{Prohibition against] Filing of Parallel Applications. - An
31 applicant may not file two (2) applications for the same subject, one for
32 REGISTRATION OF utility model [registration] and the other for the
33 grant of aN INVENTION patent whether simultaneously or consecutively,
34 WITHIN ONE YEAR FROM THE FILING OF THE FIRST APPLICATION.
35 THE PROCESSING OF THE APPLICATIONS SHALL PROCEED
36 INDEPENDENTLY; PROVIDED THAT, ONCE THE PATENT IS
37 GRANTED TO THE INVENTION APPLICATION, THE UTILITY MODEL
38 REGISTRATION SHALL BE AUTOMATICALLY CANCELLED AND THE
39 LETTERS PATENT SHALL BE ISSUED. (11 1a) (Sec. 59, R.A. No. 165a)
40

41 SECTION 35. Chapter XIII of Part Il of the IP Code on Industrial Designs and

42 Layout-Designs (Topographies) of Integrated Circuits becomes the new Chapter XII,
43. and the provisions therein are accordingly amended and renumbered, as follows:

4a Chapter XII [XIII].

45 INDUSTRIAL DESIGNS AND LAYOUT-DESIGNS (TOPOGRAPHIES) OF
46 INTEGRATED CIRCUITS

7 INDUSTRIAL DESIGNS

48 SEC. [112.]87. Definition fof Terms.] - [1.| An Industrial Design is any
49 composition of lines or colors or any three-dimensional form, whether or
50 not associated with lines or colors: Provided, That such composition or
51 form gives a special appearance to and can serve as pattern for an
52 industrial product or handicraft. PARTS OR COMPONENTS OF SUCH
53 PRODUCT OR HANDICRAFT CAN BE SUBJECT FOR INDUSTRIAL
54 DESIGN REGISTRATION. (Sec. 55a, R.A. No. 165)

21


Nonsune

u
12
13
14
15
16
7
18
19

20
a
22

23
24

25
26

27
28

29
30

31
32
33

34
35

36
37

38
39
40
41

42
43

44

45
46

47
48

49

SEC. [113.]88.[Substantive] Conditions for Protection. ~ [113.1,]88.1. ANY
NEW CREATION RELATING TO THE FEATURES OF SHAPE,
PATTERN, CONFIGURATION, ORNAMENTAL, OR ARTISTIC
APPEARANCE OF AN ARTICLE OR INDUSTRIAL PRODUCT MAY BE
PROTECTED AS AN INDUSTRIAL DESIGN. (n) [Only industrial designs
that are new or ornamental shall benefit from protection under this Act.
(113.1)]

[113.2.]88.2, 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. (113.2)

SEC. [115]. 89.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. (115)

SEC. [119.]90. Application of Other Sections and Chapters. ~ [119.1.]90.1.
The following provisions relating to patents shall apply mutatis mutandis
to an industrial design registration:

Section [21]23+->Novelty
XXX

SECTION 44>- -PUBLICATION OF PATENT
APPLICATION;

SECTION 45>- *CONFIDENTIALITY § BEFORE
PUBLICATION;

SECTION 49>- »~AMENDMENT OF APPLICATION;
XXX

Chapter VIII>--Rights of Patentees [and Infringement of
Patents;]
[ands]

CHAPTER IX>- INFRINGEMENT OF PATENT RIGHTS;
AND

Chapter X[XI] -*Assignment and Transmission of PATENT
Rights (119.1a)

[119.2] 90.2. 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. (119.2)

[119.3. The following provisions relating to patents shall apply mutatis
mutandis to a layout -design of integrated circuits registration:]

[xxx]

[119.4. Rights Conferred to the Owner of a Layout-Design Registration. - x
xx]

SEC. [118.}91.The Term of Industrial Design for Layout-Design]
Registration. — (118.1.]91.1. x x x

[118.2,]91.2. The registration of an industrial design x xx

22


ausw

EB won

12

14
15

16
7
18

19
20
21
22
23
24

25
26
27
28
29
30

31

32
33
34
35
36

37
38
39

40
41
42

43

45,
46

47
48

49

[118.3.] 91.3. The renewal fee x x x
[118.4.] 91.4. The Regulations shall fix x x x

SEC. [120.]92.Cancellation of Design Registration. ~ [120.1.] 92.1. 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:

(a) If the subject matter of the industrial design is not registrable
within the terms of Sections 87 (112] and 88 [113];

(b) If the subject matter is not new; or

(c) If the subject matter of the industrial design extends beyond the
content of the application as originally filed. (120. 1a)

[120.2.]92.2. 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. (120.2a)

LAYOUT-DESIGNS (TOPOGRAPHIES) OF INTEGRATED CIRCUITS

SEC.[112.]93. DEFINITION OF TERMS. -{2.|93.1. Integrated Circuit
means a product, in its final form, or an intermediate form, 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
(112.2)

[3.]93.2. Layout-Design is synonymous with ‘Topography’ and means the
three-dimensional 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.
(112.3)

SEC.[113.]94. CONDITIONS FOR PROTECTION. -

[113.3.]94.1. 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. (113.3)

[113.4,]94.2. 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. (113.4)

SEC. [119.3] 95.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 28° -> Right to a Patent;
SECTION 29+ First to File Rule;
SECTION 30° -> Inventions Created Pursuant to a
Commission;
SECTION 33+ > Appointment of Agent _— or
Representative;
SECTION 56° -+ Surrender of Patent;

23


©

10
un

12
13

14
15

16

v7
18

19
20

2a
22
23

24
25
26
27
28
29
30

31
32
33
34

35
36
37
38
39
40
41

42
43
44
45
46
47

48
49
50

SECTION 57> -* Correction of Mistakes of the

Office;

SECTION 58 > -* Correction of Mistakes in the
Application;

SECTION 59 + ->* Changes in Patents;

SECTION 60° -> Form and Publication of
Amendment;

Chapter VII - * Remedies of a Person with a

Right to Patent;

Chapter VIII>-> _ Rights of Patentees and Infringement of
Patents; and

CHAPTER IX- INFRINGEMENT OF PATENT RIGHTS;
AND

Provided, That the layout-design rights and limitation of
layout-design rights provided hereunder shall govern:

(Chapter X>-* Compulsory Licensing;]

Chapter XI > -* Assignment and Transmission of
PATENT Rights; AND

PART III, CHAPTER IV >-> COMPULSORY
LICENSING.(119.3a)

SEC. [119.4.]96.Rights Conferred [toJON the Owner of a Layout-Design
Registration. - The owner of a layout-design registration shall enjoy the
following rights:

(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

(2) to sell or otherwise distribute for commercial purposes the
registered layout-design, an article or an integrated circuit in
which the registered layout-design is incorporated. (119.4)

SEC. [119.5.]97. 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:

(1) Reproduction of the registered layout-design x x x

(2) Where the act is performed in respect of a layout-design x x x

(3) Where the act is performed in respect of a registered lay-out-
design x x x

(4) In respect of an integrated circuit x x x

(5) Where the act is performed in respect of an identical layout-design
XXX

SEC. [118.5.98. TERM OF PROTECTION OF LAYOUT-DESIGN
REGISTRATION. -(118.5,]Registration of a layout-design shall be valid
for a period of ten (10) years, without renewal, and such validity to be
counted from the date of commencement of the protection accorded to
the layout-design. The protection of a layout-design under this Act shall
commence:

a) on the date of the first commercial exploitation, anywhere in the
world, of the layout-design by or with the consent of the right
holder: Provided, That an application for registration is filed with

24


wewne

ea

2a

22
23
24

25
26
27
28
29

31
32
33
34
35
36
37

38

39
40

a4
42
43
44
45

46
47
48
49

51
52
53
54
55
56

the Intellectual Property Office within two (2) years from such date
of first commercial exploitation; or

b) on the filing date accorded to the application for the registration of
the layout-design if the layout-design has not been previously
exploited commercially anywhere in the world. (118.5)

SEC. [120.3.]99.GROUNDS FOR CANCELLATION OF LAYOUT-DESIGN
OF INTEGRATED CIRCUITS.- Any interested person may petition that
the registration of a layout-design be cancelled on the ground that:

{i) the layout-design is not protectable under this Act;
(ii) the right holder is not entitled to protection under this Act; or
(iii) where the application for registration of the layout-design, was not
filed within two (2) years from its first commercial exploitation
anywhere in the world.

Where the grounds for cancellation are established with respect only to a
part of the layout-design, only the corresponding part of the registration
shall be cancelled.

Any cancelled layout-design registration or part thereof, shall be
regarded as null and void from the beginning and may be expunged from
the records of the Intellectual Property Office. Reference to all cancelled
layout-design registration shall be published in the IPO Gazette.

COMMON PROVISIONS

SEC. [114,]100.Contents of the Application. - [114.1.]100.1, 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;

(c) 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 handicraft 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

(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. (114.1)

[114.2.] 100.2 The application may be accompanied by x x x

SEC. (116.]101. FORMALITY Examination. - [116.1.]101.1. The Office
shall accord as the filing date x x x

[116.2] 101.2. If the application does not meet these requirements, the
filing date should be that date when all the elements specified in Sec.
100 [114] are filed or the mistakes corrected. Otherwise if the
requirements are not complied within the prescribed period, the
application shall be considered withdrawn. (116.2)

[116.3.] 101.3. [After the application has been accorded a filing date and
the required fees paid on time, the applicant shall comply with the
requirements of Sec. 114 within the prescribed period, otherwise 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 REGISTRABLE. THE BUREAU OF PATENTS SHALL
ISSUE A CERTIFICATE OF REGISTRATION OF AN INDUSTRIAL

25


Maus wn

10
i

12
13
14
15
16
7

18
19

20
2
22
23
24
25
26
27

28
29

30
31

32

33
34
35
36

37
38

39

40
a
a2
43
44
45
46
47
48
49

51
52
53

SECTION 36.
IP Code, to read, as follows:

SECTION 37.

DESIGN OR LAYOUT-DESIGN THAT COMPLIES WITH THE
REQUIREMENTS OF SECS. 87 OR 93 (DEFINITION OF TERMS) AND
SECS. 88 OR 94 (CONDITIONS FOR PROTECTION).

AN APPLICANT IN A PENDING DESIGN APPLICATION MAY REQUEST
FOR THE DEFERMENT OF THE PUBLICATION OF THE APPLICATION
FOR A PERIOD NOT MORE THAN THIRTY (30) MONTHS FROM DATE
OF FILING OR PRIORITY DATE. (n)

[116.4,]101.4. The Office shall examine whether the industrial design or
layout-design complies with requirements of SecS. 87 OR 93
[112|(Definition[s]}-OF TERMS) AND 88 OR 94 [113] ({Substantive]
Conditions for Protection). (116.4)

SEC, [117.] 102.Registration. — [117.1.] 102.1. Where the Office finds
that the RESPECTIVE conditions referred to in SecS. 88 OR 94 [113} are
fulfilled, it shall order that registration be effected in the industrial
design or layout-design register and cause the issuance of an industrial
design or layout-design certificate of registration; otherwise, it shall
refuse the application.

[117.2.] 102.2. The form and contents x x x
[117.3.] 102.3. Registration shall be published x x x

[117.4.] 102.4, The Office shall record in the register any or 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.
(117.4)

{117.5.] 102.5. Anyone may inspect the Register x x x

PART II.
INNOVATION AND LICENSING

CHAPTER I.
PRELIMINARY PROVISIONS

SEC. 103. DEFINITION OF TERMS. - AS USED IN PART III:

A) “BUREAU” MEANS THE BUREAU OF
INNOVATION AND BUSINESS DEVELOPMENT;
B) “COMMERCIALIZATION” REFERS TO

‘THE PROCESS OF DERIVING INCOME OR PROFIT FROM A
TECHNOLOGY, SUCH AS THE CREATION OF A SPIN-OFF
COMPANY, OR THROUGH LICENSING OR THE SALE OF THE
TECHNOLOGY AND/OR INTELLECTUAL PROPERTY RIGHTS;
c) “INNOVATION”, AS PREVIOUSLY
DEFINED IN SEC. 4.3., MEANS THE CREATION OF NEW IDEAS

26

A new Part III on Innovation and Licensing is incorporated in the

A new Chapter I entitled Preliminary Provisions, under Part III is
incorporated in the IP Code, to read, as follows:


57
58

59
60
61
62
63

THAT RESULTS IN THE DEVELOPMENT OF NEW OR
IMPROVED PRODUCTS, PROCESSES OR SERVICES WHICH
ARE THEN SPREAD OR TRANSFERRED ACROSS THE
MARKET;

D) “INNOVATION AGREEMENT” REFERS
TO A CONTRACT ENTERED INTO BY THE BUREAU WITH
ANOTHER PERSON AND/OR OTHER AGENCIES AND
INSTITUTIONS;

E) “INNOVATION AND TECHNOLOGY
SUPPORT OFFICES” REFER TO PATENT LIBRARIES OF
UNIVERSITIES AND RESEARCH-RELATED INSTITUTIONS
THAT FACILITATE THE PROMOTION, CREATION,
PROTECTION, COMMERCIALIZATION, AND UTILIZATION OF
INTELLECTUAL PROPERTY;

F) “INNOVATION FUND” REFERS TO
FUNDS ADMINISTERED BY THE GOVERNMENT RELATED TO
INNOVATION AND WHICH MAY BE TAPPED BY THE BUREAU
TO SUPPORT INNOVATION ACTIVITIES INCLUDING GRANTS
FOR RESEARCH AND DEVELOPMENT, INTELLECTUAL
PROPERTY VALUATION, AND TECHNICAL AND MATERIAL
SUPPORT FOR COMMERCIALIZATION; AND

q) “LICENSING” REFERS EITHER TO
VOLUNTARY LICENSING, COMPULSORY LICENSING, OR
SPECIAL COMPULSORY LICENSING.

SECTION 38.

A new Chapter II entitled “Promoting Creation, Innovation,

Utilization, and Commercialization of Intellectual Property”, under Part III is
incorporated in the IP Code, to read, as follows:

CHAPTER II.

PROMOTING CREATION, INNOVATION, UTILIZATION, AND

COMMERCIALIZATION OF INTELLECTUAL PROPERTY

SEC. 104, STIMULATING INNOVATION. - THE BUREAU SHALL CRAFT
OR RECOMMEND AND IMPLEMENT POLICIES AND PROGRAMS TO
PROMOTE AND SUPPORT INNOVATION THROUGH, BUT NOT
LIMITED TO THE FOLLOWING:

A) CAPACITY BUILDING oN
INTELLECTUAL PROPERTY MANAGEMENT AND
COMMERCIALIZATION;

B) TECHNICAL ASSISTANCE ON
VALUATION OF INTELLECTUAL PROPERTY;

c) ASSISTANCE TO INVENTORS AND

AND MICRO-, SMALL-, AND MEDIUM-SIZED ENTERPRISES IN
GETTING SUPPORT FROM THE INNOVATION FUND FOR
RESEARCH AND DEVELOPMENT, MANAGEMENT, AND
COMMERCIALIZATION OF THEIR INTELLECTUAL PROPERTY;

D) INNOVATION AGREEMENTS
COVERING INTELLECTUAL PROPERTY PROMOTION,
CREATION, PROTECTION, COMMERCIALIZATION, AND
UTILIZATION; AND

E) ESTABLISHMENT OF INNOVATION
AND TECHNOLOGY SUPPORT OFFICES IN UNIVERSITIES AND
RESEARCH-RELATED ENTITIES.

SECTION 39.

Section 230 of the IP Code is hereby renumbered as Section 105

and shall be within Part III, Chapter Il, of the IP Code, as follows:

SEC. {230.]108.Adoption of Intellectual Property (IP) Policies. - Schools
and universities shall adopt intellectual property policies that would
govern the use and creation of intellectual property with the purpose of
safeguarding the intellectual creations of the learning institution and its
employees, and adopting locally-established industry practice fair use

27


guidelines. These policies may be developed in relation to licensing
agreements entered into by the learning institution with a collective
licensing organization.

