TEPR ESE

Republic of the Philippines
HOUSE OF REPRESENTATIVES
Quezon City

NINETEENTH CONGRESS
First Regular Session

HOUSE BILL no.3 838

Introduced by REP. LEX ANTHONY CRIS A. COLADA

EXPLANATORY NOTE

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

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

This bill proposes the passing of a new Intellectual Property Act with the ultimate goal of
ensuring that scientists, inventors, artists, and other gifted citizens are encouraged to continue
creating and innovating so that both citizens and consumers can benefit from innovative and
creative products. In addition, the new and amended provisions contained in the new Intellectual
Property Act, as proposed, are designed to ensure a balance between the interests of both the
owners/ holders and users of the products protected by these rights.

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

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

‘© Increase the capacity of IPOPHL to provide assistance to stakeholders, the general public,
and specific sectors like the academe, the industries and the MSMEs
© Have a more entrenched IP System that will nurture a culture of creativity and innovation

‘Y RECEIVED

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By


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

* Clarify and fill the gap created by Personal Property Security Act

© Institutionalize the NCIPR and the Powers of a Sub-Committee on Enforcement of
Intellectual Property Rights in the Digital En

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

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

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

nment

LEX ANTHONY CRiS A. COLADA
Aambis-OWA, Partylist


Republic of the Philippines
HOUSE OF REPRESENTATIVES
Quezon City

NINETEENTH CONGRESS
First Regular Session

HOUSE BILL NO. 3 838

Introduced by REP. LEX ANTHONY CRIS A. COLADA

AN ACT

PROVIDING FOR THE REVISED INTELLECTUAL PROPERTY CODE

OF THE PHILIPPINES

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

SECTION 1. Short Title. - This Act shall be known as the “Revised
Intellectual Property Code of the Philippines”,

SEC. 2. Declaration of Policy. - The State recognizes that an effective and
efficient intellectual property system is vital to the development of domestic, and
creative industries, facilitates transfer of technology, attracts foreign investments,
promotes business confidence and ensures market access for our products.
Towards this end, the State shall:

(a)

(b)

(c)

modemize and improve certain aspects of the law on intellectual
property to ensure that the intellectual property system operates more
efficiently and is more accessible for all scientists, inventors, creators,
artists and other gifted citizens including the indigenous peoples and
local communities;

streamline administrative procedures relating to intellectual property
rights, liberalize the registration on the transfer of technology enhance
the enforcement of intellectual property rights in the Philippines; and
promote the use of relevant, emerging, advanced, and state-of-the-art
technologies to provide more efficient and higher quality service to the
public; and

recognize, protect, and promote the rights of the indigenous peoples
and communities to their intellectual and cultural rights under the
principles of free and prior informed consent and benefit sharing. Thus,
the State shall implement appropriate measures to prevent misuse and
misappropriation of the indigenous peoples’ and communities’
intellectual and cultural properties.


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SEC. 3. Applicability of International Conventions and Agreements. - Any
person who is a national or who is domiciled or has a real and effective industrial
establishment in a country which is a party to any convention, treaty or agreement
relating to intellectual property rights or the repression of unfair competition, to which
the Philippines is also a party, or extends reciprocal rights to nationals of the
Philippines by law, shall be entitled to benefits to the extent necessary to give effect
to any provision of such convention, treaty or reciprocal law, in addition to the rights
to which any owner of an intellectual property right is otherwise entitled by this Act.

SEC. 4. Definitions of Terms. — As used in this Act:

(a)

(b)

(c)

(a)

(e)

“Counterfeit goods” refer to any goods or materials including packaging
bearing without authorization a trademark which is identical to a
trademark validly registered with the Intellectual Property Office of the
Philippines (IPOPHL) or already declared as a well-known mark
internationally or in the Philippines by a competent authority in respect
of such goods or which cannot be distinguished in its essential aspects
from such a trademark and which thereby violates the rights of the
‘owner of the trademark in question;

“Innovation” refers to the creation of new ideas that results in the
development of new or improved products, processes, or services,
which are then spread or transferred across the market;

“Intellectual property’ or “intellectual property rights” refer to the
following:

(1) Copyright and Related Rights;

(2) Geographical Indications;

(3) Industrial Designs;

(4) Layout-Designs (Topographies) of Integrated Circuits;
(6) Patents;

(6) Protected Undisclosed Information;

(7) Trademarks and Service Marks; and

(8) Utility Models.

"IPOPHL Gazette" or “E-Gazette” refers to the printed or electronic
Publication of the Office under this Act;

"Office" refers to the Intellectual Property Office of the Philippines
(IPOPHL);


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U)

(9)

“Pirated goods” refer to any goods or materials which are made,
produced, or replicated without the consent of the right holder or
person duly authorized by the right holder and which are made,
produced, or replicated directly or indirectly from an article where the
making of that copy would have constituted an infringement of
copyright or related rights; and

“Technology transfer arrangements" refer to contracts or agreements
involving intellectual property rights with the transfer of systematic
knowledge or technology 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.

PARTI
THE INTELLECTUAL PROPERTY OFFICE

SEC. 5. Functions of the Intellectual Property Office of the Philippines
(IPOPHL). - 5.1. The Office is mandated to administer and implement the State
policies declared in this Act and shall have the following functions:

(a)

(b)
(c)

(3)

(e)

(f)

(g)

(h)

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

Provide protection for geographical indications;

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

Register copyright, issue certificates of deposit or registration and
promote the use of copyright and related rights as a tool to foster a
culture of creativity and respect for artistic creation;

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

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

Administratively adjudicate disputes involving intellectual property
rights;

Undertake enforcement functions supported by concerned agencies;

Coordinate with and enter into partnerships with other government
agencies, institutions, and the private sector efforts to formulate and

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

(i) Secure and receive bilateral and international grants and endowments
to support its programs and projects; and

(k) Formulate policies to promote creativity, innovation, and respect for
intellectual property.

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.

5.3. The Office shall have the authority to establish and collect fees and
other charges in the exercise of its functions and rendering of services including the
holding of trainings and seminars. In relation to and in the performance of its
functions and promotion of intellectual property, the Office shall have the authority to
sell educational and promotional materials, and import and accept donations
consisting of equipment or similar items to be exclusively used for official purposes.

5.4. The Office shall promulgate rules and procedures, including reasonable
timelines consistent with international agreements and best practices. The Office
shall adhere as closely as possible to the mandated timelines for processing
transactions under Republic Act No. 11032, otherwise known as the “Ease of Doing
Business and Efficient Government Service Delivery Act of 2018": Provided, That for
specific transactions and procedures stipulated under this Act, the prescribed
timeline shall commence from the time of the submission of all the requirements and
completion of all the stages of the prescribed processes, including post grant
publications, inter partes and intellectual property rights violations and proceedings.

The rules of procedure shall include the grant of letters patents, registration of
utility models, industrial designs, layout-designs (topographies) of integrated circuits,
marks of ownership, the adjudication of intellectual property disputes, and other
similar or related services.

SEC, 6. The Organizational Structure of the IPOPHL. — 6.1. The Office
shall be headed by a Director General who shall be assisted by two (2) Deputies
Director General.

6.2. The Office shall be divided into seven (7) Bureaus, each of which shall be
headed by a Director and assisted by an Assistant Director. These Bureaus are:

(a) The Bureau of Patents;

(b) The Bureau of Trademarks;

(c) The Bureau of Legal Affairs;

(4) The Bureau of Innovation Support and Business Development;

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(e)
0)

(9)

The Information Technology Management Service;

The Finance, Administrative, and Human Resource Development
Services; and

The Bureau of Copyright and Related Rights

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

SEC. 7. The Offices of the Director General and Deputies Director
General. - 7.1 Composition. - The Office of the Director General shall consist of the
Director General and the Deputies Director General, their immediate staff and such
Offices and Services that the Director General will set up to support the plans and
programs of the Director General such as, but not limited to :

(a)
()
(c)
(3)
(e)
0)
(9)

7.2.

Strategy Management and Planning;
Intellectual Property Academy (IP Academy);
Intellectual Property Rights Enforcement;
Intellectual Property Field Operations;

Legal and Appeals:

Policy Research and Intemational Affairs; and
Internal Audit and Quality Management.

Powers and Functions. - The Director General shall exercise the

following powers and functions:

(a)

Manage and direct all functions and activities of the Office, including
the promulgation of rules and regulations to implement its mandates,
objectives, policies, plans, programs and projects, and the recognition
of individuals representing applicants or other parties before the Office
or handling services related to intellectual property: Provided, That for
recognition of lawyers, such rules and regulations shall be subject to
Rule 138 of the Rules of Court of the Philippines.

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;

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(b)

(c)

(2)

(3)

Coordination with other agencies of government in relation to
the enforcement of intellectual property rights; and

The establishment of fees for the filing and processing of an
application for a patent and registration of utility model or
industrial design, layout-design (topography) of an integrated
circuit, or mark or a collective mark and other marks of
ownership, and for all other services performed and materials
furnished by the Office,

The Director General shall be subject to the supervision of the

Secretary of Trade and Industry.
Exercise

(1) exclusive original jurisdiction over petitions for the grant of
compulsory licenses or special compulsory licenses. The
decisions of the Office of the Director General over
compulsory licensing cases shall be appealable to the
Court of Appeals in accordance with the Rules of Court;

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

The decisions of the Director General in the exercise of his
appellate jurisdiction in respect of the decisions of the Director of
the Bureau of Legal Affairs, Director of the Bureau of Patents,
Director of the Bureau of Trademarks, Director of the Bureau of
Copyright and Related Rights shall be appealable to the Court of
Appeals in accordance with the Rules of Court: Provided, That the
decisions of the Director of the Bureau of Innovation Support and
Business Development on technology transfer arrangements shall
be appealable to the Secretary of Trade and Industry;

Undertake enforcement functions supported by concerned agencies

such as:

(1) _ Issue visitorial orders in relation to violations of intellectual
property rights involving counterfeit and pirated goods and
materials, and if necessary issue provisional cease and
desist and preventive custody orders: Provided, That the
issuance of such orders are in accordance with the
procedure under this Act: Provided however, That the
complainant shall post a bond sufficient to answer for any

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and all damages that the respondent may suffer because of
the wrongful order.

For purposes of the issuance of the orders under this Section,
the following shall be strictly complied with:

(1.1) /ssuance of Visitorial Orders

The visitorial order shall be issued in relation to violations of
intellectual property rights involving counterfeit and pirated
goods and materials, and only upon filing of a verified complaint
by the owner(s) or holder(s) of intellectual property rights or their
authorized representatives, accompanied by (a) a certificate of
registration or sworn statement of ownership, (b) a sample of the
authentic and counterfeit or pirated goods and materials subject
of the complaint, and (c) a sworn statement by the complainant
or its expert on the lack of authenticity of the product or lack of
authority of the respondent to sell, offer for sale, display or make
available to the public the said goods and materials. Any
\isitorial order shall be issued only upon showing of reasonable
cause by the complainant and any visit shall only be conducted
during reasonable hours to open establishments and businesses
where the counterfeiting or piracy is alleged to be taking place or
counterfeit goods or pirated goods or materials are alleged to be
sold, offered for sale, displayed or made available to the public.

During the visit, the Director General, or any officer authorized in
writing by the Director General, shall give the respondent
reasonable time and opportunity to provide evidence of
authenticity or authority for the goods sold, offered for sale,
displayed or made available to the public, or kept in storage.

(1.2) Cease and Desist Order; Preventive Custody Order

A cease-and-desist order may be issued after due notice and
hearing, and only if the respondent fails to produce such
evidence of authenticity or authority, in which case, the subject
goods may be placed in preventive custody. Goods placed in
preventive custody shall be subject to inventory, appropriately
marked, and segregated from the rest of the products in the
establishment but shall physically remain in the establishment of
the respondent or in a place mutually agreed upon by the
complainant, the respondent, and the Director General or any
officer authorized in writing by the Director General. The
inventory shall be witnessed and accepted by the respondent.

(1.3) Compliance to Cease-and-Desist and Preventive Custody

The preventive custody of the goods shall be effective for a
maximum period of five (5) days which may be extendible for a
maximum of another five (5) days upon reasonable ground.

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(2)

Within this period, the respondent should be able to show cause
why the preventive custody should be revoked, amended or not
made permanent, and the Director General shall make a
determination thereof.

If the goods are determined to be not counterfeit or pirated, the
preventive custody shall be revoked within twenty-four (24)
hours and an Order for Release of the goods subject of
preventive custody shall be issued within the said period.

Should the Director General determine that the goods are
counterfeit or pirated, the Director General, after due notice and
hearing, shall issue an Order of Confiscation and the goods
shall be confiscated and removed from the establishment of the
respondent and subjected to forfeiture, destruction, or disposal
proceedings in accordance with law.

The Office shall issue the necessary implementing rules and
regulations (IRR) for the proper implementation of the visitorial
powers of the Director General consistent with the Rules of the
‘Supreme Court and the Rules of Court of the Philippines.