SECTION 40. ‘The Chapter on Voluntary Licensing under the Law on Patents is
hereby designated under Part III as Chapter Ill, and the provisions therein are is

incorporated, renumbered, and/or amended to read, as follows:

Chapter III.
VOLUNTARY LICENSING

SEC.[85.] 106. Voluntary License Contract. -

106.1. 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. (85)

[SEC. 87.] 106.2.Prohibited Clauses. - Except in cases under Section
[91]106.4, the following provisions shall be deemed prima facie to have
an adverse effect on competition and trade:

A) [87.1] 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;

B) [87.2.] 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;

¢) [87.3] Those that contain restrictions regarding the volume and
structure of production;

d) [87.4.] Those that prohibit the use of competitive technologies in a
non-exclusive technology transfer agreement;

e) (87.5.] Those that establish a full or partial purchase option in favor of
the licensor;

f) (87.6.] 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;

2) [87.7.) Those that require payment of royalties to the owners of patents
for patents which are not used;

h) [87.8.] 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 exchisive licenses to manufacture
and/or distribute the licensed product(s) have already been granted;

4) [87.9.] 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;

j) [87.10.] Those which require payments for patents and other industrial
property rights after their expiration, termination arrangement;

k) [87.11.] Those which require that the technology recipient shall not
contest the validity of any of the patents of the technology supplier;

28


1) [87.12.] 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) [87.13.] 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) [87.14] 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

©) [87.15.] Other clauses with equivalent effects. (87a) (Sec. 33-C(2), RA
165)

(SEC. 88.] 106.3.Mandatory Provisions. - The following provisions shall
beincluded in voluntary license contracts:

a) [88.1.] That the laws of the Philippines shall govern the interpretation
of the same and in the event of litigation, the venue shall be the proper
court in the place where the licensee has its principal office;

b) [88.2.] Continued access to improvements in techniques and processes
related to the technology shall be made available during the period of the
technology transfer arrangement;

¢) [88.3.] In the event the technology transfer arrangement shall provide
for arbitration, the Procedure of Arbitration of the Arbitration Law of the
Philippines or the Arbitration Rules of the United Nations Commission on
International Trade Law (UNCITRAL) or the Rules of Conciliation and
Arbitration of the International Chamber of Commerce (ICC) shall apply
and the venue of arbitration shall be the Philippines or any neutral
country; and

d) [88.4.] The Philippine taxes on all payments relating to the technology
transfer arrangement shall be borne by the licensor. (88a)

106.4. [SEC. 91.]Exceptional Cases. - In exceptional or meritorious cases
where substantial benefits will accrue to the economy, such as high
technology content, increase in foreign exchange earnings, employment
generation, regional dispersal of industries and/or substitution with or
use of local raw materials, or in the case of Board of Investments,
registered companies with pioneer status, exemption from any of the
above requirements may be allowed by the (Documentation, Information
and Technology Transfer] Bureauafter evaluation thereof on a case by
case basis. (91a)

SEC.[92.] 107, EFFECT OF Non-Registration with the [Documentation,
Information and Technology Transfer] Bureau OF INNOVATION AND
BUSINESS DEVELOPMENT. - Technology transfer arrangements that
conform with the provisions of Sections 106.2[86]and 106.3[87|nced not
be registered with the (Documentation, Information and Technology
Transfer] Bureau OF INNOVATION AND BUSINESS DEVELOPMENT.
Non-conformance with any of the SAID provisions [of Sections 87 and
88], however, shall automatically render the technology transfer
arrangement unenforceable, unless said technology transfer arrangement
is approved and registered with the (Documentation, Information and
Technology Transfer] Bureau under the provisions of Section
106.491]on exceptional cases. (92a)

SEC.[89.] 108. RIGHTS IN A LICENSING AGREEMENT. -
108.1. Rights of Licensor. - In the absence of any provision to the

29


SECTION 41.

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 himself. (89) (Sec. 33-B, R.A. 165a)

[SEC.90.] 108.2.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. (90) (Sec. 33-C
(1), R.A. 165a)

SEC.[86.] 109.Jurisdiction to Settle Disputes on Royalties. - The Director
of the [Documentation, Information and Technology Transfer] Bureau OF
LEGAL AFFAIRS shall HAVE [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. (86a)

Chapter IV
COMPULSORY LICENSING

SEC.[93.] 110.Grounds for Compulsory Licensing. - The Director General
[of the Intellectual Property Office] 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:

[93.1] 110.1. National emergency or other circumstances of extreme
urgency;

[93.2.] 110.2. 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:| or]

[93.3.] 110.3. 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; oF

[93.4.] 110.4. In case of public non-commercial use of the patent| by the
patentee, without satisfactory reason;]

[93.5] 110.8. 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; (Secs. 34,
34-A, 34-B, R.A. No. 165a) and OR

{93.6.] 110.6. 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.

(93a) (As amended by Republic Act No.9502 or the Universally Accessible
Cheaper and Quality Medicines Act of 2008)

[SEC.93-A. Procedures on Issuance of a Special Compulsory License under
the TRIPS Agreement. -|

{93-A.1. The Director General of the Intellectual Property Office, 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

30

‘The Chapter on Compulsory Licensing under the Law on Patents
is hereby designated under Part Ill as Chapter IV, and the provisions therein are is
incorporated, renumbered, and/or amended to read, as follows:


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 granteethe 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 Sections 100.4and 100.6 of Republic Act No. 8293 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
provisional remedies that will prevent the grant of the special compulsory
license. (93-A.1a)]

{93-A.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. (93-A.2a)]

[93-A.3, 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 Section 72.1 and Section 74 of the Intellectual Property
Code, as amended under this Act. 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. (93-A.3)]

SEC.[94.] 111. Period for Filing a Petition for a Compulsory License. ~
[94.1.] 111.1. A compulsory license may not be applied for on the ground
stated in Subsection 110.5 [93.5] before the expiration of a period of four
(4) years from the date of filing of the application or three (3) years from
the date of the patent whichever period expires later[last.]

[94.2] 111.2. A compulsory license which is applied for on any of the
grounds stated in Subsections 110.2, 110.3, 110.4, and 110.6[93.2,
93.3, 93.4 and 93.6Jand Section 114{97}-may be applied for at any time
after the grant of the patent. (94.2a) (Sec. 34(1), R.A. No. 165)

(As amended by Republic Act No.9502 or the Universally Accessible
Cheaper and Quality Medicines Act of 2008)

SEC. [95.] 112. Requirement to Obtain a License on Reasonable
Commercial Terms -

[95.1.] 112.1. 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. (95. 1a)

{95.2.] 112.2. The requirement under Subsection 112.1 [95.1] 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;

31


wavausuene

10

12
13
14
15
16
7
18
19
20
21
22
23
24

25
26

27
28
29
30
31
32
33
34
35,
36
37
38
39

41
42
43
44
45
46
47

49

51
52
53

55
56
57
58
59
60
61
62
63

(b) In situations of national emergency or other circumstances of
extreme urgency;
(c)__ Incases 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. (95.2a)

[95.3.] 112.3. In situations of national emergency or other circumstances
of extreme urgency, the right holder shall be notified as soon as
reasonably practicable. (95.3)

[95.4] 112.4, 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. (95.4)

[95.5.] 112.5. 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. (95.5.)

(As amended by Republic Act No.9502 or the Universally Accessible
Cheaper and Quality Medicines Act of 2008)

SEC.{96.] 113. Compulsory Licensing of + Patents_ Involving
SEMICONDUCTOR [Semi-Conductor] Technology. - In the case of
compulsory licensing of SEMICONDUCTOR(semi-conductor] technology,
the license may only be granted in case of public non-commercial use or
to remedy a practice determined after judicial or administrative process
to be anti-competitive. (96)

SEC. [97] 114.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:

(97.1.] 114.1. The invention claimed in the second patent involves an
important technical advance of considerable economic significance in
relation to the first patent;

[97.2.] 114.2. 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;

[97.3.] 114.3. The use authorized in respect of the first patent shall be
non-assignable except with the assignment of the second patent; and

[97.4.] 114.4. The terms and conditions of Sections 112, 113, AND 115
TO 117 (95, 96 and 98 to 100] of this Act. (Sec. 34-C, R.A. No. 165a)

SEC. [98.] 115. 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

32


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. (98) (Sec. 34-D, R.A. No. 165)

SEC. [99.] 116. PROCEDURE FOR COMPULSORY LICENSING. -
116.1.Notice of Hearing. - 99--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 33 hereof, shall be bound to accept service of
notice of the filing of the petition within the meaning of this Section.

[99.2.]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 IPO Gazette at applicant’s expense. (99.2.) (Sec.
34-E, R.A. No. 165)

116.2. 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.

SEC.[100.] 117.Terms and Conditions of Compulsory License. -

117.1. The basic terms and conditions including the rate of royalties of a
compulsory license shall be fixed by the Director GENERAL [of Legal
Affairs} subject to the following conditions:

[100.1.] a) The scope and duration of such license shall be limited to the
purpose for which it was authorized; (100. 1)

[100.2,] b) The license shall be non-exclusive; (100.2)

[100.3.] ¢) The license shall be non-assignable, except with that part of
the enterprise or business with which the invention is being exploited;
(100.3)

[100.4.] d) Use of the subject matter of the license shall be devoted
predominantly for the supply of the Philippine market: Provided, That
this limitation shall not apply where the grant of the license is based on
the ground that the patentee’s manner of exploiting the patent is
determined by judicial or administrative process, to be anti-competitive.
(100.4)

100.5. 117.2. 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 (100.5)

[100.6.] 117.3. The patentee shall be paid adequate remuneration taking
into account the economic value of the grant or authorization, except
that in cases where the license was granted to remedy a practice which
was determined after judicial or administrative process, to be anti-
competitive, the need to correct the anti-competitive practice may be

33


41

42
43
44
45
46
47
48
49
50
51
52
53

55
56
37
58
59
60
61

taken into account in fixing the amount of remuneration. (100.6) (Sec.
35-B, R.A. No. 165a)

SEC. {[101.]] 118.Amendment, Cancellation, Surrender of Compulsory
License[.- 101.1.] 118.1. Upon the request of the patentee or the licensee,
the Director GENERAL/of Legal Affairs] may amend the decision granting
the compulsory license, upon proper showing of new facts oF
circumstances justifying such amendment.

[101.2] 118.2. Upon the request of the patentee, the said 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) if the 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; (101.2)

[101.3] 118.3. The licensee may surrender the license by a written
declaration submitted to the Office. (101.3)

[101.4,] 118.4 The said Director GENERAL shall cause the amendment,
surrender, of cancellation in the Register, notify the patentee, and/or the
licensee, and cause notice thereof to be published in the IPO Gazette.
(101.4) (Sec. 35-D, R.A. No. 165a)

SEC. [102,] 119. 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
Hight of the rightful owner of the patent to recover from the licensor
whatever he may have received as royalties under the license. (102) (Sec.
35-E, R.A. No. 165a)

SECTION 42. ‘A new Chapter V entitled “Special Compulsory Licensing” is
hereby designated under Part Ill of the IP Ci
transferred and amended to read as follows:

CHAPTER V
SPECIAL COMPULSORY LICENSING

SEC.[93-A.] 120. Procedures on Issuance of a Special Compulsory License
under the TRIPS Agreement. -

[93-A.1.] 120.1, The Director General of the Intellectual Property Office,
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
DIRECTOR GENERAL AND THE SECRETARY OF HEALTH SHALL
PROMULGATE JOINTLY THE RULES OF PROCEDURE FOR THE
GRANT OF SPECIAL COMPULSORY LICENSES.

‘The grant of a special compulsory license under this provision shall be

34

‘ode to which Sec. 93-A is hereby


an exception to Sections 117.4 [100.4Jand 117.6 UNDER THIS ACT
[100.6 of Republic Act No. 8293] and shall be immediately executory.

1

2

3

4 No court, except the Supreme Court of the Philippines, shall issue any
5 temporary restraining order or preliminary injunction or such other
6 provisional remedies that will prevent the grant of the special compulsory
7 license. (93-A. 1a)

8
9

[93-A.2.] 120.2. A compulsory license shall also be available for the

10 manufacture and export of drugs and medicines to any country having
1 insufficient or no manufacturing capacity in the pharmaceutical sector to
2 address public health problems: Provided, That, a compulsory license
B has been granted by such country or such country has, by notification or
14 otherwise, allowed importation into its jurisdiction of the patented drugs
45 and medicines from the Philippines in compliance with the TRIPS
16 ‘Agreement. (93-A.2a)

7

18 (93-A.3.] 120.3. The right to grant a special compulsory license under
19 this section shall not limit or prejudice the rights, obligations and
20 flexibilities provided under the TRIPS Agreement and under Philippine
2 laws, particularly Section 72.1 and Section 74 of this Act [the
22 Intellectual Property Code], as amended [under this Act]. It is also
23 without prejudice to the extent to which drugs and medicines produced
24 under a compulsory license can be exported as allowed in the TRIPS
25 ‘Agreement and applicable laws. (93-A.3a)

26

27 SECTION 43. Part III of the IP Code is hereby amended to become Part IV on
38 Trademarks, Service Marks, and Trade Names of the IP Code, to read as follows:
29

30 Part IV [1]

31 [THE LAW ON}

32 TRADEMARKS, SERVICE MARKS, AND TRADE NAMES

33

34 SECTION 44. Sec. 121 of the IP Code shall be designated as Part IV, Chapter I,
35 General Provisions and is hereby amended to read, as follows:

36

37 CHAPTER I.

38 GENERAL PROVISIONS

39 SEC. 121. Definitions. - As used in Part IV[III), the following terms have
40 the following meanings:

41 121.1. "Mark" means any [visible| sign OR ANY COMBINATION OF
42 SIGNS AS MAY BE PRESCRIBED BY THE REGULATIONS, capable of
43 distinguishing the goods (trademark) or services (service mark) of an
4a enterprise FROM THAT OF ANOTHER; [and shall include a stamped or
45 marked container of goods;] (121.1.a) (Sec. 38, R.A. No. 166a)

46 121.2. "Collective mark” means any [visible] sign designated as such in
47 the application for registration and capable of distinguishing the origin or
48 any other common characteristic, including the quality of goods or
49 services of different enterprises which use the sign under the control of
50 the registered owner of the collective mark; (Sec. 40, R.A. No. 166a)

51 121.3. "Trade name" means the name or designation identifying or
52 distinguishing an enterprise; (Sec. 38, R.A. No. 166a)

53 121.4. "Bureau" means the Bureau of Trademarks;

35


1 121.5. "Director" means the Director of Trademarks;

2 121.6. "Regulations" means the Rules of Practice in Trademarks and
Service Marks formulated by the Director of Trademarks and approved
by the Director General;| and]

aw

5 121.7. "Examiner" means the trademark examiner. (Sec. 38, R.A. No.
6 166a)

7 121.8, “CERTIFICATION MARK” MEANS ANY SIGN, USED OR
8 INTENDED FOR USE IN COMMERCE WITH THE OWNER’S
9 PERMISSION BY SOMEONE OTHER THAN ITS OWNER, TO CERTIFY
10 REGIONAL OR OTHER GEOGRAPHIC ORIGIN, MATERIAL, MODE OF
uw MANUFACTURE, QUALITY, ACCURACY, OR OTHER
2 CHARACTERISTICS OF SOMEONE’S GOODS OR SERVICES, OR
2B THAT THE WORK OR LABOR ON GOODS OR SERVICES WAS
14 PERFORMED BY MEMBERS OF A UNION OR OTHER
15 ORGANIZATIONS; AND (N)

16 121.9. “COUNTERFEIT TRADEMARK GOODS” SHALL MEAN ANY
v7 GOODS, INCLUDING PACKAGING, BEARING WITHOUT
18 AUTHORIZATION A TRADEMARK WHICH IS IDENTICAL TO THE
19 TRADEMARK VALIDLY REGISTERED IN RESPECT OF SUCH GOODS,
20 OR WHICH CANNOT BE DISTINGUISHED IN ITS ESSENTIAL
21 ASPECTS FROM SUCH A TRADEMARK, AND WHICH THEREBY
2 INFRINGES THE RIGHTS OF THE OWNER OF THE TRADEMARK IN
23 QUESTION. (N)

24

25 SECTION 45. Sec. 122 of the IP Code is hereby designated as Part IV, Chapter II,
26 Right to a Mark, and is hereby amended, to read as follows:

7 CHAPTER II

28 RIGHT TO A MARK

29 SEC. 122. [How Marks are Acquired.] ~ACQUISITION OF RIGHTS TO A
30 MARK. - ANY PERSON WHO INTENDS TO USE OR USES A MARK IN
31 COMMERCE MAY FILE AN APPLICATION FOR ITS
32 REGISTRATION.The rights in a mark shall be acquired through
33 registration made validly in accordance with the provisions of this law.
34 (Sec. 2-A, RA. No. 166a).