After due notice and hearing, issue temporary and permanent
blocking orders, take down orders, cease-and-desist, or disable
access orders, to the intermediary service providers, domain
name registries and registrars, website owners, online
intermediaries, online platforms, social media platforms, or any
similar medium in relation to an online violation of intellectual
property rights involving counterfeit goods, copyright infringing
or pirated goods, materials, and content, infringement of
copyright, and other violations of intellectual property rights and
this Act, upon filing of a verified complaint by the owner(s) or
holder(s) of the intellectual property rights or their authorized
representative accompanied by a certificate of registration or
sworn statement of ownership, and a swom statement by the
complainant or its expert on the lack of authenticity of the
product or lack of authority to sell, offer for sale, display or make
available to the public the counterfeit or pirated goods and
materials. In the case of online platforms, the take down or
cease and desist orders may, as the Director General may
deem appropriate, be limited to directing the online platform or
the persons operating them to (i) take down, or compel the
sellers on the platform to take down, infringing products or
listings from the platform as identified in the complaint; or (ji)
block specific sellers from the platform when such sellers have
been found to infringe intellectual property rights pursuant to at
least three (3) verified complaints filed with the IPOPHL.

The temporary blocking, takedown, cease and desist or other
orders or measures shall be issued only upon showing of grave
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forty-eight (48) hours and in no case longer than seventy-two
(72) hours. Within this period, the Director General shall conduct
a hearing and order the respondent to show cause why the
temporary order or measure should be revoked, amended or not
made permanent. The Director General shall determine within
the same period whether the temporary order or measure
should be amended, revoked or made permanent.

The Director General shall issue fair and equitable procedures
to implement its enforcement powers, which procedures shall be
applied in a manner as to avoid the creation of barriers to
legitimate trade and to provide for safeguards against their
abuse.

(4) The power to hold in contempt, in accordance with the procedure
provided in the implementing rules and regulations of the Office, on all
those who disregard orders or writs issued in the exercise of the
powers and functions provided for in this Section, and to impose a fine
of not less than Twenty thousand pesos (P 20,000.00) but not more
than Three hundred thousand pesos (P 300,000.00); and

(e) Such other functions in furtherance of the objectives of this Act.

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 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 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.

7.4. Term of Office. - The Director General and the Deputies Director General
shall be appointed by the President for a term of five (5) years and shall hold office
until the successor is appointed and qualified. The Director General and each of the
Deputies Director General shall be eligible for reappointment only once. Appointment
to any vacancy shall be only for the unexpired term of the predecessor.

SEC. 8. Strategy Management and Planning. - The Strategy Management
and Planning under the Office of the Director General shall have the following
functions:

(a) Provide efficient and effective services related to the formulation of
data-driven plans and programs, monitoring of organizational
performance, and review of strategic priorities;

(b) Drive IPOPHL's strategic planning process by enhancing its knowledge
of the driving forces in its operating environment; and


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(c)

Identify and develop future-ready capabilities to improve IPOPHL's
work.

SEC. 9. Intellectual Property (IP) Academy. ~ The IP Academy shall have
the following functions:

(a)

()

(o)

(a)

(e)

(f)

SEC.

‘Support the agent accreditation process of the Office by facilitating or
conducting the accreditation training, examination, registration, and
other supporting activities to accredit and register intellectual property
agents, and representatives;

Build high-level understanding, competence and expertise in the fields
of intellectual property and other related areas through the conduct of
certification programs, advanced highly-technical courses, learning
tracks system, continuing professional development programs and
other similar activities;

Create and formulate the training and learning outlines, methods,
curricula, modules, programs, and instructional materials for the
training, learning, education programs, and other similar activities on
intellectual property and other relevant disciplines;

Assist and support the capacity building programs of Bureaus and
offices in relation to leaming management, learning evaluation
processes, as well as research initiatives and knowledge-building
programs of intellectual property and other relevant disciplines;

Support and establish the creation of scientific, interdisciplinary,
evidence-based and other related research and studies on intellectual
property and related disciplines through the conduct of conferences,
conventions, publications, and other similar activities on research and
knowledge-creation; and

Enhance and integrate intellectual property in the learning system of
the country through the establishment of partnerships and cooperation
with local or foreign educational, learning and research institutions,
government agencies, private sectors, and other professional
organizations.

10. Intellectual Property Rights Enforcement The Intellectual

Property Rights Enforcement under the Office of the Director General shall have the
following powers and functions:

(a)

(b)

Gather intelligence information related to the violations of this Act,
conduct inquiries and investigation and develop effective
countermeasures to deter counterfeit and pirated goods or content;

Conduct visits during reasonable hours to establishments and

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(c)
(d)

(e)

U)

(9)

(h)
wi)

businesses where activities suspected to be in violation of this Act are
being performed in accordance with the procedure provided for under
Section 7.2 of this Act;

Develop a database of pending cases involving violations of this Act;
Undertake any or all of the following enforcement actions:

(1) Serve and execute the administrative orders duly issued by the
Office of the Director General in accordance with its powers
granted in Section 7 of this Act, such as visitorial order on
premises, confiscation orders against counterfeit and pirated
goods, enforcement orders, and take down or blocking orders
against websites or online platforms in coordination with the
appropriate agency or intermediary service provider;

(2) __ Issue notice or warning to the respondent or respondents;

(3) | Recommend that the concemed local government unit or other
government agency cancel licenses and business permits for
engaging in selling or making available to the public counterfeit
and pirated goods or file charges against the respondents for
violation of their respective laws, rules or regulations;

(4) Request the concerned local government unit concerned or
other government agencies to implement the decisions of the
Intellectual Property Rights Enforcement pursuant to their
respective mandates;

(5) Report the result of service and execution of administrative
orders; and

(6) Such other orders or actions necessary to ensure compliance
with the provisions of this Act.

Coordinate with other government agencies and the private sector
efforts on matters related to intellectual property rights enforcement;

Assist in the enforcement of orders, writs, and processes issued by the
Bureau of Legal Affairs and the Office of the Director General;

Conduct monitoring activities related or relevant to intellectual property
rights enforcement;

Exercise inter-agency special enforcement coordination functions; and
Such other powers and functions as may be necessary or incidental to
the attainment of the purposes and objectives of this Act or as may be
assigned by the Director General or the Deputy Director General-in-
charge.

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SEC. 41. Intellectual Property Field Operations. — The Intellectual Property
Field Operations under the Office of the Director General shall have the following

functions:

(a)

(b)

(c)

Implement programs and render intellectual property-related services
to promote the effective use and respect of intellectual property, and
foster an intellectual property-inspired culture of innovation and
creativity in the regions of the country;

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

Perform such other functions that will promote the mandate of the
Office.

SEC. 12. Bureau of Patents. - The Bureau of Patents shall have the
following functions:

(a)

()
(c)

(d)

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

Registration of utility models and integrated circuits;
Conduct studies and researches in the field of patents in order to assist
the Director General in formulating policies on the administration and

examination of patents; and

Provide other administrative support services related to the foregoing
and charge reasonable fees therefor.

SEC. 13. Bureau of Trademarks. - The Bureau of Trademarks shall have the
following functions:

(a)

(b)
(c)

(d)

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;

Registration of industrial designs;
Conduct studies and researches in the field of trademarks in order to
assist the Director General in formulating policies on the administration

and examination thereof;

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

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(e)

Provide other administrative support services related to the foregoing
and charge reasonable fees therefor.

SEC. 14, Bureau of Copyright and Related Rights.- The Bureau of
Copyright and Related Rights shall have the following functions:

(a)

(b)

()

(a)

(e)

0)

(g)

(h)

Exercise original jurisdiction to resolve disputes relating to copyright
and related rights, except for copyright infringement cases, cancellation
of copyright registration, and those other cases which are within the
jurisdiction of the Bureau of Legal Affairs under Section 15 of this Act;

Accept and review applications for the accreditation of collective
management organizations or simitar entities, and within twenty (20)
days from the submission of complete application documents and
observation of interested parties, decide on the said applications for
accreditation. The Bureau of Copyright and Related Rights recognizes
the importance of the role of collective management organizations and
shall encourage accreditation thereof.

Formulate and implement plans and projects to promote the use of
copyright and related rights as a too! to foster a culture of creativity and
respect for artistic creations;

Receive, evaluate and allow the voluntary registration and deposit of
works as provided for under Section 214 of this Act;

Establish and maintain registries or databases involving copyright and
related rights in coordination with other government agencies, entities
and private stakeholders;

Conduct researches and education activities, to enhance public
awareness on copyright and of fair use of works;

Approve, after careful deliberation or public consultation, matters
concerning the rate or amount of fees and royalties of collective
management organizations mentioned in Section 203 of this Act; and

Perform other functions to the foregoing and charge reasonable fees
therefor.

The Director General may, by regulations, establish the procedure to govern
the implementation of this Section.

SEC. 15. Bureau of Legal Affairs. - The Bureau of Legal Affairs shall have
the following functions:

(a)

Adjudicate on the following:

(1) Opposition to the application for registration of trademarks and
other marks of ownership;

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(3)

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Cancellation of trademarks, geographical _ indications
registration, copyright registration, other marks of ownership and
subject to the provisions of Section 70 of this Act, cancellation of
patents, utility models, industrial designs, and layout-designs
(topographies) of integrated circuits;

Opposition to application or request for, and revocation of, the
declaration of well-known marks by the Bureau of Trademarks;

Petition for declaration as true and actual inventor, and

Revocation of declaration as true and actual inventor.

Provided, That decisions of the adjudication officers are appealable to the

Director.

(b) Exercise jurisdiction in the following manner:

(1)

(2)

Exercise original and exclusive jurisdiction in administrative
complaints for violations of laws involving intellectual property
rights: Provided, That availment of the provisional remedies may
be granted in accordance with the Rules of Court. The Bureau
shall, after notice and hearing, have the power to impose fines
of not less than not less than fifty thousand pesos (P 50,000.00)
but not more than Three hundred thousand pesos (P
300,000.00) for all those who disregard orders or writs issued in
the course of the proceedings, and recommend or pursue
contempt actions as provided for under Section 7.2 (d) of this
Act, or the revocation or suspension of the relevant business
permit, license or authority as provided for under Section 255 of
this Act, or both.

After formal investigation, the Bureau may impose one (1) or
more of the following administrative penalties:

(i) The issuance of a cease and desist order which shall
specify the acts that the respondent shall cease and
desist from and to require the submission of a compliance
report within a reasonable time which shall be fixed in the
order;

(ii) 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) An assurance to comply with the provisions of the
intellectual property law violated;

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(iv)

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(2) Anassurance to refrain from engaging in unlawful
and unfair acts and practices subject of the formal
investigation;

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

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

The Bureau may also require the respondent to submit
periodic compliance report and file a bond to guarantee
such compliance of undertaking;

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

The forfeiture of paraphernalia, machines, equipment and
personal properties used primarily or predominantly in the
violation of intellectual property rights;

The imposition of administrative fines, which shall in no
case be less than One hundred thousand pesos (P
100,000.00) nor more than One million pesos (P
4,000,000.00). In addition, an additional fine of not less
than Ten thousand pesos (P10,000.00) shall be imposed
for each day of continuing violation;

The cancellation of any license, authority, or registration
which may have been granted by the Office, or the
suspension of the validity thereof for such period as the
Bureau may deem reasonable which shall not exceed
one (1) year;

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

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

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(a)

(ix) Censure; and
(x) Other analogous penalties or sanctions.

Provided, that decisions of the adjudication officers are
appealable to the Director.

Establish and administer alternative dispute resolution mechanisms;
and

Provide assistance to other bureaus and offices of the IPOPHL,
including legal review, study, and similar tasks.

The Director General may, by regulations, establish the procedure to govern
the implementation of this Section.

SEC. 16. Bureau of Innovation Support and Business Development. - The
Bureau of Innovation, Support and Business Development shall have the following

functions:

(a)

(b)

Foster creativity, innovation, and business development by
implementing policies, programs, and activities therefor, through the
following:

(1) Promote and provide assistance on the utilization and
commercialization of intellectual property through various modes
in coordination and collaboration with other government
agencies and the relevant private institutions;

(2) Promote the use of intellectual property information as a
strategic tool to facilitate the development of technology in the
country;

(3) Perform patent searches, analytics mapping and similar
activities;

(4) Register technology transfer arrangements, and settle disputes
involving technology transfer payments;

(5) Adapt and package intellectual property information; and

(6) Provide advisory services for the determination of search
patterns;

Build public awareness on intellectual property through information

dissemination and the conduct of seminars, lectures, capacity building
exercises and other similar activities; and

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(©) Support advocacy programs and initiatives of the Office through
marketing of services, and external communications.

The Director General may, by implementing rules and regulations, establish
the procedure to govern the implementation of this Section.