35 SECTION 46. A new Sec. 122A is hereby inserted after Sec. 122 under Part IV,
36 Chapter II, to read as follows:

37 SEC. 122A, FIRST TO FILE RULE. - WHERE TWO OR MORE
38 APPLICATIONS ARE FILED FOR IDENTICAL OR CONFUSINGLY
39 SIMILAR MARKS IN CONNECTION WITH THE SAME OR RELATED
40 GOODS OR SERVICES RESULTING IN LIKELIHOOD OF CONFUSION,
41 THE RIGHT TO THE MARK SHALL BELONG TO THE APPLICANT
a2 WHO HAS THE EARLIEST FILING DATE OR, THE EARLIEST
43 PRIORITY DATE.

44

45 SECTION 47. Sec. 123 of the IP Code is hereby designated as Part IV, Chapter
46 Ill, Registrability, and is hereby amended to read as follows:

47 CHAPTER III

48 REGISTRABILITY

49 SEC. 123. Registrability. - 123.1. A MARK MAY BE REGISTERED IF IT
50 IS DISTINCTIVE. ON THE OTHER HAND, A MARK CANNOT BE
51 REGISTERED IF IT:

52 (a) Consists of MATTER WHICH:

36


(i) IS OFFENSIVE, immoral, deceptive or scandalous, OR

SUGGESTS A DISTORTION OF VALUES;

[matter which] may disparage or falsely suggest a

connection with LIVING OR DEAD persons, [living or dead,]

institutions, ENTITIES, beliefs, CUSTOMS, VALUES, or
national symbols, HERITAGE, OR PATRIMONY, or

brings ANY OF them] FOREGOING into contempt,

DISRESPECT, or disrepute; (a)

(b) Consists of the flag, [or] 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,

(c) Consists of a name, portrait or signature identifying a particular
living individual except by his written consent, or the name,
signature, or portrait of a deceased President of the Philippines,
during the life of [his widow |THE SURVIVING SPOUSE, if any,
except by written consent of the [widow JLATTER; (a)

(d) 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 off: (i)] the same [goods or
services,] or [(i)] closely related goods or services,| or (ii)If it nearly
resembles such a mark] as to be likely to deceive or cause
confusion; (a)

(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 to be well-known internationally OR
[and] in the Philippines, whether or not it is registered here, as
being already the mark of a person other than the applicant for
registration, and used for identical or similar goods or services:
Provided, That in determining whether a mark is well-known,
account shall be taken of the knowledge of the relevant sector of
the public, rather than of the public at large, including knowledge
in the Philippines which has been obtained as a result of the
promotion of the mark;

() Is identical with, or confusingly similar to, or constitutes a
translation of a mark considered well-known in accordance with
the preceding paragraph, [which is registered in the Philippines]
with respect to goods or services which are not similar to those
with respect to which registration is applied for: Provided, That
use of the mark in relation to those goods or services would
indicate a connection between those goods or services, and the
owner of the registered mark: Provided further, That the interests
of the owner of the registered mark are likely to be damaged by
such use;

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

(h) Consists exclusively of signs that are generic for the goods or
services that they seek to identify;

(i) 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 services, EXCEPT WHEN THE APPLICATION IS
FOR THE REGISTRATION OF A COLLECTIVE OR
CERTIFICATION MARK COVERING GEOGRAPHICAL
INDICATION;

(k) 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; (a)

() Consists of color alone, unless defined by a given form; oF (a)

37


1 (m) LACKS DISTINCTIVENESS; (n)
2 (n) IMPAIRS THE DISTINCTIVENESS OR HARMS THE
3 REPUTATION OF A WELL-KNOWN MARK, AS DECLARED BY
4 COMPETENT AUTHORITY, WHETHER REGISTERED OR NOT;
5 OR (n)
6 (0) [(m)] Is contrary to public order, PUBLIC POLICY, or morality.
7 123.2, IN DETERMINING THE LIKELIHOOD OF CONFUSION IN
8 PARAGRAPHS (D), (E), AND (F), PRIMORDIAL CONSIDERATION
9 SHALL BE GIVEN TO THE DOMINANT FEATURE OF THE MARKS. (n)
10 THE SIMILARITY OF THE GOODS OR SERVICES COVERED BY THE
u MARKS ARE ALSO CONSIDERED. GOODS OR SERVICES THAT ARE
12 IN THE SAME CLASS ARE NOT NECESSARILY SIMILAR. LIKEWISE,
3 GOODS OR SERVICES THAT ARE IN DIFFERENT CLASSES ARE NOT
14 NECESSARILY DISSIMILAR. (144.2a)
15 [123.2.]123.3. As regards signs or devices mentioned in paragraphs (j);
16 {(),] and (), OR THOSE WHERE THE SHAPES OF THE GOODS
v7 THEMSELVES OR PORTION THEREOF ARE NOT NECESSITATED BY
18 TECHNICAL FACTORS, THEIR PACKAGING, OR CONTAINERS,
19 nothing shall prevent the registration of any such sign or device which
20 has become distinctive in relation to the goods for which registration is
21 requested as a result of the use that have been made of it in commerce in
22 the Philippines. The Office may accept as prima facie evidence that the
23 mark has become distinctive, as used in connection with the applicant’s
24 goods or services in commerce, proof of substantially exclusive and
25 continuous use thereof by the applicant in commerce in the Philippines
26 for AT LEAST THREE (3)/five (5)] years before the date on which the
27 claim of distinctiveness is made. (a)
28 [123.3.]123.4. The nature of the goods to which the mark is applied will
29 not constitute an obstacle to registration; (Sec. 4, R.A. No. 166a}
30 123.5. WITH RESPECT TO SECTIONS 123.1(E), (F), AND (N) THE
31 DECLARATION THAT A MARK IS WELL-KNOWN MAY BE REVOKED
32 BY A COMPETENT AUTHORITY IF THE CONDITION(S) ON WHICH
33 THE DECLARATION WAS MADE NO LONGER EXIST(S). (n)
34
35 SECTION 48. Secs. 124 to 131 of the IP Code are hereby collectively designated
36 as Part IV, Chapter IV, Trademark Application, as follows:
7 Chapter IV
38 ‘TRADEMARK APPLICATION
39
40 SECTION 49. Sec. 124 of the IP Code is hereby amended to read as follows:
a SEC. 124. Requirements of Application. - 124.1. The application for the
a2 registration of the mark shall be in Filipino or in English and shall
43 contain the following:
44 (a) A request for registration;
45 (b) The name and address of the applicant;
46 (c) The name of a State of which the applicant is a national or where
47 he has domicile; and the name of a State in which the applicant
48 has a real and effective industrial or commercial establishment, if
49 any;
50 [(d)Where the applicant is a juridical entity, the law under which it is
51 organized and existing;}
52 {(c)] (D) The appointment of an agent or representative, if the
53 applicant is not domiciled in the Philippines;
54 {(]] (EB) Where the applicant claims the priority of an earlier
55 application, an indication of:

38


52

53
54
55
56

i) 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,

ii) The date on which the earlier application was filed, and

Where available, the application number of the earlier

application;

[(g)] (F) 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)] (G) Where the mark is a three-dimensional mark, a statement to that

effect;

{(i)] (4) One or more reproductions of the mark OR SERIES OF MARKS,

as prescribed in the Regulations; (a)

{@)] @) A transliteration or translation of the mark or of some parts of the

mark, as prescribed in the Regulations;

[0] (3) 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

{()] (K) A signature by, or other self-identification of, the applicant or his

representative.

124.2. The applicant FOR REGISTRATION[or the registrant] shall file a
{d] Declaration of [aJActual [ulUse of the mark with evidence to that
effect, as prescribed by the Regulations within three (3) years and SIX (6)
MONTHS from the filing date of the application. THE REGISTRANT
SHALL LIKEWISE FILE A DECLARATION OF ACTUAL USE WITHIN:

(A) THREE (3) YEARS 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; AND

(D) ONE (1) YEAR FROM THE FIFTH ANNIVERSARY OF EACH
RENEWAL.

Otherwise, the application shall be refused REGISTRATION or the
REGISTERED mark shall be removed from the Register by the Director,
IN ACCORDANCE WITH THE _ REGULATIONS. THIS
NOTWITHSTANDING, NO REGISTRATION SHALL BE ISSUED WITHIN
ONE (1) YEAR FROM REMOVAL FROM THE REGISTER TO ANOTHER
APPLICANT FOR A MARK IDENTICAL TO THE ONE SO REMOVED. (a)

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. (N)

124.3. 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.

124.4, 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. (Sec. 5, R.A. No. 166a)

SECTION 50. Sec. 127.1 of the IP Code is hereby amended to read as follows:

SEC. 127. Filing Date. - 127.1. Requirements. - The filing date of an
application shall be the date on which the Office received the
APPLICATION FORM with the following INFORMATION|indications and
elements in English or Filipino]:

39


warivauawne

10
i

12
13

14
15
16
7
18
19

20
2a
22
23
24
25
26
27
28

29
30
31
32

33
34

35
36
37
38
39
40
41
42

43
4a
45

46
a7
48
49
so
S1
52
53
54

[(a)] An express or implicit indication that the registration of a
mark is sought;]

[(b)](A) The NAME|identity] of the applicant;

{(c)] Indications sufficient to|(B) The address and contact details of
the applicant or his representative, if any;

{(@)] (C) A reproduction of the mark to be registered [whose
registration is sought; and]

{(e}] (D) The list of the goods or services covered by the mark [for
which the registration is sought.]

SECTION 51. Sec. 130 of the IP Code is hereby amended to read as follows:

SEC. 130. Signature and Other Means of Self-Identification. - 130.1.
Where a signature is required, the Office shall accept:

(a) A hand-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.

130.2. The Office shall accept communications to it [by telecopier, or] by
electronic means OR THE LATEST TECHNOLOGIES subject to the
conditions or requirements that will be prescribed by the Regulations.
[When communications are made by telefacsimile, the reproduction of
the signature, or the reproduction of the seal together with, where
required, the indication in letters of the name of the natural person
whose seal is used, appears. The original communications must be
received by the Office within thirty (30) days from date of receipt of the
telefacsimile.}

130.3. 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. (n}

SECTION 52. Sec. 131 of the IP Code is hereby amended to read as follows:

SEC. 131. Priority Right. - 131.1. 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, shail 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.

[131.2. No registration of a mark in the Philippines by a person described
in this section shall be granted until such mark has been registered in
the country of origin of the applicant.]

131.2}131.3} 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 123.1(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. (131.3)

40


1 131.3[131.4.] In like manner and subject to the same conditions and
2 requirements, the right provided in this section may be based upon a
3 subsequent regularly filed application in the same foreign country:
4 Provided, That any foreign application filed prior to such subsequent
5 application has been withdrawn, abandoned, or otherwise disposed of,
6 without having been laid open to public inspection and without leaving
7 any rights outstanding, and has not served, nor thereafter shall serve, as
8 a basis for claiming a right of priority. (131.4) (Sec. 37, R.A. No. 166a)

9 SECTION 53. Secs. 132 to 145 of the IP Code are hereby collectively designated
10 under Part IV, Chapter V, Procedure for Registration of Trademark, as follows:
rte CHAPTER V
2 PROCEDURE FOR REGISTRATION OF TRADEMARK
13
14 SECTION 54. Sec. 132.2. of the IP Code is hereby deleted.

15 SECTION 55. Sec. 136 of the IP Code is hereby amended to read as follows:
16 SEC. 136. Issuance and Publication of Certificate. - When the period for
v7 filing the opposition AS PROVIDED IN THE PRECEDING SECTIONS has
18 expired, [or when the Director of Legal Affairs shall have denied the
19 opposition,] the Office, upon payment BY THE APPLICANT of the
20 required fee, shall issue the certificate of registration. Upon issuance of
21 THE a certificate [of registration,] THE REGISTERED MARK [notice
2 thereof making reference to the publication of the application] shall be
23 published in the IPO Gazette. (a) (Sec. 10, R.A. No. 165)

24

25 SECTION 56. Sec. 138 of the IP Code is hereby amended to read as follows:
26 SEC. 138. Certificates of Registration. - A certificate of registration of a
27 mark shall be prima facie evidence of the validity of the registration, the
28 registrant’s ownership of the mark, and of the registrant’s exclusive right
29 to use the same in connection with the goods or services SPECIFIED IN
30 THE CERTIFICATE and those that are related thereto [specified in the
31 certificate.] (Sec. 20, R.A. No. 165)

32 SECTION 57. Secs. 141 to 142 of the IP Code is hereby amended to read as
33 follows:

34 SEC. 141. Sealed and Certified Copies as Evidence. - Copies of any
35 records, books, papers, or drawings belonging to the Office relating to
36 marks, and copies of registrations, when authenticated by the seal of the
37 Office and certified [by the Director of the Administrative, Financial and
38 Human Resource Development Service Bureau or in his name] by [anJA
39 DULY AUTHORIZED employee of the Office [dulyauthorized—by—said
40 Pireetor}, shall be evidence in all cases wherein the originals would be
a1 evidence; and any person who applies and pays the prescribed fee shall
42 secure such copies. (n)

43 SEC. 142. Correction of Mistakes Made by the Office. - Whenever a
44 material mistake in a registration incurred through the fault of the Office
45 is clearly disclosed by the records of the Office, a certificate stating the
46 fact and nature of such mistake shall be issued without charge, recorded
47 and a printed copy thereof shall be attached to each printed copy of the
48 registration. Such corrected registration shall thereafter have the same
49 effect as the original certificate; or in the discretion of the [Director of the
50 Administrative, Financial and Human Resource Development Service
51 BureaujOFFICE, a new certificate of registration may be issued without
52 charge. All certificates of correction heretofore issued in accordance with
53 the Regulations and the registration to which they are attached shall
54 have the same force and effect as if such certificates and their issuance
55 had been authorized by this Act. (n)

41


2 SECTION 58. Sec. 144 of the IP Code is hereby amended to read as follows:

3 SEC. 144. Classification of Goods and Services. - (144.1.] Each
4 registration, and any publication of the Office which concerns an
5 application or registration effected by the Office shall indicate the goods
6 or services by their names, grouped according to the classes of the Nice
7 Classification, and each group shall be preceded by the number of the
8 class of that Classification to which that group of goods or services
9 belongs, presented in the order of the classes of the said Classification.

10 (Sec. 6, R.A. No. 166a)

a [144.2. Goods or services may not be considered as being similar or
2 dissimilar to each other on the ground that, in any registration or
3 publication by the Office, they appear in different classes of the Nice
14 Classification.]