SEC. 17. Information Technology Management Service. - The Information
Technology Management Service shall:

(a) 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

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

SEC. 18. Finance, Administrative and Human Resource Development
Services. - 18.1. The Finance Service shall:

(a) Formulate and manage a financial program to ensure availability and
proper utilization of funds; and

(b) Provide for an effective monitoring system of the financial operations
of the Office;

18.2. The Administrative Service shall:

(a) Provide services relative to procurement and allocation of supplies and
equipment, transportation, messengerial work, cashiering, payment of
salaries and other obligations of the Office, maintenance, and proper
safety and security of the Office, as well as other utility services; and

(b) Receive all applications filed with the Office and collect fees therefor.
18.3. The Human Resource Development Service shall

(2) Design and implement human resource development plans and
programs for the personnel of the Office;

(b) Provide for present and future manpower needs of the organization;
and

(c) Maintain high morale and favorable employee attitudes towards the
organization through the continuing design and implementation of
employee development programs.

SEC. 19. The National Committee on Intellectual Property Rights. — 19.1.
Composition. - The composition of the National Committee on Intellectual Property
Rights (NCIPR), created under Executive Order No. 736, series of 2008, entitled
“Institutionalizing Permanent Units to Promote, Protect and Enforce Intellectual

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Property Rights (IPR) in Different Law Enforcement and Other Agencies under the
Coordination of the National Committee on Intellectual Property Rights (NCIPR)’, is
hereby expanded to include the following member agencies:

(a)
(b)
(c)
(d)
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Department of Trade and Industry (DTI);

Intellectual Property Office of the Philippines (IPOPHL);

Department of Justice (DOJ);

Department of Interior and Local Government (DILG);

Department of Information and Communications Technology (DICT);
Bureau of Customs (BOC);

National Telecommunications Commission (NTC);

Optical Media Board (OMB);

National Bureau of Investigation (NBI);

Philippine National Police (PNP);

Food and Drug Administration (FDA);

National Book Development Board (NBDB);

Bureau of Internal Revenue (BIR);

National Commission on Indigenous People (NCIP);

Office of the Special Envoy for Transnational Crimes;

Such other agencies as may be called upon by the NCIPR; and

A representative from the private sector to be appointed by the
Secretary of Trade and Industry upon the recommendation of the

Director General, and who shall have a term of two (2) years, without
reappointment.

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

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

functions:

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(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;

(4) 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; and

(f) Coordinate with other government agencies and the private sector
efforts on matters related to intellectual property rights enforcement.

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

SEC. 20. Use of Intellectual Property Rights Fees by the IPOPHL. — 20.
For a more effective and expeditious implementation of this Act, the Director General
shall be authorized to retain, without need of a separate approval from any
government agency, and subject only to the existing accounting and auditing rules
and regulations, all the fees, fines, royalties and other charges, collected by the
Office under this Act and the other laws that the Office will be mandated to
administer, for use in its operations, such as upgrading of its facilities, equipment
outlay, human resource development, and the acquisition of the appropriate office
space, among others, to improve the delivery of its services to the public. This
amount, which shall be in addition to the Office's annual budget, shall be deposited
and maintained in a separate account or fund, which may be used or disbursed
directly by the Director General.

20.2. The Director General shall, subject to the approval of the Secretary of
the DTI, determine if the fees and charges mentioned in Section 20.1 hereof are
sufficient to meet its budgetary requirements. If so, it shall retain all the fees and
charges it shall collect under the same conditions indicated in Section 20.1 hereof,
but shall forthwith cease to receive any funds from the annual budget of the National
Government.

SEC. 21. Special Technical and Scientific Assistanc The Director
General is empowered to obtain the assistance of technical, scientific or other
qualified officers and employees of other departments, bureaus, offices, agencies
and instrumentalities of the Government, including corporations owned, controlled or
operated by the Government, when deemed necessary in the consideration of any
matter submitted to the Office relative to the enforcement of the provisions of this
Act.

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SEC. 22. Seal of Office. - The Office shall have a seal, the form and design
of which shall be approved by the Director General.

SEC. 23. Publication of Laws and Regulations. - The Director General shall
cause to be printed and make available for distribution, pamphlet copies of this Act,
other pertinent laws, executive orders and information circulars relating to matters
within the jurisdiction of the Office.

SEC. 24. The IPOPHL Gazette. — All matters required to be published under
this Act shall be published in the Office's own publication to be known as the
IPOPHL Gazette.

SEC. 25. Disqualification of Officers and Employees of the Office. — All
officers and employees of the Office shall not apply or act as an attorney or agent of
an application for a grant of patent, for the registration of a utility model, industrial
design, layout-design (topographies) of an integrated circuit, mark, other marks of
‘ownership, nor acquire, except by hereditary succession, any patent or utility model,
design registration, or mark or any right, title or interest therein during their
employment and for one (1) year thereafter.

PART Il
THE LAW ON PATENTS

Chapter!
GENERAL PROVISIONS

SEC. 26. Definition of Terms. — As used in Part Il of this Act, the following
terms shall mean:

(a) “Bureau” means the Bureau of Patents;

(b) "Director" means the Director of the Bureau of Patents;

(©) "Examiner" means the patent examiner;

(d) “Patent application" or "application" means an application for a patent
for an invention except in Chapters 1X and X, where application means
an application for a utility model and layout-design (topography) of
integrated circuit, respectively;

(e) "Priority date" means the date of filing of the foreign application for the
same invention referred to in Section 37 of this Act;

(f) “Provisional Patent Application” means a temporary patent application
that complies with Section 39.2 of this Act and filed for purposes of
establishing an early filing date; and

(g) "Regulations" mean the Rules of Practice in Patent Cases formulated
by the Director of the Bureau of Patents and promulgated by the
Director General.

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Chapter Il
PATENTABILITY

SEC. 27. Patentable Inventions. - Any technical solution of a problem in any
field of human activity which is new, involves an inventive step and is industrially
applicable shall be patentable. It may be, or may relate to, a product, or process, or
an improvement of any of the foregoing.

SEC. 28. Non-Patentable Inventions. - The following shall be excluded from
patent protection:

(a) Discoveries, scientific theories and mathematical methods, and in the
case of drugs and medicines, the mere discovery of a new form or new
property of a known substance which does not result in the
enhancement of the known efficacy of that substance, or the mere
discovery of any new property or new use for a known substance, or
the mere use of a known process unless such known process results in
anew product that employs at least one new reactant.

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

(b) Schemes, rules and methods of performing mental acts, playing games
or doing business, and programs for computers;

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

(4) Plant varieties or animal breeds or essentially biological process for the
production of plants or animals. This provision shall not apply to micro-
organisms and non-biological and microbiological processes.

Provisions under this Section shall not preclude Congress to consider the

enactment of a law providing sui generis protection of plant varieties and

animal breeds and a system of community intellectual rights protection;

(e) Aesthetic creations; and

(f) Anything which is contrary to public order or morality.

SEC. 29. Novelty. - An invention shall not be considered new if it forms part
of a prior art.

‘SEC. 30. Prior Art. - Prior art shall consist of:

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(a) Everything which has been made available to the public anywhere in
the world, before the filing date or the priority date of the application
claiming the invention: Provided, That an undisclosed provisional
patent application shall not be considered as prior art; and

(b) The whole contents of an application for a patent, utility model, or
industrial design registration, published in accordance with this Act,
filed or effective in the Philippines, with a filing or priority date that is
earlier than the filing or priority date of the application: Provided, That
the application which has validly claimed the filing date of an earlier
application under Section 38 of this Act, shall be prior art with effect as
of the filing date of such earlier application: Provided further, That the
applicant or the inventor identified in both applications are not one and
the same.

SEC. 31. Non-Prejudicial Disclosure. - 31.1. The disclosure of information
contained in the application during the twelve (12) months preceding the filing date
or the priority date of the application shall not prejudice the applicant on the ground
of lack of novelty if such disclosure was made by:

(a) The inventor;

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

(©) A third party which obtained the information directly or indirectly from
the inventor.

31.2. For the purposes of Section 31.1 hereof, "inventor" also means any
person who, at the filing date of the application, had the right to the patent.

SEC. 32. Inventive Step. - 32.1. An invention involves an inventive step if,
having regard to prior art, it is not obvious to a person skilled in the art at the time of
the filing date or priority date of the application claiming the invention.

32.2. In the case of drugs and medicines, there is no inventive step if the
invention results from the mere discovery of a new form or new property of a known
substance which does not result in the enhancement of the known efficacy of that
substance, or the mere discovery of any new property or new use for a known
substance, or the mere use of a known process unless such known process results
in a new product that employs at least one new reactant.

SEC. 33. Industrial Applicability. - An invention that can be produced and
used in any industry shall be industrially applicable.

Chapter Ill
RIGHT TO A PATENT

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SEC. 34, Right to a Patent. - The right to a patent belongs to the inventor, his
heirs, or assigns. When two (2) or more persons have jointly made an invention, the
right to a patent shall belong to them jointly.

SEC. 35. First to File Rule. - If two (2) or more persons have made the
invention separately and independently of each other, the right to the patent shall
belong to the person who filed an application for such invention, or where two or
more applications are filed for the same invention, to the applicant who has the
earliest filing date or, the earliest priority date.

SEC. 36. Inventions Created Pursuant to a Commission. - 36.1. The
person who commissions the work shall own the patent, unless otherwise provided
in the contract.

36.2. In case the employee made the invention in the course of his
employment contract, the patent shall belong to:

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

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

SEC. 37. Right of Priority. - 37.1. An application for patent filed by any
person who has previously applied for the same invention in another country which
by treaty, convention, or law affords similar privileges to Filipino citizens, shall be
considered as filed as of the date of filing the foreign application: Provided, That: (a)
the local application expressly claims priority; (b) itis filed within twelve (12) months
from the date the earliest foreign application was filed; and (c) a certified copy of the
foreign application together with an English translation is filed within six (6) months
from the date of filing in the Philippines.

37.2. The date of filing of a provisional patent application may be claimed as
the priority date of the patent application: Provided, That such patent application
was filed within twelve (12) months and in accordance with the requirements of
Section 38.1 hereof.

Chapter IV
PATENT APPLICATION

SEC. 38. The Application. - 38.1. The patent application shall be in Filipino
or English and shall contain the following:

(2) Arequest for the grant of a patent;

(b) A description of the invention;

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Drawings necessary for the understanding of the invention;

At least one (1) claim;

An abstract;

Payment of required fees at the time of filing; and

If the applicant is not domiciled in the Philippines, the appointment of
an agent or representative upon whom notice or process for judicial or
administrative procedure relating to the application for patent or the

patent may be served.

No patent may be granted unless the application identifies the inventor.

If the applicant is not the inventor, the Office may require him to submit said

authority.

Section 39. Provisional Patent Application. — 39.1. A provisional patent
application shall be replaced by a patent application that complies with Section 39.2
hereof: Provided, That such patent application is filed within twelve (12) months
from the filing date of the provisional patent application: Provided further, That if new
matter not included in the provisional application is introduced, the filing date shall be
when the regular application is filed, otherwise such provisional patent application
shall be considered forfeited.

39.2. A provisional patent application shall contain the following:

(a)
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Request Form for Provisional Application;

Provisional description of the invention;

Provisional drawings or sequence listings, if applicable;

At least one (1) provisional claim;

Provisional abstract;

Payment of required fees at the time of filing; and

If the applicant is not domiciled in the Philippines, the appointment of
an agent or representative upon whom notice or process for judicial or

administrative procedure relating to the application for patent or the
patent may be served.

39.3. The benefits of filing a provisional patent application refer only to the
right of claiming priority date under Section 37.2 hereof and for establishing novelty
under Section 29 hereof. The protection period referred to in Section 60 of this Act
shall be reckoned from the filing date of the provisional patent application.

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SEC. 40. The Request. - The request shall contain a petition for the grant of
the patent, the name and other data of the applicant, the inventor and the agent and
the title of the invention.

SEC. 41. Disclosure and Description of the Invention. - 41.1. The
application shall disclose the invention in a manner sufficiently clear and complete
for it to be carried out by a person skilled in the art. Where the application concerns a
microbiological process or the product thereof and involves the use of a micro-
organism which cannot be sufficiently disclosed in the application in such a way as to
enable the invention to be carried out by a person skilled in the art, and such
material is not available to the public, the application shall be supplemented by a
deposit of such material with an intemational depository institution.

41.2. The Regulations shall prescribe the contents of the description and the
order of presentation.

SEC. 42. The Claims. - 42.1. The application shall contain one (1) or more
claims which shall define the matter for which protection is sought. Each claim shall
be clear and concise, and shall be supported by the description.

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

SEC. 43. The Abstract. - The abstract shall consist of a concise summary of
the disclosure of the invention as contained in the description, claims and drawings
in preferably not more than one hundred fifty (150) words. It must be drafted in a way
which allows the clear understanding of the technical problem, the gist of the solution
of that problem through the invention, and the principal use or uses of the invention.
The abstract shall merely serve for technical information.

SEC. 44. Unity of Invention. - 44.1. The application shall relate to one
invention only or to a group of inventions forming a single general inventive concept.

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

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

SEC, 45. Information Concerning Corresponding Foreign Application for
Patents. - The applicant shall, at the request of the Director, furnish the date and
number of any application for a patent filed abroad, hereafter referred to as the
“foreign application," relating to the same or essentially the same invention as that

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

Chapter V
PROCEDURE FOR GRANT OF PATENT

SEC. 46. Filing Date Requirements. - 46.1. The filing date of a patent
application shall be the date of receipt by the Office of at least the following
elements:

(a) Anexpress or implicit indication that a Philippine patent is sought;
(b) __ Information identifying the applicant; and

(c) Description of the invention and one (1) or more claims in Filipino or
English.