1s

16 SECTION 59. Sec. 145 of the IP Code is hereby amended to read as follows:
7 SEC. 145. Duration. - A certificate of registration shall remain in force for
18 ten (10) years FROM THE DATE OF REGISTRATION.|: Provided, That
19 the registrant shall file a declaration of actual use and evidence to that
20 effect, or shall show valid reasons based on the existence of obstacles to
21 such use, as prescribed by the Regulations, within one (1) year from the
2 fifth anniversary of the date of the registration of the mark. Otherwise,
23 the mark shall be removed from the Register by the Office. ](a) (Sec. 12,
24 RA. No. 166a)

25

26 SECTION 60. Sec, 146 of the IP Code is hereby designated under Part IV,

27 Chapter VI, Procedure for Renewal of Trademark Registration and is amended to read
28 as follows:

29 Chapter VI

30 PROCEDURE FOR RENEWAL OF TRADEMARK REGISTRATION

31

32 SEC. 146. Renewal. - 146.1. A certificate of registration may be renewed
33 for periods of ten (10) years at its expiration upon payment of the
34 prescribed fee and upon filing of a request. The request shall contain the
35 following indications:

36 (a) An indication that renewal is sought;

37 (b) The name and address of the registrant or his successor-in-
38 interest, hereafter referred to as the "right holder’;

39 (c) The registration number of the registration concerned;

40 (d) The filing date of the application which resulted in the registration
a1 concerned to be renewed;

42 (c) Where the right holder has a representative, the name and
43 address of that representative;

44 () The names of the recorded goods or services for which the renewal
45 is requested or the names of the recorded goods or services for
46 which the renewal is not requested, grouped according to the
47 classes of the Nice Classification to which that group of goods or
48 services belongs and presented in the order of the classes of the
49 said Classification; and

50 (g) A signature by the right holder or his representative.

51 146.2. Such request shall be in Filipino or English and may be made at
52 any time within six (6) months before the expiration of the period for
53 which the registration was issued or renewed, or it may be made within

42


BwoNe

aw

27
28

29
30

31
32
33
34

35
36

37
38
39
40

41
42
43

44

six (6) months after such expiration on payment of the additional fee
herein prescribed.

146.3. If the Office refuses to renew the registration, it shall notify the
registrant of his refusal and the reasons therefor.

146.4. An applicant for renewal not domiciled in the Philippines shall be
subject to and comply with the requirements of this Act. (Sec. 15, R.A.
No. 166a)

146.5. DECLARATIONS OF ACTUAL USE SHALL BE FILED WITHIN
THE PERIODS PRESCRIBED IN SEC. 124.2 FOR RENEWED
‘TRADEMARK REGISTRATIONS.

SECTION 61. Secs. 147 to 148 of the IP Code are hereby collectively
designated under Part IV, Chapter VII, Rights of Registrants with Sec. 147.2
amended to read as follows:

Chapter VII
RIGHTS OF REGISTRANTS
XXX

147.2. The exclusive right of the owner of a well-known mark
defined in Subsection 123.1(e) [which is registered in the
Philippines,] shall extend to goods and services which are not
similar to those in respect of which the mark is registered:
Provided, That use of that mark in relation to those goods or
services would indicate a connection between those goods or
services and the owner of the registered mark: Provided further,
That the interests of the owner of the registered mark are likely to
be damaged by such use. (n)

XXX

SECTION 62. Secs. 149 to 150 of the IP Code are hereby collectively designated
under Part IV, Chapter VIII, Assignment and Transmission of Trademark Rights:

Chapter VIII
ASSIGNMENT AND TRANSMISSION OF TRADEMARK RIGHTS

SECTION 63. Secs. 151 to 154 of the IP Code are hereby collectively designated
under Part IV, Chapter IX, Cancellation of Trademarks:

Chapter IX
CANCELLATION OF TRADEMARKS

SECTION 64. Sec. 155 of the IP Code is hereby collectively designated under
Part IV, Chapter X, Infringement of Trademark Rights and is hereby amended to read
as follows:

Chapter X

43


ES woavan

12

14
15
16
7
18
19
20
2
22
23
24

25
26
27
28
29
30
31

32
33
34
35
36

37

38
39
40
41
a2

43

45
46
47
48
49
50
51
52
53
54
55

INFRINGEMENT OF TRADEMARK RIGHTS

SEC. 155. [Remedies;] Infringement. - Any person who shall, without the
consent of the owner of the registered mark:

155.1. Use in commerce any reproduction, counterfeit, copy, or colorable
imitation of a registered mark or the same 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;-oF

155.2. Reproduce, counterfeit, copy or colorably imitate a registered
mark or a dominant feature thereof and apply such reproduction,
counterfeit, copy or colorable imitation to labels, signs, prints, packages,
wrappers, receptacles or advertisements intended to be used in
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: Provided, That the infringement
takes place at the moment any of the acts stated in Subsection 155.1 or
this subsection are committed regardless of whether there is actual sale
of goods or services using the infringing material; OR- (Sec. 22, R.A. No
166a)

155.3. BENEFIT DIRECTLY OR INDIRECTLY FROM THE INFRINGING
ACTIVITY OF ANOTHER PERSON WHO COMMITS AN
INFRINGEMENT IN A COMMERCIAL SCALE, PROVIDED THAT THE
PERSON BENEFITING HAS BEEN GIVEN NOTICE OF THE
INFRINGING ACTIVITY AND HAS THE RIGHT AND ABILITY TO
CONTROL THE ACTIVITIES OF THE OTHER PERSON. THIS APPLIES
ONLY IN CASES INVOLVING COUNTERFEIT TRADEMARK GOODS.

IF, UPON OBTAINING SUCH NOTICE OF THE INFRINGING ACTIVITY,
ONE ACTS EXPEDITIOUSLY TO REMOVE, OR DISABLE ACCESS TO,
THE MATERIAL, HE SHALL NOT BE LIABLE FOR EITHER
INFRINGEMENT OR DAMAGES IF THERE BE NO INFRINGEMENT
FOUND. (n)

SECTION 65. Secs. 156 to 164 of the IP Code are collectively designated under
Part IV, Chapter XI, Remedies, with Secs. 157, 158, and 160 to 164 hereby removed
from Part Il and are consolidated with other provisions, or later restored with
modifications in a new Part VI below, and the remaining provisions of this Chapter are
accordingly renumbered, as follows:

SEC. 156. [Actions, and Damages and Injunction _for
Infringement]REMEDIES - 156.1. The owner of a registered mark may
recover damages from any person who infringes his rights, and the
measure of the damages suffered shall be either the reasonable profit
which the complaining party would have made, had the defendant not
infringed his rights, or the profit which the defendant actually made out
of the infringement, INCLUDING ADVERTISING REVENUES, or in the
event such measure of damages cannot be readily ascertained with
reasonable certainty, then the court may award as damages a reasonable
percentage based upon the amount of gross sales of the defendant or the
value of the services in connection with which the mark or trade name

44


wae

ove

11
12
13
14
15
16
7
18
19
20
21

22
23
24
25

26
27
28
29
30
31
32
33

35
36

37
38
39
40
41
42

43

45
46

a7
4g
49
50
SL
52
53

55
56

was used in the infringement of the rights of the complaining party. (a)
(Sec. 23, first par., R.A. No. 166a)

156.2. On application of the complainant, the court may impound during
the pendency of the action, sales invoices and other documents
evidencing sales. (n)

156.3. In cases where actual intent to mislead the public or to defraud
the complainant is shown, in the discretion of the court, the damages
may be doubled. (Sec. 23, first par., R.A. No. 166)

156.4. The complainant, upon proper showing, may also be granted
injunction. (Sec. 23, second par., R.A. No. 166a)

[SEC. 157. Power of Court to Order Infringing Material Destroyed. - 157.1.
In any action arising under this Act, in which a violation of any right of
the owner of the registered mark is established, the court may order that
goods found to be infringing be, without compensation of any sort,
disposed of outside the channels of commerce in such a manner as to
avoid any harm caused to the right holder, or destroyed; and all labels,
signs, prints, packages, wrappers, receptacles and advertisements in the
possession of the defendant, bearing the registered mark or trade name
or any reproduction, counterfeit, copy or colorable imitation thereof, all
plates, molds, matrices and other means of making the same, shall be
delivered up and destroyed.]

[157.2. 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. (Sec. 24, R.A. No. 166a)]

(SEC. 158. Damages; Requirement of Notice. - 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. (Sec. 21, R.A. No. 166a)]

SEC. [159.]157. Limitations to Actions for TRADEMARK Infringement. -
Notwithstanding any other provision of this Act, the remedies given to
the owner of a right infringed under this Act shall be limited as follows:

[159.1,]157.1. Notwithstanding the provisions of Section 155 hereof, a
registered mark shall have no effect against any person who, in good
faith, before the filing date or the priority date, was using the mark for
the purposes of his business or enterprise: Provided, That his right may
only be transferred or assigned together with his enterprise or business
or with that part of his enterprise or business in which the mark is used.

[159.2.]157.2. Where an infringer who is engaged solely in the business
of printing the mark or other infringing materials for others is an
innocent infringer, the owner of the right infringed shall be entitled as
against such infringer only to an injunction against future printing.

[159.3.]157.3. Where the infringement complained of is contained in or
is part of paid advertisement in a newspaper, magazine, or other similar
periodical or in an electronic communication, the remedies of the owner
of the right infringed as against the publisher or distributor of such
newspaper, magazine, or other similar periodical or electronic
communication shall be limited to an injunction against the presentation
of such advertising matter in future issues of such newspapers,
magazines, or other similar periodicals or in future transmissions of such
electronic communications. The limitations of this subparagraph shall
apply only to innocent infringers: Provided, That such injunctive relief

45


1 shall not be available to the owner of the right infringed with respect to
2 an issue of a newspaper, magazine, or other similar periodical or an
3 electronic communication containing infringing matter where restraining
4 the dissemination of such infringing matter in any particular issue of
5 such periodical or in an electronic communication would delay the
6 delivery of such issue or transmission of such electronic communication
7 is customarily conducted in accordance with the sound business
8 practice, and not due to any method or device adopted to evade this
9 section or to prevent or delay the issuance of an injunction or restraining
10 order with respect to such infringing matter; and

rte [159.4.]157.4. There shall be no infringement of trademarks or trade
2 names of imported or sold drugs and medicines allowed under Section
B 72.1 of this Act, as well as imported or sold off-patent drugs and
4 medicines: Provided, That said drugs and medicines bear the registered
15 marks that have not been tampered, unlawfully modified, or infringed
16 upon as defined under Section 155 of this Code. (159.4)

v7 [SEC. 160. Right of Foreign Corporation to Sue in Trademark or Service
18 Mark Enforcement Action. - Any foreign national or juridical person who
19 meets the requirements of Section 3 of this Act and does not engage in
20 business in the Philippines may bring a civil or administrative action
21 hereunder for opposition, cancellation, infringement, unfair competition,
22 or false designation of origin and false description, whether or not it is
23 licensed to do business in the Philippines under existing laws. (Sec. 21-
24 A, R.A. No. 166a)]

25 [SEC. 161. Authority to Determine Right to Registration. - In any action
26 involving a registered mark, the court may determine the right to
27 registration, order the cancellation of a registration, in whole or in part,
28 and otherwise rectify the register with respect to the registration of any
29 party to the action in the exercise of this. Judgment and orders shall be
30 certified by the court to the Director, who shall make appropriate entry
31 upon the records of the Bureau, and shall be controlled thereby. (Sec.
32 25, R.A. No. 166a)]

33 [SEC. 162. Action for False or Fraudulent Declaration. - Any person who
34 shall procure registration in the Office of a mark by a false or fraudulent
35 declaration or representation, whether oral or in writing, or by any false
36 means, shall be liable in a civil action by any person injured thereby for
37 any damages sustained in consequence thereof, (Sec. 26, R.A. No. 166}]
38 |SEC. 163. Jurisdiction of Court. - All actions under Sections 150, 155,
39 164, and 166 to 169 shall be brought before the proper courts with
40 appropriate jurisdiction under existing laws. (Sec. 27, R.A. No. 166)
41 [SEC. 164. Notice of Filing Suit Given to the Director. - It shall be the duty
42 of the clerks of such courts within one (1) month after the filing of any
43 action, suit, or proceeding involving a mark registered under the
44 provisions of this Act, to notify the Director in writing setting forth: the
45 names and addresses of the litigants and designating the number of the
46 registration or registrations and within one (1) month after the judgment
47 is entered or an appeal is taken, the clerk of court shall give notice
48 thereof to the Office, and the latter shall endorse the same upon the
49 filewrapper of the said registration or registrations and incorporate the
50 same as a part of the contents of said filewrapper. (164)]

51
52 SECTION 66. Secs. 165 to 166 of the IP Code are hereby collectively designated

53 under Part IV, Chapter XII, Trade Names or Business Names, with Sec. 165 split into
54 five new sections and are amended and renumbered to read as follows:

55
56 Chapter XII

46


1 TRADE NAMES OR BUSINESS NAMES

2

3 SEC. [165.]158. Trade Names or Business Names. - [165.1.] A name or

4 designation may not be used as a trade name if by its nature or the use

5 to which such name or designation may be put, it is contrary to public

6 order or morals and if, in particular, it is liable to deceive trade circles or

7 the public as to the nature of the enterprise identified by that name.

8 (165.1)

9 SEC. 159, PROTECTION OF TRADE NAMES AGAINST UNLAWFUL
10 ACTS, [-165.2.] (a) Notwithstanding any laws or regulations providing for
n any obligation to register trade names, such names shall be protected,
2 even prior to or without registration, against any unlawful act committed
2B by third parties.

14 (b) In particular, any subsequent use of the trade name by a third
15 party, whether as a trade name or a mark or collective mark, or any such
16 use of a similar trade name or mark, likely to mislead the public, shall be
7 deemed unlawful. (165.2)

18 SEC. 160. REMEDIES. -[165.3.] The remedies provided for in Sections
19 153 to 156 and Sections 166162 and [167 |CHAPTER XMI shall apply
20 mutatis mutandis. (165.3a)

21 SEC. 161. ASSIGNMENT AND TRANSFER OF OWNERSHIP OF TRADE
22 NAMES, - (165.4.] Any change in the ownership of a trade name shall be
23 made with the transfer of the enterprise or part thereof identified by that
24 name. The provisions of Subsections 149.2 to 149.4 shall apply mutatis
25 mutandis. (165.4)

26 SEC. [166.]162.Goods Bearing Infringing Marks or Trade Names. - No
27 article of imported merchandise which shall copy or simulate the name of
28 any domestic product, or manufacturer, or dealer, or which shall copy or
29 simulate a mark registered in accordance with the provisions of this Act,
30 or shall bear a mark or trade name calculated to induce the public to
31 believe that the article is manufactured in the Philippines, or that it is
32 manufactured in any foreign country or locality other than the country or
33 locality where it is in fact manufactured, shall be admitted to entry at
34 any customhouse of the Philippines. In order to aid the officers of the
35 customs service in enforcing this prohibition, any person who is entitled
36 to the benefits of this Act, may require that his name and residence, and
37 the name of the locality in which his goods are manufactured, a copy of
38 the certificate of registration of his mark or trade name, to be recorded in
39 books which shall be kept for this purpose in the Bureau of Customs,
40 under such regulations as the Collector of Customs with the approval of
41 the Secretary of Finance shall prescribe, and may furnish to the said
2 Bureau facsimiles of his name, the name of the locality in which his
43 goods are manufactured, or his registered mark or trade name, and
44 thereupon the Collector of Customs shall cause one (1) or more copies of
45 the same to be transmitted to each collector or to other proper officer of
46 the Bureau of Customs. (166) (Sec. 35, R.A. No. 166)

47 SECTION 67. Sec. 167 of the IP Code is hereby designated under Part IV,
48 Chapter XIII, Collective Marks and Certification Marks, with Sec. 165 split into four
49 new sections and are amended and renumbered to read as follows:

50 CHAPTER XII
51 COLLECTIVE MARKS AND CERTIFICATION MARKS

52 SEC. [167.]163. Collective Marks AND CERTIFICATION MARKS. -
53 [167.1.] Subject to Sfubjsections [167.2]165 and [167.3]166, Chapters I
54 to XI of Part Iv[Sections 122 to 164 and 166] shall apply to collective
55 marks, except that references therein to "mark" shall be read as
56 “collective mark" OR “CERTIFICATION MARK”. (167. 1a)

47


28

29
30
31
32

33

34
35
36

37
38
39
40
41
42

43

45,
46
47

49
50
st

52
53
54
55
56

SECTION 68.