46.2. In the case of the provisional patent application, the filing date shall be
the date of receipt by the Office of all of the requirements in Section 39.2 of this Act.

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

SEC. 47. According a Filing Date. - The Office shall examine whether the
patent application or a provisional patent application satisfies the requirements for
the grant of date of filing as provided for under Section 46 of this Act. If the date of
filing cannot be accorded, the applicant shall be given an opportunity to correct the
deficiencies in accordance with the implementing Regulations. If the application does
not contain all the elements indicated in Section 46 of this Act, the filing date should
be that date when all the elements are received, If the deficiencies are not remedied
within the prescribed time limit, the application shall be considered withdrawn.

‘SEC. 48. Formality Examination. - 48.1. After the patent application has
been accorded a filing date and the required fees have been paid on time in
accordance with the Regulations, the applicant shall comply with the formal
requirements specified by Section 38 of this Act and the Regulations within the
prescribed period; otherwise the application shall be considered withdrawn.

48.2. The Regulations shall determine the procedure for the re- examination
and revival of an application as well as the appeal to the Director from any final
action by the examiner.

SEC. 49. Classification and Search. - An application that has complied with
the formal requirements shall be classified and a search conducted to determine the
prior art.

SEC. 50. Publication of Patent Application. - 50.1. The patent application
shall be published in the IPOPHL Gazette together with a search document
established by or on behalf of the Office citing any documents that reflect prior art,
after the expiration of eighteen (18) months from the filing date or priority date.

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

50.3. The Director General, subject to the approval of the Secretary of the
DTI, may prohibit or restrict the publication of an application, if in the Director
General's opinion, to do so would be prejudicial to the national security and interests
of the Republic of the Philippines.

SEC. 51. Confidentiality Before Publication. - 51.1. A patent application,
which has not yet been published, and all related documents, shall not be made
available for inspection without the consent of the applicant.

51.2. Confidentiality of Provisional Patent Application. — A provisional patent
application that has complied with the requirements in Sections 41 and 42 of this Act
shall be kept in confidence by the Office and as such, will not be published in the
IPOPHL Gazette or in any other means of publication. Provisional patent
applications that are forfeited shall be destroyed or permanently deleted and no
records of which shall be kept by the Office.

SEC. 52. Rights Conferred by a Patent Application After Publication. -
The applicant shall have all the rights of a patentee under Section 82 of this Act
against any person who, without his authorization, exercised any of the rights
conferred under Section 77 of this Act in relation to the invention claimed in the
published patent application, as if a patent had been granted for that invention:
Provided, That the said person had:

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

(b) Received written notice that the invention that he was using was the
subject matter of a published application being identified in the said
notice by its serial number: Provided, That the action may not be filed
until after the grant of a patent on the published application and within
four (4) years from the commission of the acts complained of.

SEC. 53. Observation by Third Parties. - Following the publication of the
patent application, any person may present observations in writing conceming the
patentability of the invention. Such observations shall be communicated to the
applicant who may comment on them. The Office shall acknowledge and put such
observations and comment in the file of the application to which it relates.

SEC. 54, Request for Substantive Examination. - 54.1. The application
shall be deemed withdrawn unless within six (6) months from the date of publication
under Section 47 of this Act, a written request is filed to determine whether a patent
application meets the requirements of Sections 27 to 33 and Sections 38 to 45 of this
Act and that the corresponding fees have been paid on time.

54.2. Withdrawal of the request for examination shall be irrevocable and shall
not authorize the refund of any fee.

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SEC. 55. Amendment of Application. - An applicant may amend the patent
application during examination: Provided, That such amendment shall not include
new matter outside the scope of the disclosure contained in the application as filed.

SEC. 56. Grant of Patent. - 56.1. If the application meets the requirements of
this Act, the Office shall grant the patent: Provided, That all the fees are paid on
time.

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

56.3. A patent shall take effect on the date of the publication of the grant of the
patent in the IPOPHL Gazette.

SEC. 57. Refusal of the Application. - 57.1. The final order of refusal of the
examiner to grant the patent shall be appealable to the Director in accordance with
this Act.

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

SEC. 58. Publication Upon Grant of Patent. - 58.1. The grant of the patent
together with other related information shall be published in the IPOPHL Gazette
within the time prescribed by the Regulations.

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

SEC. 59. Contents of Patent. - The patent shall be issued in the name of the
Republic of the Philippines under the seal of the Office and shall be signed by the
Director, and registered together with the description, claims, and drawings, if any, in
books and records of the Office.

SEC 60. Term of Patent. - The term of a patent shall be twenty (20) years
from the filing date of the application. For a patent which was originally filed under a
provisional patent application, the protection period shall be reckoned from the filing
date of the provisional patent application.

SEC. 61. Annual Fees. - 61.1. To maintain the patent application or patent,
an annual fee shall be paid upon the expiration of four (4) years from the date the
application was published pursuant to Section 50 of this Act, and on each
subsequent anniversary of such date, Payment may be made within three (3)
months before the due date. The obligation to pay the annual fees shall terminate
should the application be withdrawn, refused, or cancelled.

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

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be published in the IPOPHL Gazette and the lapse shall be recorded in the Register
of the Office.

61.3. A grace period of six (6) months shall be granted for the payment of the
annual fee, upon payment of the prescribed surcharge for delayed payment.

SEC. 62. Surrender of Patent. - 62.1. The owner of the patent, with the
consent of all persons having grants or licenses or other right, title or interest in and
to the patent and the invention covered thereby, which have been recorded in the
Office, may surrender his patent or any claim or claims forming part thereof to the
Office for cancellation.

62.2. A person may give notice to the Office of his opposition to the surrender
of a patent under this Section, and if he does so, the Bureau shall notify the
proprietor of the patent and determine the question.

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

SEC. 63. Correction of Mistakes of the Office. - The Director shall have the
power to correct, without fee, any mistake in a patent incurred through the fault of the
Office when clearly disclosed in the records thereof, to make the patent conform to
the records.

SEC. 64. Correction of Mistake in the Application. - On request of any
interested person and payment of the prescribed fee, the Director is authorized to
correct any mistake in a patent of a formal and clerical nature, not incurred through
the fault of the Office.