SEC. 164, REGISTRATION OF COLLECTIVE MARKS OR
CERTIFICATION MARKS. - |167.2. |(a) 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, 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. (167.2(a)a)

SEC. 165. DUTY TO NOTIFY OF CHANGES IN AGREEMENT OR
STANDARDS. [-(b)| The registered owner of a collective mark OR A
CERTIFICATION MARK shali notify the Director of any changes made in
respect of the agreement or standards referred to in paragraph (a).
(167.2.(b)a)

SEC. _166.CANCELLATION OF COLLECTIVE MARKS OR
CERTIFICATION MARKS. - (167.3. In addition to the grounds provided
in Section 151[149], the Court shall cancel the registration of a collective
mark OR REGISTRATION MARK if the person requesting the
cancellation proves that only the registered owner uses the mark, or that
he uses or permits its use in contravention of the agreements referred to
in Subsection 165 [466-2} or that he 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. (67.3a)

SEC. 167. PROHIBITION AGAINST LICENSING OF COLLECTIVE
MARKS OR CERTIFICATION MARKS. - (167.4.| The registration of a
collective OR CERTIFICATION mark, or an application therefor shall not
be the subject of a license contract. (167.4a) (Sec. 40, R.A. No. 166a)

Chapter XIV.

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

SEC. 168. Unfair Competition, Rights, Regulation-and-Remedies. - 168.1.
A person who has identified in the mind of the public the goods he
manufactures or deals in, his business or services from those of others,
whether or not a registered mark is employed, has a property right in the
goodwill of the said goods, business or services so identified, which will
be protected in the same manner as other property rights.

168.2. Any person who shall employ deception or any other means
contrary to good faith by which he shall pass off the goods manufactured
by him or in which he deals, or his business, or services 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.

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

Any person, who is selling his goods and gives them the general
appearance of goods of another manufacturer or dealer, either 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

48

Secs. 168 to 169 of the IP Code is hereby designated under Part
IV, Chapter XIV, Protection Against Unfair Competition, False Designations of Origin,
and False Description or Representation, with Secs. 168.4 and 169.2 absorbed and
moved to Sec. 170 of the Code, the amendment being as follows:


1 believe that the goods offered are those of a manufacturer or dealer,
2 other than the actual manufacturer or dealer, or who otherwise clothes
3 the goods with such appearance as shall deceive the public and defraud
4 another of his legitimate trade, or any subsequent vendor of such goods
5 or any agent of any vendor engaged in selling such goods with a like
6 purpose;
7 Any person who by any artifice, or device, or who employs any other
8 means calculated to induce the false belief that such person is offering
9 the services of another who has identified such services in the mind of
10 the public; or
a Any person who shall make any false statement in the course of trade or
12 who shall commit any other act contrary to good faith of a nature
13 calculated to discredit the goods, business or services of another.
14 [168.4. The remedies provided by Sections 156, 157 and 161 shall apply
15 mutatis mutandis. (Sec. 29, R.A. No. 166a)]
16 SEC. 169. False Designations of Origin; False Description or
17 Representation. - 169.1. Any person who, on or in connection with any
18 goods or services, or any container for goods, uses in commerce any
19 word, term, name, symbol, or device, or any combination thereof, or any
20 false designation of origin, false or misleading description of fact, or false
21 or misleading representation of fact, which:
22 {a) Is likely to cause confusion, or to cause mistake, or to deceive as to
2B the affiliation, connection, or association of such person with another
24 person, or as to the origin, sponsorship, or approval of his or her goods,
25 services, or commercial activities by another person; or
26 {b) In commercial advertising or promotion, misrepresents the nature,
27 characteristics, qualities, or geographic origin of his or her or another
28 person’s goods, services, or commercial activities, shall be liable UNDER
29 THIS SECTION AND SHALL BE SUBJECT TO AN ACTION
30 THEREFOR.[to a civil action for damages and injunction provided in
31 Sections 156 and 157 of this Act by any person who believes that he or
32 she is or likely to be damaged by such act.]
33 [169.2. Any goods marked or labeled in contravention of the provisions of
34 this Section shall not be imported into the Philippines or admitted entry
35 at any customhouse of the Philippines. The owner, importer, or
36 consignee of goods refused entry at any customhouse under this section
37 may have any recourse under the customs revenue laws or may have the
38 remedy given by this Act in cases involving goods refused entry or seized.
39 (Sec. 30, R.A. No. 166a)}
40
41 SECTION 69. A new Sec. 170 is inserted in Part IV, Chapter XIII, as follows:
42 SEC. 170. REMEDIES. - ANY PERSON WHO BELIEVES THAT HE OR
43 SHE IS OR LIKELY TO BE DAMAGED BY THE ACTS IN THIS
44 CHAPTER MAY INSTITUTE A CIVIL ACTION FOR DAMAGES AND
45 INJUNCTION PROVIDED IN SECTIONS 156 AND 157, WHICH APPLY
46 MUTATIS MUTANDIS. (168.6,169.1(b)) (Sec. 29, R.A. No. 166a).

47 SECTION 70. Part IV of the IP Code (The Law on Copyright), comprising Secs.
48 171 to 224, is hereby designated as Part V and amended to read as follows:

a9

50 PART ViIV].

51 [THE LAW ON] COPYRIGHT AND RELATED RIGHTS
52

4g


1

aw

10
n
12

13
14

15
16
17
18
19
20

2a
22
23
24
25

26
7
28
29
30
31
32

33
34.
35
36
37
38

39
40
41
42

43
44
45
46
47
48
49
50
51
52
53
54

SECTION 71.

Chapter I
PRELIMINARY PROVISIONS

SEC. 171, Definitions. - For the purpose of this Act, the following terms
have the following meaning:

171.1. “COPYRIGHT” REFERS TO THE BUNDLE OF EXCLUSIVE
ECONOMIC RIGHTS GRANTED BY LAW TO AN AUTHOR AND
SUBJECT TO CERTAIN LIMITATIONS; (n)

171.2.“MORAL RIGHTS” REFERS TO THE BUNDLE OF EXCLUSIVE
RIGHTS WHICH ALLOW AUTHORS AND CREATORS TO PRESERVE
AND PROTECT THEIR PERSONAL LINK WITH THEIR WORK. (n)

171.3.{171.1.] "Author" is the natural person who has created the work;
(171.1)

171.4. A “COLLECTIVE MANAGEMENT ORGANIZATION” IS A NON-
STOCK, NON-PROFIT ORGANIZATION, LOCAL OR FOREIGN, WHICH
HAS FOR ITS SOLE AND PRINCIPAL PURPOSE THE EXERCISE OF
COPYRIGHT OR RELATED RIGHTS ON BEHALF OF MORE THAN
ONE RIGHT HOLDER, FOR THE COLLECTIVE BENEFIT OF THE SAID
RIGHT HOLDERS; (n)

171.5,[171.2.] A “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; (171.2)

171.6. [171.3.] "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;
(171.3)

171.7.[171.4.] A “computer” is an electronic or similar device having
information-processing capabilities, and a "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; (171.4)

171.8.[171.5.] "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; (171.5)

171.9,[171.6.] "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 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 171.6[171.3}; (171.6)

50

Section 171 of the IP Code is hereby amended to read as follows:


171.10.[171.7] "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;
(171.7)

171.11.[171.8.] "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; (171.8)

171.12.[171.9.] "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
Section 185 of this Act (171.9) (Sec. 41 [E], P.D. No. 49a);

171.13,[171.10.] A "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; (171.10)

171.14.[171.11,] A "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.
(171.11)

171.15,[171.12.] “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; (171.12)

171.16.[171.13.] “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 public of a work, sound
recording or performance. (171.13)

SECTION 72. Sec. 172 of the IP Code is hereby amended to read as follows:

SEC. 172. Literary and Artistic Works. - 172.1 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. BY ORIGINALITY IS MEANT THAT THE WORK WAS
CREATED BY THE AUTHOR THROUGH HIS OWN SKILL, LABOR AND
JUDGMENT, WITHOUT DIRECTLY COPYING OR EVASIVELY
IMITATING THE WORK OF ANOTHER, and shall include in particular:
XXX

172.2. Works are protected by the sole fact of their creation, irrespective
of their mode, MEDIUM, or form of expression, as well as of their
content, quality and purpose, AND WITHOUT NEED FOR ANY
FORMALITY. REGISTRATION IS NOT REQUIRED FOR COPYRIGHT
PROTECTION. (172a) (Sec. 2, P.D. No. 49a)

SECTION 73. Sec. 175 of the IP Code is hereby amended to read as follows:

Chapter IV
WORKS NOT PROTECTED

51


14

1s
16
17
18
19

20
21

22
23

24
25
26
27
28

29
30
31
32
33
34
35
36
37
38

39
40
41
a2
43
44

45,
46

47
48
49
50
st
52
53

SEC. 175. Unprotected Subject Matter. - Notwithstanding the provisions
of Section 172 and 173, no protection shall extend, under this law, to
any OF THE FOLLOWING:

a) ANY idea, procedure, system, method OF {or] operation, concept,
principle, discovery or mere data as such, even if they are expressed,
explained, illustrated or embodied in a work; news of the day and other
miscellancous facts having the character of mere items of press
information; or any official text of a legislative, administrative or legal
nature, as well as any official translation thereof;

B) THE DESIGN OF AN ARTICLE OF MANUFACTURE OR WORK OF
APPLIED ART THAT IS FUNCTIONAL IN NATURE AND CANNOT BE
IDENTIFIED SEPARATELY FROM, OR EXIST INDEPENDENTLY OF,
THE UTILITARIAN ASPECTS OF SUCH ARTICLE. (175a)

SECTION 74, Sec. 178.4 of the IP Code is hereby amended to read as follows:

178.4. 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; (a)

SECTION 75. Sec. 183 of the IP Code is hereby amended to read as follows:

SEC 183, COLLECTIVE MANAGEMENT ORGANIZATIONS [Designation
of Society. -

183.1. Designation of CMO, - The owners of copyright and related
rights or their heirs may designate a COLLECTIVE MANAGEMENT
ORGANIZATION (CMO)[society] of artists, writers, composers and other
right-holders to collectively EXERCISE|manage their] economic [or
moral] rights on their behalf. (183a)

183.2. Mandatory Accreditation with the IPO.- For the said
ORGANIZATIONS [societies] to enforce the rights of their members, they
shall first secure the necessary accreditation from the Intellectual
Property Office. BOTH LOCAL AND FOREIGN CMOS ANDINDIVIDUALS
OR ENTITIES ENGAGING IN ANY OF THE ACTIVITIES IN SEC. 183.3
IN BEHALF OF MORE THAN ONE RIGHT HOLDER ARE REQUIRED
TO APPLY FOR ACCREDITATION. PARENTS IN RELATION TO THEIR
MINOR CHILDREN OR OTHER PERSONS EXERCISING
GUARDIANSHIP OVER THEIR WARDS ARE NOT REQUIRED TO
APPLY FOR ACCREDITATION.

ANY PERSON MAY REFUSE THE PAYMENT OR REMITTANCE OF
ROYALTIES TO A CMO WHICH IS NOT ACCREDITED. IN ADDITION,
ANY SUCH ORGANIZATION FOUND FUNCTIONING AS A CMO
WITHOUT SAID ACCREDITATION AFTER DUE NOTICE AND
HEARING SHALL BE LIABLE FOR A REASONABLE FINE IN NO CASE
LESS THAN P20,000.00. (183a) (Sec. 32, P.D. No. 49a)

183.3, EFFECT OF ACCREDITATION. - ACCREDITATION SHALL
AUTHORIZE A CMO TO PERFORM ANY OR ALL OF THE FOLLOWING:

a) NEGOTIATION WITH AND GRANT OF LICENSES TO USERS IN
RESPECT OF THE RIGHTS AND USES THAT THE COLLECTIVE
MANAGEMENT ORGANIZATION IS MANDATED BY ITS
MEMBERS TO MANAGE, WHICH INCLUDES THE USAGE OR
EXPLOITATION OF COPYRIGHTED WORKS IN PHILIPPINE
TERRITORY BY DIGITAL MUSIC SERVICES, CONCERT
PRODUCERS, CABLE COMPANIES AND OTHER SIMILAR
USERS;

82


24

25
26
27
28
29
30
31
32
33
34
35
36

37
38

39

40
a4
42
43

45

46
a7

48
49
50
51
52
53
54
55

56
57

SECTION 76.

b) COLLECTION OF ROYALTIES AND OTHER FORMS OF
REMUNERATION FOR THE LICENSE OF RIGHTS WHICH THE
COLLECTIVE MANAGEMENT ORGANIZATION MANAGES FOR
ITS MEMBERS;

c) COLLECTION OF PROCEEDS IN SUBSEQUENT TRANSFERS OF
THE ORIGINALS OF PAINTINGS, SCULPTURES, AND
MANUSCRIPTS IN RELATION TO CHAPTER XI OF PART V OF
THIS ACT;

d) COLLECTION OF ADDITIONAL REMUNERATION FOR
SUBSEQUENT COMMUNICATION OR BROADCAST OF A
PERFORMANCE;

e) COLLECTION OF SINGLE EQUITABLE REMUNERATION FOR
THE BROADCAST, OTHER COMMUNICATION TO THE PUBLIC,
OR PUBLIC PERFORMANCE OF A SOUND RECORDING OR OF
AN AUDIOVISUAL FIXATION IN RELATION TO SECTION 209;
AND/OR

f) DISTRIBUTION OF THE ABOVE-MENTIONED COLLECTIONS
TO THE RIGHTS HOLDERS. (N)

183.4, 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 SECTION 199. (Cf. 198. 1a)

() The reproduction, oF distribution AND MAKING AVAILABLE TO THE
PUBLIC OF WORKS IN AN ACCESSIBLE FORMAT COPY FOR of
published articles or materials in a specialized format exclusively for the
use of the blind,OR visually [- and reading-] impaired [persons] 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. (a)

(M) LIMITATIONS AS MAY BE PROVIDED IN IMPLEMENTING RULES
AND REGULATIONS.

SECTION 77. Sec. 188 of the IP Code is hereby amended to read as follows:

SECTION 78.

Code.

SEC. 188. [Reprographic] Reproduction by Libraries - 188.1

Notwithstanding the provisions of Subsection 177.1, 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]:

SEC. 190. 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. (Sec. 30, P.D. No. 49)

Sec. 184.1(I) of the IP Code is hereby amended to read as follows:

Sec. 190 of the IP Code is transferred to the new Part VI of the IP

SECTION 79.

Sec. 191 of the IP Code becomes Sec. 190 under Part V, Chapter

IX, Deposit and Recordation, and is hereby amended to read as follows:

53


aw

wavan

uw
12
13
14
15
16
7
18
19

20
2
22
23

24
25
26
27
28
29
30
31

49

51
52
53

SECTION 81.

SECTION 82.

CHAPTER IX
Deposit and [Notice]RECORDATION

SEC. [191.]190.Deposit AND RECORDATION [and Notice of Deposit}-with
the National Library and the Supreme Court Library. -

190.1. THE DEPOSIT AND RECORDATION 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 AND
‘THE SUPREME COURT LIBRARY.

190.2. 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,]-THE NATIONAL LIBRARY
AND THE SUPREME COURT LIBRARY by personal delivery or by
registered mail, 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. | (a)

190.3 THE AFOREMENTIONED LIBRARIES MAY DEPUTIZE THE
INTELLECTUAL PROPERTY OFFICE TO RECEIVE DEPOSITS AND
ISSUE CERTIFICATES OF DEPOSIT AND RECORDATION IN THEIR
BEHALF. (N)

190.4. SUCH RECORDATION AND DEPOSIT OF A WORK WITH THE
NATIONAL LIBRARY, SUPREME COURT LIBRARY, OR THE
INTELLECTUAL PROPERTY 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 SINE QUA NON TO A CLAIM OF COPYRIGHT
INFRINGEMENT.

SECTION 80. A new Sec. 191 is hereby inserted in the IP Code as follows:

SEC. 191. CANCELLATION OF CERTIFICATE OF DEPOSIT AND
RECORDATION. - 191.1. A CERTIFICATE OF DEPOSIT AND
RECORDATION 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
IPO, OR OF THE APPROPRIATE COURT, PURSUANT TO WHICH
A NEW CERTIFICATE MAY BE ISSUED.

191.2, 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.

SEC. [195.]193. WAIVABILITY[Waiver] of Moral Rights. - An author may
waive his rights mentioned in Section 193 by a written instrument, but
no such waiver shall be valid where its effects is to permit another:

54

Sec. 192 of the IP Code is transferred to the new Part VI of this
Code. Section 193 becomes Sec. 192, and Sec. 194 is further renumbered to Sec. 195.

The current Sec. 195 of the IP Code is hereby renumbered to
become Sec. 193, and is hereby amended to read as follows:


Nousune

cS

10

u
12
13

14
15

16
17
18
19
20
2
22
23
24
25

26
27
28
29
30

31
32
33
34

35
36
37
38
39
40
4
42
43

44
45
46
a7
48
49
50

51
52

(A) [195.1.] To use the name of the author, or the title of his work, or
otherwise to make use of his reputation with respect to any
version or adaptation of his work which, because of alterations
therein, would substantially tend to injure the literary or artistic
reputation of another said author; or (a)

(B) (195.2.] To use the name of the author with respect to a work he
did not create. (Sec. 36, P.D. No. 49)

SECTION 83. A new Sec. 194 is hereby introduced to the IP Code to read as

follows:

SEC. 194, NON-TRANSFERABILITY OF MORAL RIGHTS. - MORAL
RIGHTS SHALL NOT BE ASSIGNABLE OR SUBJECT TO LICENSE.
(198.1)

SECTION 84. Sec. 198 of the IP Code is hereby amended to read as follows:

SEC. 198. Term of Moral Rights. — [198.1.) The rights of an author
UNDER THIS CHAPTER [under Section 193.1. shall last during the
lifetime of the author and in perpetuity after his death while the rights
under Sections 193.2. 193.3. and 193.4 shall be coterminous with the
economic rights., the moral rights shall not be assignable or subject to
license. 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. In default of such person
or persons, such enforcement shall devolve upon cither the author's
heirs, and in default of the heirs, the Director of the National Library.]

[198.2. For purposes of this Section, "Person" shall mean any individual,
partnership, corporation, association, or society. The Director of the
National Library may prescribe reasonable fees to be charged for his
services in the application of provisions of this Section. (Sec. 39, P.D. No.
49) (a)]

SECTION 85. Sec. 199 of the IP Code is hereby amended to read as follows:

SEC. 199. Enforcement Remedies. -

199.1. WHO MAY ENFORCE. -

a) DURING HIS LIFETIME, ONLY THE AUTHOR MAY SEEK
ENFORCEMENT OF HIS 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 SERVICES IN THE APPLICATION OF THE PROVISIONS OF
THIS SECTION, (198.2a)

c) IN DEFAULT OF SUCH PERSON OR PERSONS, SUCH
ENFORCEMENT SHALL DEVOLVE UPON EITHER THE

55


ene

Nous

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. (199a) (Sec. 40, P.D. No. 49)

SECTION 86. Sec. 202 of the IP Code is designated under the subheading
“General Provisions” under Part V, Chapter XII, Rights of Performers, Producers of
Sound Recordings, and Broadcasting Organizations, and is hereby amended to read as
follows:

co

10

u
12
13

14
15
16
7

18
19
20
21

22
23
24

25
26
27
28

29
30
31
32
33
34
35
36

37
38
39
40
41
42

43
44
45

46
47

49

51
52
53

GENERAL PROVISIONS

SEC. 202. Definitions, - For the purpose of this Act, the following terms
shall have the following meanings:

202.1. "Performers" are actors, singers, musicians, dancers, and other
persons who act, sing, declaim, play in, interpret, or otherwise perform
literary and artistic work, OR EXPRESSION OF FOLKLORE;

202.2. "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 orcother
audiovisual work;

202.3. An "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;

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

202.5. "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;

202.6. "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 quality]. FOR THE
PURPOSES OF THIS SECTION, SOUND RECORDINGS MADE
AVAILABLE TO THE PUBLIC UNDER SECTION 208.4 SHALL BE
CONSIDERED AS IF THEY HAD BEEN PUBLISHED.PROVIDED FURT
fa)

202.7. "Broadcasting” means the transmission by wireless means for the
public reception of sounds or of images or of representations thereof;
such transmission by satellite is also "broadcasting; TRANSMISSION
OF ENCRYPTED SIGNALS is where the means for decrypting are
provided to the public by the broadcasting organization or with its
consent; (a)

202.8. “REBROADCASTING” MEANS THE SIMULTANEOUS
BROADCASTING BY ONE BROADCASTING ORGANIZATION OF THE
BROADCAST OF ANOTHER BROADCASTING ORGANIZATION; (n)

202.9.[202.8.] "Broadcasting organization” shall include a natural person
or a juridical entity duly authorized to engage in broadcasting; and
(202.8)

202.10.[202.9.] "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 {sounds of a performance or the
representations of sounds fixed in a sound recording|AN UNFIXED
PERFORMANCE, OF SOUNDS OF A PERFORMANCE OR THE
REPRESENTATION OF SOUNDS FIXED IN A SOUND RECORDING OR

56


13

14
15
16
7

18

19
20

2.

22
23
24

25
26
27

28
29
30
31

32
33
34
35

36
37
38
39
40

a

42
43
44
45

a7
48
49

50
51
52
53
Sa

SECTION 87.

202.10.{202.9.] “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 [sounds of a performance or the
representations of sounds fixed in a sound recording|AN UNFIXED
PERFORMANCE, OF SOUNDS OF A PERFORMANCE OR THE
REPRESENTATION OF SOUNDS FIXED IN A SOUND RECORDING OR
OF A PERFORMANCE FIXED IN AN AUDIOVISUAL WORK OR
FIXATION. For purposes of Section 209, "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. (202.9a)

PERFORMERS

SEC. 203. Scope of Performers’ Rights. - Subject to the provisions of
Section 212, performers shall enjoy the following exclusive rights:

203.1. 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.

203.2. 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;

203.3. Subject to the provisions of Section 206, 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;

203.4. 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

203.5. 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. (Sec. 42, P.D. No. 49a)

SEC. 204. Moral Rights of Performers. -

204.1. RIGHTS GRANTED - independently of a performer's economic
rights, the performer, shall, as regards his 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 his
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 his performances that would be prejudicial to his
reputation.

204.2. TERM OF PROTECTION. - The rights granted to a performer in
accordance with Subsection 204.1 [203.1] shall be maintained and
exercised fifty (50) years after his death, by his heirs, and in default of
heirs, the government, where protection is claimed. (Sec. 43, P.D. no. 49)

fa)

87

Secs, 203 to 207 of the IP Code are hereby collectively designated
under the subheading “Performers” under Part V, Chapter XII, Rights of Performers,
Producers of Sound Recordings, and Broadcasting Organizations, and are hereby
amended to read as follows:


15
16
7
18
19
20
21
22

23
24
25
26

27

28
29
30
31

32
33

34
35

36
37
38

39
40
41

42
43
44
4s

46
47
48
49
50

51
52
53

SECTION 88.

under
Rights

204.3. ENFORCEMENT REMEDIES. - IN THE ENFORCEMENT OF
THESE RIGHTS, SECTION 199 APPLIES MUTATIS MUTANDIS. (n)

SEC. 205. Limitation on Right. -

205.1. Subject to the provisions of Section 206, once the performer has
authorized the broadcasting or fixation of his performance, [the
provisions of Sections 203 shall have no further application] THE
EXCLUSIVE RIGHTS UNDER SUBSECTIONS 203.2 TO 203.5 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.
(a)

205.2. The provisions of Section 184 and Section 185 shall apply mutatis
mutandis to performers. (n)

SEC. 206. 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. (n)

SEC. 207. 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. (n)

Organizations, and are hereby amended to read as follows:

[Chapter XIII.]
PRODUCERS OF SOUND RECORDINGS

SEC. 208. Scope of Right. - Subject to the provisions of Section 212,
producers of sound recordings shall enjoy the following exclusive rights:

208.1. 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;

208.2. 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; and

208.3. 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. (Sec. 46, P.D. No.
49a)

208.4, 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.

SEC. 209. [Communication to the Public.) SINGLE EQUITABLE
REMUNERATION.- [If a sound recording) PERFORMERS AND
PRODUCERS OF SOUND RECORDINGS SHALL ENJOY THE RIGHT

58

Secs. 208 to 210 of the IP Code are hereby collectively designated
the subheading “Producers of Sound Recordings” under Part V, Chapter XII,
of Performers, Producers of Sound Recordings, and Broadcasting


21
22

23
24
25
26

27
28

29
30
31

32

33
34
35

36
37

38
39
40
41

42
43

45

46
47
48

49
50
51
52

SECTION 89. Sec. 211 of the IP Code is hereby designated under the
subheading “Broadcasting Organizations” under Part V, Chapter XII, Rights of
Performers, Producers of Sound Recordings, and Broadcasting Organizations, as

TO A SINGLE EQUITABLE REMUNERATION FOR THE DIRECT OR
INDIRECT USE OF SOUND RECORDINGS published for commercial
purposes, [or a reproduction of such sound recording, is used directly]
for broadcasting or for ANY [other] communication to the public, [or is
publicly performed with the intention of making and enhancing profit, a
single equitable remuneration for the performer or performers, and the
producer of the sound recording shall be paid by the user to both the
performers and the producer, who, in the absence of any agreement shall
share equally. (a) (Sec. 47, P.D. No. 49a)

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, 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. (n)

SEC. 210. Limitation of Right. - Sections 184 and 185 shall apply mutatis
mutandis to the producer of sound recordings. (Sec. 48, P.D. No. 49a)

follows:

SECTION 90. Sec. 212 of the IP Code is hereby designated under the
subheading “Limitations on Protection of Related Rights” under Part V, Chapter XII,
of Performers, Producers of Sound Recordings, and Broadcasting

Rights

{Chapter XIV.]
BROADCASTING ORGANIZATIONS

SEC. 211. Scope of Right. - Subject to the provisions of Section 212,
broadcasting organizations shall enjoy the exclusive right to carry out,
authorize or prevent any of the following acts:

211.1. The rebroadcasting of their broadcasts;

211.2. The recording in any manner, including the making of films or the
use of video tape, of their broadcasts for the purpose of communication
to the public of television broadcasts of the same; and

211.3. The use of such records for fresh transmissions or for fresh
recording. (Sec. 52, P.D. No. 49)

Organizations, as follows:

[Chapter XV]
LIMITATIONS ON PROTECTION OF RELATED RIGHTS

SEC. 212. Limitations on THE Rights OF PERFORMERS, PRODUCERS
OF SOUND RECORDINGS, AND BROADCASTING ORGANIZATIONS. -

212.1. SECTIONS 203, 208, 209, AND 211 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;

B) USING SHORT EXCERPTS FOR REPORTING CURRENT
EVENTS;

59


ON aM Bune

ES ©

13
14

15
16

7
18
19

20
21

22

23
24
25

26
27

28
29
30
31
32
33

35
36
37
38
39

41
42
43

45
46
47
48
49

SECTION 91.

SECTION 92.

SECTION 93.
to read as follows:

C) USE SOLELY FOR THE PURPOSE OF TEACHING OR FOR
SCIENTIFIC RESEARCH; AND

D) FAIR USE OF THE BROADCAST SUBJECT TO THE
CONDITIONS UNDER SECTION 185.

212.2. IN ADDITION TO THOSE IN THE PRECEDING SUBSECTION,
THE LIMITATIONS PROVIDED IN THE provisions of Chapter VIII shall
apply mutatis mutandis to the rights of performers, producers of sound
recordings and broadcasting organizations. (212a, Sec. 44, PD 49a)

{Chapter XVI]
CHAPTER XIII.
TERM OF PROTECTION

[Chapter XVI}
‘CHAPTER XIV.
INFRINGEMENT OF COPYRIGHT

SEC. 216. COPYRIGHT Infringement. —

216.1. COPYRIGHT INFRINGEMENT IS THE ACT OF VIOLATING ANY
OF THE EXCLUSIVE RIGHTS PROVIDED IN SECS. 177, 203, 208,
AND 211 OF THIS ACT.

216.2.{Any person infringes a right protected under this Act when one:]
THERE IS SUCH LIABILITY WHEN A PERSON:

{a) Directly commits an infringement;

(b) Benefits from the infringing activity of another person who
commits an infringement if the person benefiting has been given
notice of the infringing activity and has the right and ability to
control the activities of the other person; PROVIDED THAT, IF
UPON OBTAINING SUCH KNOWLEDGE OR AWARENESS OF
THE INFRINGING ACTIVITY, ONE ACTS EXPEDITIOUSLY TO
REMOVE, OR DISABLE ACCESS TO, THE MATERIAL, HE
SHALL NEITHER BE LIABLE FOR INFRINGEMENT NOR
DAMAGES, IF INFRINGEMENT IS NOT ESTABLISHED; OR

(c) With knowledge of infringing activity, induces, causes or
materially contributes to the infringing conduct of another. (216a)

[216.1.]SEC. 217. Remedies for Infringement. -

217.1, INJUNCTION AND DESTRUCTION. - Any person infringing aNY
OF THE EXCLUSIVE rightS PROVIDED IN SECTION 216.1[protected]
under this law shall be liable TO:

(a) [To anJAN injunction restraining such infringement. The court
may also order the defendant to desist from an infringement,
among others, to prevent the entry into the channels of commerce
of imported goods that involve an infringement, immediately after
customs clearance of such goods. (216.1a)

[() To pay to the copyright proprietor or his assigns or heirs such

actual damages, including legal costs and other expenses, as he may

60

Chapter XVI, Term of protection, is hereby renumbered to Part V,
Chapter XIII, and amended to read as follows:

Chapter XVII, Infringement, is hereby renamed as “Infringement of
Copyright” and renumbered to Part V, Chapter XIV, as follows:

Section 216 is hereby split into Secs. 216 and 217 in are amended


a1

42
43
44
45
46
a7
48
49

s1
52
53
54
5S
56
s7
58
59

61
62

have incurred due to the infringement as well as the profits the
infringer may have made due to such infringement, and in proving
profits the plaintiff shall be required to prove sales only and the
defendant shall be required to prove every element of cost which he
claims, or, in lieu of actual damages and profits, such damages which
to the court shall appear to be just and shall not be regarded as
penalty: Provided, That the amount of damages to be awarded shall
be doubled against any person who:]
{G) 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, knowing that electronic rights
management information has been removed or altered without
authority.]

(B) ((c)} Deliver under oath, for impounding during the pendency of
the action, upon such terms and conditions as the court may
prescribe, sales invoices and other documents evidencing sales, all
articles and their packaging alleged to infringe a copyright and
implements for making them. (216.1c)

(C) ((d)] Deliver under oath for destruction without any compensation
all infringing copies or devices, as well as all plates, molds, or
other means for making such infringing copies as the court may
order. (216.1d)

(D)|(c) Such other terms and conditions, including the payment of
moral and exemplary damages, which the court may deem proper,
wise and equitable and the destruction of infringing copies of the
work even in the event of acquittal in a criminal casc.] IN AN
INFRINGEMENT ACTION, THE COURT SHALL ALSO HAVE THE
POWER TO ORDER THE SEIZURE AND IMPOUNDING OF ANY
ARTICLE WHICH MAY SERVE AS EVIDENCE IN THE COURT
PROCEEDINGS, IN ACCORDANCE WITH THE RULES ON
SEARCH AND SEIZURE INVOLVING VIOLATIONS OF
INTELLECTUAL PROPERTY RIGHTS ISSUED BY THE
SUPREME COURT.

THE FOREGOING SHALL NOT PRECLUDE AND INDEPENDENT
SUIT FOR RELIEF BY THE INJURED PARTY BY WAY OF
DAMAGES, INJUNCTION, ACCOUNTS, OR OTHERWISE.

217.2. DAMAGES. -

(A) The infringer shall also pay to the copyright proprietor or his
assigns or heirs

(i) such actual damages, including legal costs and other
expenses, as he may have incurred due to the infringement
as well as the profits the infringer may have made due to
such infringement, 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 which he claims, or, in lieu of actual
damages and profits, such damages which to the court
shall appear to be just and shall not be regarded as
penalty, AS WELL AS [Such other terms and conditions,
including the payment of] moral and exemplary damages,
ATTORNEY'S FEES, which the court may deem proper,
wise and equitable; and the destruction of infringing copies
of the work even in the event of acquittal in a criminal case
OR (216. 1(c)a, 216. 1(d)a})

(i) IN LIEU OF THE ABOVE DAMAGES, STATUTORY
DAMAGES FOR ALL INFRINGEMENTS INVOLVED IN
THE ACTION AT THE ELECTION OF THE [The] copyright
owner {may elect,] at any time before final judgment is

61


54
5S

56
57

rendered,-[to recover instead of actual damages and profits,
an award of statutory damages for all infringements
involved in an action in] a sum equivalent to the filing fee of
the infringement action OR [but not less than Fifty] ONE
HUNDRED thousand pesos (Php100,000.00 [50,000.00)}.
[In awarding statutory damages, the court may consider the
following factors:]

{(1) The nature and purpose of the infringing act;]

|(2) The flagrancy of the infringement;|

[(3) Whether the defendant acted in bad faith;}

[(4) The need for deterrence;]

{(S) Any loss that the plaintiff has suffered or is likely to

suffer by reason of the infringement; and]

{(6) Any benefit shown to have accrued to the defendant

by reason of the infringement.]

In case the infringer was not aware and had no reason to
believe that his acts constitute an infringement of
copyright, the court 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 B BELOW. [Provided, The amount of actual
damages to be awarded 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, knowing that electronic rights
management information has been removed or altered
without authority. (216a)]

(8) The amount of ACTUALOR STATUTORY damages to be awarded
shall be doubled against any person who:
(i) Circumvents effective technological measures; or
(i) 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, knowing that electronic rights
management information has been removed or altered
without authority. (216)

[216.2. In an infringement action, the court shall also have the power to
order the seizure and impounding of any article which may serve as
evidence in the court proceedings, in accordance with the rules on
search and seizure involving violations of intellectual property rights
issued by the Supreme Court. (Sec.28, P.D. No. 49a)]

(The foregoing shall not preclude an independent suit for relief by the
injured party by way of damages, injunction, accounts or otherwise.]

SECTION 94. Sec. 219 is hereby amended as follows:

Section 219.Presumption of Authorship, . - 219.1. The natural person
whose name is indicated on a work in the usual manner as the author

62


1 shall, in the absence of proof to the contrary, be presumed to be the
2 author of the work. This provision shall be applicable even if the name is
3 a pseudonym, where the pseudonym leaves no doubt as to the identity of
4 the author.
5 219.2. The person or body corporate whose name appears on a
6 audio-visual work OR ON SOUND RECORDING in the usual manner
7 shall, in the absence of proof to the contrary, be presumed to be the
8 maker of said work OR THE PRODUCER OF SAID SOUND
9 RECORDING. (n)
10
11 SECTION 95. Chapter XVII, Scope of Application, is designated under Part V as
12 Chapter XV, and Secs. 221 to 224 therein are collectively amended as follows:
B [Chapter XVIII]
4 CHAPTER XV.
1s SCOPE OF APPLICATION
16 SEC. 221. [Points of AttachmentJSCOPE OF PROTECTION for Works
v7 under Sections 172 and 173, - 221.1. The protection afforded by this Act
18 to copyrightable works under Sections 172 and 173 shall apply to:
19 (a) Works of authors who are nationals of, or have their habitual
20 residence in, the Philippines;
21 (b) Audio-visual works the producer of which has his headquarters or
2 habitual residence in the Philippines;
23 () Works of architecture erected in the Philippines or other artistic
24 works incorporated in a building or other structure located in the
25 Philippines;
26 (d) Works first published in the Philippines; and
27 {e) Works first published in another country but also published in the
28 Philippines within thirty days, irrespective of the nationality or
29 residence of the authors.
30 221.2. The provisions of this Act shall also apply to works that are to be
31 protected by virtue of and in accordance with any international
32 convention or other international agreement to which the Philippines is a
33 party. (n)
34 SEC. 222. [Points of Attachment/SCOPE OF PROTECTION for Performers.
35 - The provisions of this Act on the protection of performers shall apply to:
36 222.1. Performers who are nationals of the Philippines;
37 222.2. Performers who are not nationals of the Philippines but whose
38 performances:
39 (a) Take place in the Philippines; or
40 (b) Are incorporated in sound recordings OR IN AUDIOVISUAL
41 FIXATIONS that are protected under this Act; or
a2 (c) Which has not been fixed in sound recordings OR IN
43 AUDIOVISUAL FIXATIONS but are carried by broadcast
44 qualifying for protection under this Act. (n)
45 SEC. 223. [Points of Attachment] SCOPE OF PROTECTION for Sound
46 Recordings. - The provisions of this Act on the protection of sound
47 recordings shall apply to:
48 223.1. sound recordings the producers of which are nationals of the
49 Philippines; and
50 223.2. sound recordings that were first published in the Philippines. (n)

63


Nous

10
11
12
13

14
15
16

17
18
19

20
a1

22
23

24
25
26
27
28
29
30
31
32

33

34
35
36
37
38
39
40
a
42
43

44
45
46
a7
48
49

51
52
53

SEC. 224. [Points of Attachment] SCOPE OF PROTECTION for
Broadcasts. - 224.1. The provisions of this Act on the protection of
broadcasts shall apply to:

(a) Broadcasts of broadcasting organizations the headquarters of
which are situated in the Philippines; and

(b) Broadcasts transmitted from transmitters situated in the
Philippines.

SEC. 225. (224.2.|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. (n)

SECTION 96. A new Part VI entitled “Common Provisions”, which shall be
populated with the provisions earlier removed, is hereby introduced after Section 225,
thus:
PART VI

COMMON PROVISIONS
SECTION 97. A new Part VI, Chapter I, entitled “General Provisions” is hereby
introduced, and shall contain the following provisions:

CHAPTER I
GENERAL PROVISIONS

SEC. 226[160]. Right of Foreign [Corporation|NATIONAL OR ENTITY to
Sue in [Trademark or Service Mark Enforcement] Action. - Any foreign
national or juridical person who meets the requirements of Section 3 of
this Act and does not engage in business in the Philippines may bring a
CRIMINAL, civil, or administrative action UNDER THIS ACT[hereunder
for opposition, cancellation, infringement, unfair competition, or false
designation of origin and false description,] whether or not it is licensed
to do business in the Philippines under existing laws. (a) (Sec. 21-A, R.A.
No. 166a)

SEC. 227. NOTICE. -

227.1. GRANTED PATENTS; REGISTERED UTILITY MODELS,
INDUSTRIAL DESIGNS, AND LAYOUT-DESIGNS. - [SEC. 80. Damages;
Requirement of Notice.] - Damages cannot be recovered for acts of
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 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. (80)
(Sec. 44, R.A. No. 165a)

227.2. REGISTERED TRADEMARKS, SERVICE MARKS, COLLECTIVE
MARKS, CERTIFICATION MARKS, AND WELL-KNOWN MARKS. -[SEC.
158. Damages; Requirement of Notice.] - 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. (158) (Sec. 21, R.A. No. 166a)

64


1 227.3.[SEC, 192. Notice of] Copyright. - Each copy of a work published or
2 offered for sale may contain a notice bearing the name of the copyright
3 owner, and the year of its first publication, and, in copies produced after
4 the creator’s death, the year of such death. (Sec. 27, P.D. No. 49a) SUCH
5 NOTICE IS NOT A REQUIREMENT IN ORDER TO CLAIM DAMAGES.
6 (192
7 SEC. [164.]228. Notice of Filing Suit Given to the Director GENERAL. - It
8 shall be the duty of the clerks of such courts within one (1) month after
9 the filing of any action, suit, or proceeding involving ANY
10 INTELLECTUAL PROPERTY GRANTED PROTECTION BY[a mark
11 registered under the provisions of] this Act, to notify the Director
2 GENERAL in writing setting forth: the names and addresses of the
3B litigants and designating the number of the registration or registrations
14 and within one (1) month after the judgment is entered or an appeal is
15 taken, the clerk of court shall give notice thereof to the Office, and the
16 latter shall endorse the same upon the filewrapper of the said
7 registration or registrations, IF APPLICABLE, and incorporate the same
18 as a part of the contents of said filewrapper. (164)
19 SEC, [220A.]229.Disclosure of Information. - Where any article or its
20 packaging or an implement for making it is seized or detained under a
21 valid search and seizure under this Act is, or is reasonably suspected to
2 be, by an authorized enforcement officer, in violation of this Act, the said
23 officer shall, wherever reasonably practicable, notify the owner of the
24 INTELLECTUAL PROPERTY RIGHTS [copyright] in question or his
25 authorized agent of the seizure or detention, as the case may be. (220A)
26 (As amended by Republic Act No. 10372 or an Act Amending certain
a provisions of Republic Act No. 8293 otherwise known as the Intellectual
28 Property Code of the Philippines, and for other Purposes)
29 SECTION 98. A new Part VI, Chapter Il, entitled “Jurisdiction” is hereby
30 introduced, and shall contain the following provisions:
31 CHAPTER II
32 JURISDICTION
33 SEC, [225.]230. Jurisdiction. - Without prejudice to the provisions of
34 PART I, [Subsection 7.1 (c)], actions under this Act shall be cognizable
35 by the courts with appropriate jurisdiction under existing lawS. (Sec. 57,
36 P.D. No.49a)
37 {151.2. Notwithstanding the foregoing provisions, the court or the
38 administrative agency vested with jurisdiction to hear and adjudicate any
39 action to enforce the rights to a registered mark shall likewise exercise
40 jurisdiction to determine whether the registration of said mark may be
41 cancelled in accordance with this Act|THE FILING OF A SUIT TO
42 ENFORCE INTELLECTUAL PROPERTY RIGHTS [the registered mark]
43 WITH THE PROPER COURT OR AGENCY SHALL EXCLUDE ANY
4a OTHER COURT OR AGENCY FROM ASSUMING JURISDICTION OVER
45 A SUBSEQUENTLY FILED A SUIT TO ENFORCE THE SAME (petition to
46 cancel the same mark.] ON THE OTHER HAND, THE EARLIER FILING
47 OF SUCH SUIT [petition to cancel the mark] WITH THE BUREAU OF
48 LEGAL AFFAIRS SHALL NOT CONSTITUTE A PREJUDICIAL
49 QUESTION THAT MUST BE RESOLVED BEFORE AN ACTION TO
50 ENFORCE THE RIGHTS TO SAME REGISTERED MARK MAY BE
51 DECIDED. (151.2) (Sec. 17, R.A. No. 166a)
52 SEC. [161.]231. Authority OF THE COURT to Determine Right to
53 Registration OR OWNERSHIP. - In any action involving INTELLECTUAL
sa PROPERTY [a registered mark], the court may determine the right to
55 registration OR OWNERSHIP, AND IF APPLICABLE, order the
56 cancellation of a registration, in whole or in part, and otherwise rectify
7 the register with respect to the registration of any party to the action in
58 the exercise of this. Judgment and orders shall be certified by the court

65


1 to the Director GENERAL, who shall CAUSE THE [make appropriate]
2 entry OF THE APPROPRIATE ANNOTATION upon the records of the
3 RESPECTIVE Bureau, and shall be controlled thereby. (161a) (Sec. 25,
4 R.A. No. 166a)

5 SEC, [162.]232. Action for False or Fraudulent Declaration. - Any person
6 who shall procure GRANT, registration, OR RECORDATION in the Office
7 of ANY INTELLECTUAL PROPERTY [a mark] by a false or fraudulent
8 declaration or representation, whether oral or in writing, or by any false
9 means, shall be liable in a civil action by any person injured thereby for
10 any damages sustained in consequence thereof. (Sec. 26, R.A. No. 166)

nu SEC, [233.]233.Appeals. - {233.1.]233.1. Appeals from decisions of
2 regular courts shall be governed by the Rules of Court. [Unless
3B restrained by a higher court, the judgment of the trial court shall be
14 executory even pending appeal under such terms and conditions as the
15 court may prescribe.] (233. 1a)

16 [233.2.] 233.2. Unless expressly provided in this Act or other statutes,
7 appeals from [decisions|ACTIONS of administrative officials shall be
18 provided in the RELEVANT regulations. (233.2a)

19 SECTION 99. The Chapter on Institution of Actions, previously Chapter XIX, is
20 now renumbered as Chapter Ill of Part VI, shall contain the following provisions:
21 [Chapter XIX]

2 CHAPTER III

23 INSTITUTION OF ACTIONS

24 SEC. 234.[226. Damages/PERIOD TO FILE ACTIONS.- EXCEPT AS
25 OTHERWISE PROVIDED IN THIS ACT, THE PERIOD TO FILE
26 ACTIONS TO ENFORCE RIGHTS UNDER THIS ACT SHALL BE
27 COTERMINOUS WITH THE TERM OF PROTECTION. IF THE CAUSE
28 OF ACTION ACCRUES WITHIN THE LAST FOUR (4) YEARS BEFORE
29 THE END OF THE TERM OF PROTECTION, AN ACTION MAY BE
30 FILED WITHIN FOUR YEARS FROM THE TIME THE CAUSE OF
31 ACTION ACCRUES. SUCH RIGHT TO INSTITUTE ACTIONS IS
32 SUBJECT TO ESTOPPEL, LACHES, AND ACQUIESCENCE, WHERE
33 APPLICABLE.[No damages may be recovered under this Act after the
34 lapse of four (4) years from the time the cause of action arose;](n) (Sec.
35 58, P.D. No. 49)

36 SEC. [81]. 235. Defenses in Action for Infringement. - In an action for
37 infringement, the defendant, in addition to other defenses available to
38 him, may show the invalidity of the patent, UTILITY MODEL, OR
39 DESIGN or any claim thereof, OF THE MARK OF OWNERSHIP, OR OF
40 THE COPYRIGHT, BASED on any of the grounds on which a petition of
41 cancellation can be brought under (Section 61 hercof|-THIS ACT. (Sec.
42 45, R.A. No. 165)

43

44 SECTION 100. A new Part VI, Chapter IV, entitled “Criminal Penalties” is hereby
45 introduced, and shall contain the following provisions:

46 Chapter IV.
47 CRIMINAL PENALTIES

48 SEC, [84.]236. Criminal Action [for Repetition off FOR PATENT
49 Infringement. - If infringement is repeated by the infringer or by anyone
50 in connivance with him after finality of the judgment of the court against
51 the infringer, the offenders shall, without prejudice to the institution of a
52 civil action for damages, be criminally liable therefor and, upon
53 conviction, shall suffer imprisonment for the period of not less than ONE
54 (1) YEAR {six (6) months] but not more than FIVE (5) [three (3)] years
55 and/or a fine of not less than One hundred thousand pesos (PhP

66


nwNe

ER Seona van

12

14
15
16
7
18
19
20
21
22
23
24
25
26

27
28
29
30
31

32
33
34
35

36
37
38
39

a1
a2
43
44
45
46

47
48,
49
50
51
52
53
54
55
56
57
58
59

100,000) but not more than Three hundred thousand pesos (Php
300,000), at the discretion of the court. The criminal action herein
provided shall prescribed in three (3) years from date of the commission
of the crime. (Sec. 48, R.A. No. 165a) (84)

SEC. [170.]237. CRIMINAL ACTION FOR TRADEMARK INFRINGEMENT
[Penalties]. - 237.1. Independent of the civil and administrative sanctions
imposed by law, ANY PERSON WHO IS FOUND GUILTY OF
COMMITTING ANY OF THE ACTS MENTIONED IN SECTION 155,
SECTION 168 AND SUBSECTION 169.1 OR AIDING OR ABETTING
SUCH INFRINGEMENT SHALL BE PUNISHED WITH a criminal penalty
of:

(A) imprisonment from THREE (3) YEARS TO FIVE (5) YEARS, OR A
FINE RANGING FROM ONE HUNDRED THOUSAND PESOS
(P100,000) TO FOUR HUNDRED THOUSAND PESOS
(P400,000), OR BOTH FOR THE FIRST OFFENSE;

(8) IMPRISONMENT FROM FIVE (5) YEARS AND ONE (1) DAY TO
SEVEN (7) YEARS, OR A FINE RANGING FROM OVER FOUR
HUNDRED THOUSAND PESOS (P400,000) TO TWO MILLION
PESOS (P2,000,000), OR BOTH FOR THE SECOND OFFENSE;

(C) IMPRISONMENT FROM SEVEN (7) YEARS AND ONE (1) DAY TO
TEN (10) YEARS, OR A FINE RANGING FROM OVER TWO
MILLION PESOS (P2,000,000) TO FOUR MILLION PESOS
(P4,000,000), OR BOTH FOR THE THIRD OR OFTENER
OFFENSE;

(D)IN ALL CASES, SUBSIDIARY IMPRISONMENT IN CASES OF
INSOLVENCY.

237.2. THE PENALTY IMPOSED SHALL BE THE MAXIMUM IF THE
INFRINGEMENT IS COMMITTED WILLFULLY AND IN A
COMMERCIAL SCALE AND IF COMMITTED IN RELATION TO
REPUBLIC ACT NO. 10175, OTHERWISE KNOWN AS THE
‘CYBERCRIME PREVENTION ACT OF 2012.

237.3. IN CASE OF COUNTERFEIT GOODS THAT THREATEN PUBLIC
HEALTH AND SAFETY, THE COURT SHALL IMPOSE THE PENALTY
OF SEVEN (7) YEARS IMPRISONMENT OR A FINE OF FOUR MILLION
PESOS (P4,000,000), OR BOTH.

[two (2) years to five (5) years and a fine ranging from Fifty thousand
pesos (P50,000) to Two hundred thousand pesos (P200,000) shall be
imposed on any person who is found guilty of committing any of the acts
mentioned in Section 155, Section 168 and Subsection 169.1; |(Arts. 188
and 189, Revised Penal Code) (170a)

SEC. [217.]238.Criminal [Penalties) ACTION FOR COPYRIGHT
INFRINGEMENT. - (217.1.| 238.1. Independent of the civil and
administrative sanctions [imposed|IMPOSABLE by law, ANY|Any] person
infringing any right secured by provisions of Part [IJV of this Act or
aiding or abetting such infringement shall be guilty of a crime punishable
by:

(a) Imprisonment of TWO (2) [one (1)] yearS to FOUR (4) [three (3)]
years, OR(plus] a fine ranging from Fifty thousand pesos (P50,000)
to One hundred fifty thousand pesos (P150,000), OR BOTH for the
first offense.

(b) Imprisonment of FOUR (4)[three (3)] years and one (1) day to
SEVEN (7)[six (6)] years, OR{[plus] a fine ranging from One
hundred fifty thousand pesos (P150,000) to Five hundred
thousand pesos (P500,000), OR BOTH for the second offense.

(c) Imprisonment of SEVEN (7)[six (6)] years and one (1) day to
TWELVE (12) {nine (9)] years, or plus a fine ranging from Five
hundred thousand pesos (P500,000) to One million five hundred
thousand pesos (P1,500,000), OR BOTH for the third and
subsequent offenses.

67


37

38
39

40
41

42
43

45
46
a7
48
49

50
51

2
53

(d) In all cases, subsidiary imprisonment in cases of insolvency.

[217.2.]238.2. In determining the number of years of imprisonment and
the amount of fine, the court shall consider the value of the infringing
materials that the defendant has produced or manufactured and the
damage that the copyright owner has suffered by reason of the
infringement: Provided, That the respective maximum penalty stated in
Section [217.1.]238.1. (a), (b) and (c) herein for the first, second, third
and subsequent offense, shall be imposed when the infringement is
committed by:

{a) THROUGH the circumvention of effective technological measures;

(b) THROUGH 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]

(c) THROUGH 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;-

(D) BY MEANS OF ILLICIT STREAMING; OR

(E)IN RELATION TO REPUBLIC ACT NO. 10175, OTHERWISE
KNOWN AS THE CYBERCRIME PREVENTION ACT OF 2012.

(As amended by Republic Act No.10372 or an Act Amending certain
provisions of Republic Act No. 8293 otherwise known as the Intellectual
Property Code of the Philippines, and for other Purposes)

[217.3. Any person who at the time when copyright subsists in a work
has in his possession an article which he knows, or ought to know, to be
an infringing copy of the work for the purpose of]

[(a) Selling, letting for hire, or by way of trade offering or exposing for
sale, or hire, the article;]

[(b) Distributing the article for purpose of trade, or for any other
purpose to an extent that will prejudice the rights of the copyright
owner in the work; or]

{(c) Trade exhibit of the article in public,]

[shall be guilty of an offense and shall be liable on conviction to
imprisonment and fine as above mentioned. (Sec. 29, P.D. No. 49a)]

SECTION 101. A new Part VI, Chapter V, entitled “Other Sanctions” is hereby
introduced, and shall contain a new Sec. 239:

Chapter V.
OTHER SANCTIONS

SEC. 239. REVOCATION OF BUSINESS PERMIT, LICENSE, OR AUTHORITY;
BLACKLISTING FROM GOVERNMENT PROCUREMENT. - UPON
RECOMMENDATION OF THE OFFICE, IN CASE OF REFUSAL OR FAILURE
TO COMPLY WITH THE DECISION OR ORDER OF THE DIRECTOR, THE
APPROPRIATE AGENCY, INCLUDING LOCAL GOVERNMENT UNITS, SHALL
CANCEL, REVOKE, OR SUSPEND ANY BUSINESS PERMIT, LICENSE,
AUTHORITY, AND SHALL BE BLACKLISTED FROM GOVERNMENT
PROCUREMENT TRANSACTIONS.

SECTION 102. _ A new Part VI, Chapter VI, entitled “Infringing Articles” is hereby
introduced, and shall contain the following provisions:

Chapter VI.
INFRINGING ARTICLES

68


weVauaune

1
12
13
14
15
16

7
18
19
20
21
22

23
24
25

26
27
28
29
30
31
32
33
34
35
36
37
38

39
40
41
42
43

45
46
47
48
49
50
51
52
53

54
55
56
57

58

[169.2.)SEC. 240. PROHIBITION OF ENTRY INTO THE PHILIPPINES. -
Any INFRINGING goods OR ARTICLES [marked or labeled in
contravention of the provisions of this Section] 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. (169.2) (Sec. 30, R.A. No. 166a)

SEC. [190.]241. 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. (Sec. 30, P.D. No. 49)

[216.2.|SEC. 242. POWER OF COURT TO ORDER SEIZURE OF
EVIDENCE. - In an infringement action, the court shall also have the
power to order the seizure and impounding of any article which may
serve as evidence in the court proceedings, in accordance with the rules
on search and seizure involving violations of intellectual property rights
issued by the Supreme Court. (Sec.28, P.D. No. 49a)

‘The foregoing shall not preclude an independent suit for relief by the
injured party by way of damages, injunction, accounts or otherwise.
(216.2)

SEC. {157.]243.Power of Court to Order DESTRUCTION OR DISPOSAL
OF Infringing GOODS AND MaterialS Destroyed. - [157.1]
243.1.WITHOUT PREJUDICE TO SECTION 10.2(B)(III), in any action
arising under this Act, in which a violation of any right of the owner of
the registered mark is established, the court may order that goods found
to be infringing be, without compensation of any sort, disposed of outside
the channels of commerce in such a manner as to avoid any harm
caused to the right holder, or destroyed; and all labels, signs, prints,
packages, wrappers, receptacles and advertisements in the possession of
the defendant, bearing the registered mark or trade name or any
reproduction, counterfeit, copy or colorable imitation thereof, all plates,
molds, matrices and other means of making the same, shall be delivered
up and destroyed.

[157.2.]243.2.IN LIEU OF DESTRUCTION, THE COURT MAY ORDER
THE DONATION TO DISTRESSED COMMUNITIES THROUGH THE
LOCAL GOVERNMENT UNITS, OR TO CHARITABLE OR DISASTER
RELIEF PUBLIC AND PRIVATE INSTITUTIONS; PROVIDED, THAT, IN
THE EXERCISE OF THIS POWER, THE COURT 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. (a) (Sec. 24, R.A. No. 166a)

243.3. (76.5.] The court may, in its discretion, order that the infringing
goods, materials and implements predominantly used in the
infringement be disposed of outside the channels of commerce or
destroyed, without compensation.; (76.5) and (Sec. 42, R.A. No. 165a)

69


1 SECTION 103. Chapter XX on Miscellaneous Provisions shall become Part VII,
2 and the provisions therein are renumbered accordingly, as follows:

3 PART VII
4 [Chapter XX.]

5 MISCELLANEOUS PROVISIONS

6

7 SEC. [227.]244.Ownership of Deposit and Instruments. - All copies
8 deposited and instruments in writing filed with the National Library and
9 the Supreme Court Library in accordance with the provisions of this Act
10 shall become the property of the Government. (Sec. 60, P.D. No. 49)

u SEC. [228.]245. Public Records. - The section or division of the National
2 Library and the Supreme Court Library charged with receiving copies
B and instruments deposited and with keeping records required under this
14 Act and everything in it shall be opened to public inspection. The
45 Director of the National Library is empowered to issue such safeguards
16 and regulations as may be necessary to implement this Section and other
7 provisions of this Act. (Sec. 61, P.D. No. 49)

18 SEC. [229.]246.Copyright Division Fees. - The Copyright Section of the
19 National Library shall be classified as a Division upon the effectivity of
20 this Act. The National Library shall have the power to collect, for the
21 discharge of its services under this Act, such fees as may be promulgated
22 by it from time to time subject to the approval of the Department Head.
2B (Sec. 62, P.D. 49a)

24 [SEC. 230. Adoption of Intellectual Property (IP) Policies. - Schools and
25 universities shall adopt intellectual property policies that would govern
26 the use and creation of intellectual property with the purpose of
7 safeguarding the intellectual creations of the learning institution and its
28 employees, and adopting locally-established industry practice fair use
29 guidelines. These policies may be developed in relation to licensing
30 agreements entered into by the learning institution with a collective
31 licensing organization. ]

32 ((As amended by Republic Act No.10372 or an Act Amending certain
33 provisions of Republic Act No. 8293 otherwise known as the Intellectual
34 Property Code of the Philippines, and for other Purposes}]

35 SECTION 104. Part VI, Final Provisions, shall become Part VIII, and the
36 provisions therein are renumbered accordingly, as follows:

37 PART VIII
38 FINAL PROVISIONS

39 [SEC. 231. Equitable Principles to Govern Proceedings. - In all inter partes
40 proceedings in the Office under this Act, the equitable principles of
41 laches, estoppel, and acquiescence where applicable, may be considered
42 and applied. (Sec. 9-A, R.A. No. 165)]

43 SEC. [232.]247.Reverse Reciprocity of Foreign Laws. - Any condition,
44 restriction, limitation, diminution, requirement, penalty or any similar
45 burden imposed by the law of a foreign country on a Philippine national
46 seeking protection of intellectual property rights in that country, shall
a7 reciprocally be enforceable upon nationals of said country, within
48 Philippine jurisdiction. (232)

49 [SEC. 233. Appeals - 233.1. Appeals from decisions of regular courts
50 shall be governed by the Rules of Court. Unless restrained by a higher
51 court, the judgment of the trial court shall be executory even pending
52 appeal under such terms and conditions as the court may prescribe.
53 (233.1a)]

70


Nous

12
13
14
15
16
7
18
19
20
21
22
23

24
25
26
27
28
29
30
31
32
33
34

35
36
37
38
39
40
4
42
43
44
45

46
a7
48
49

50
51
52
53
54

55
56
57
58

[233.2. Unless expressly provided in this Act or other statutes, appeals
from decisions of administrative officials shall be provided in the
Regulations. (233.2a)]

SEC. [234.]248. Organization of the Office; Exemption from the Salary
Standardization Law and the Attrition Law. - 248.1. [234.1.] The Office
shall be organized within one (1) year after the approval of this Act. It
shall not be subject to the provisions of Republic Act. No. 7430. (234.1)

[234.2.]248.2. The Office shall 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.
(234.2)

SEC. [235.]249.Abolition of the Bureau of Patents, Trademarks, and
Technology Transfer. - The Bureau of Patents, Trademarks, and
Technology Transfer under the Department of Trade and Industry is
hereby abolished. All unexpended funds and fees, fines, royalties and
other charges collected for the calendar year, properties, equipment and
records of the Bureau of Patents, Trademarks and Technology Transfer,
and such personnel as may be necessary are hereby transferred to the
Office. Personnel not absorbed or transferred to the Office shall enjoy the
retirement benefits granted under existing law, otherwise, they shall be
paid the equivalent of one month basic salary for every year of service, or
the equivalent nearest fractions thereof favorable to them on the basis of
the highest salary received. (235)

SEC. [236.]250.Applications Pending on Effective Date of Act. -
[236.1.]250.1. 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 provisions of this Act,
unless the applicants elect to prosecute said applications in accordance
with the Acts under which they were filed. (236.1)

[236.2.] 250.2. All applications for registration of marks or trade names
pending in the Bureau of Patents, Trademarks and Technology Transfer
at the effective date of this Act may be amended, if practicable to bring
them under the provisions of this Act. The prosecution of such
applications so amended and the grant of registrations thereon shall be
proceeded with in accordance with the provisions of this Act. If such
amendments are not made, the prosecution of said applications shall be
proceeded with and registrations thereon granted in accordance with the
Acts under which said applications were filed, and said Acts hereby
continued in force to this extent for this purpose only, notwithstanding
the foregoing general repeal thereof. (236.2)

SEC. [237.]251.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. (237)

SEC. [238.]252. 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. (238)

SEC. [239.]253.Appropriations. - The funds needed to carry out the
provisions of this Act shall be charged to the appropriations of the
Bureau of Patents, Trademarks, and Technology Transfer under the
current General Appropriations Act and the fees, fines, royalties and

7


28
29
30

31
32

SECTION 105.

other charges collected by the Bureau for the calendar year pursuant to
Sections 14.1 and 234 of this Act. Thereafter such sums as may be
necessary for its continued implementations shall be included in the
annual General Appropriations Act. (239)

SEC. [240.]254.Repeals. - [240.1.]254.1[All Acts and parts of Acts
inconsistent herewith, more particularly] 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. ALL
LAWS AND PARTS THEREOF INCONSISTENT WITH THIS ACT ARE
LIKEWISE REPEALED. (240.1)

[240.2.]254.2 Marks registered under Republic Act No. 166 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 renewal, shall be reclassified in accordance with the
International Classification. Trade names and marks registered in the
Supplemental Register under Republic Act No. 166 shall remain in force
but shall no longer be subject to renewal. (240.2)

[240.3.]254.3 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. (240.3)

SEC. [241]. 255. 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. (241)

SEC. [242.]256.Effectivity. - This Act shall take effect on 1 January
1998. (242)

SECTION 106. —Effectivity. - This Act shall take effect on 1 January 2020.

{End of document.]

72

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.