SEC. 65. Changes in Patents. - 65.1. The owner of a patent shall have the
right to request the Bureau to make the changes in the patent in order to:

(a) Limit the extent of the protection conferred by it;
(b) Correct obvious mistakes or to correct clerical errors; and

(c) Correct mistakes or errors, other than those referred to in Section 65.1
(b) hereof made in good faith: Provided, That where the change would
result in a broadening of the extent of protection conferred by the
patent, no request may be made after the expiration of two (2) years
from the grant of a patent and the change shail not affect the rights of
any third party which has relied on the patent, as published.

65.2. No change in the patent shall be permitted under this Section, where the

change would result in the disclosure contained in the patent going beyond the
disclosure contained in the application filed.

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

SEC. 66. Form and Publication of Amendment. - An amendment or
correction of a patent shall be accomplished by a certificate of such amendment or
correction, authenticated by the seal of the Office and signed by the Director, which
certificate shall be attached to the patent. Notice of such amendment or correction
shall be published in the IPOPHL Gazette and copies of the patent kept or furnished
by the Office shall include a copy of the certificate of amendment or correction.

Chapter VI
CANCELLATION OF PATENTS AND SUBSTITUTION OF PATENTEE

SEC. 67. Cancellation of Patents. - 67.1. Any interested person may, upon
payment of the required fee, petition to cancel the patent or any claim thereof, or
arts of the claim, on any of the following grounds:

(a) That the invention is non-patentable pursuant to Section 28 of this Act;

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

(c) That the patent does not disclose the invention in a manner sufficiently
clear and complete for it to be carried out by any person skilled in the
art.

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

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

SEC. 69. Notice of Hearing. - Upon filing of a petition for cancellation, the
Director of the Bureau of Legal Affairs shall forthwith serve notice of the filing thereof
upon the patentee and all persons having grants or licenses, or any other right, title
or interest in and to the patent and the invention covered thereby, as appears of
record in the Office, and of notice of the date of hearing thereon on such persons
and the petitioner. Notice of the filing of the petition shall be published in the IPOPHL
Gazette.

SEC. 70. Committee of Three. - In cases involving highly technical issues,
on motion of any party, the Director of the Bureau of Legal Affairs may order that the
petition be heard and decided by a committee composed of the Director of the
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or expertise in the field of technology to which the patent sought to be cancelled
relates. The decision of the committee shall be appealable to the Director General.

SEC. 71. Cancellation of the Patent. - 71.1. if the Committee finds that a
case for cancellation has been proved, it shall order the patent or any specified claim
or claims thereof cancelled.

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

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

71.4. If the patent is amended under Section 71.2 hereof, the Bureau shall, at
the same time as it publishes the mention of the cancellation decision, publish the
abstract, representative claims and drawings indicating clearly what the amendments
consist of.

SEC. 72. Effect of Cancellation of Patent or Claim. - The rights conferred
by the patent or any specified claim or claims cancelled shall terminate. Notice of the
cancellation shall be published in the IPOPHL Gazette. Unless restrained by the
Director General, the decision or order to cancel by the Director of the Bureau of
Legal Affairs shall be immediately executory even pending appeal.

Chapter Vil
REMEDIES OF A PERSON WITH A RIGHT TO A PATENT

SEC. 73. Effect of Declaration as the True and Actual Inventor or a
Person Having the Right to a Patent. - A person declared by final order or
decision of the court or by the Bureau of Legal Affairs to be the true and actual
inventor or to have the right to the patent or to file a patent application may, within
three (3) months after the decision has become final and executory, notify the
Bureau of Patents of any or more applicable options, namely:

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

(b) File a new patent application in respect of the same invention:
Provided, That the filing or priority date of the old application is
retained;

(c)__ Request that the application be rejected; or

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

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In case of fraud, the court or Bureau of Legal Affairs may, when appropriate
and necessary, award actual and other damages in favor of the true and actual
inventor or person having the right to a patent.

SEC. 74, Remedy of the True and Actual Inventor or a Person Having the
Right to a Patent. - A person who was deprived of the patent or the right to file a
patent application may file with the court or with the Bureau of Legal Affairs, an
action for a declaration as the true and actual inventor or as a person having the
right to a patent or to file a patent application, or raise the same as a defense in an
action for patent infringement .

SEC . 75. Publication of the Court Order. - The court shall furnish the Office
a copy of the order or decision referred to in Sections 73 and 74 of this Act, which
shall be published in the IPOPHL 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.

SEC. 76, Time to File Action. - The actions indicated in Sections 73 and 74
of this Act may be filed at any time but not later than one (1) year from the date of
publication of the grant.

Chapter VIII
RIGHTS OF PATENTEES AND INFRINGEMENT OF PATENTS

SEC. 77. Rights Conferred by Patent. - 77.1. 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.

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

SEC. 78. Limitations of Patent Rights. - The owner of a patent has no right
to prevent third parties from performing, without his authorization, the acts referred to
in Section 77 of this Act in the following circumstances:

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

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Provided further, That the right to import the drugs and medicines contemplated in
this Section shall be available to any government agency or any private third party;

78.2. Where the act is done privately and on a non-commercial scale or for a
non-commercial purpose: Provided, That it does not significantly prejudice the
economic interests of the owner of the patent;

78.3. Where the act consists of making or using the invention exclusively for
experiments for scientific or educational purposes, and such other activities directly
related to such scientific or educational experimental use;

78.4. In the case of drugs and medicines, where the act includes testing,
using, making or selling the invention including any data related thereto, solely for
purposes reasonably related to the development and submission of information and
issuance of approvals by goverment regulatory agencies required under any law of
the Philippines or of another country that regulates the manufacture, construction,
use or sale of any product without prejudice to the protection of the data submitted
by the original patent holder from unfair commercial use as provided for under
Article 39.3 of the Agreement on Trade-Related Aspects of Intellectual Property
Rights (TRIPS Agreement) and the appropriate rules and regulations;

78.5. Where the act consists of the preparation for individual cases, in a
pharmacy or by a medical professional, of a medicine in accordance with a medical
prescription or acts concerning the medicine so prepared; and

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

‘SEC. 79. Prior User. - 79.1. Notwithstanding Section 78 of this Act, any prior
user, who, in good faith was using the invention or has undertaken serious
Preparations to use the invention in his enterprise or business, before the filing date
or priority date of the application on which a patent is granted, shall have the right to
continue the use thereof as envisaged in such preparations within the territory where
the patent produces its effect.

79.2. The right of the prior user may only be transferred or assigned together
with his enterprise or business, or with that part of his enterprise or business in which
the use or preparations for use have been made.

SEC. 80. Use of Invention by Government. - 80.1. A government agency or
third person authorized by the Government may exploit the invention even without
agreement of the patent owner under any of the following:

(a) The public interest, in particular, national security, nutrition, health or the

development of other sectors, as determined by the appropriate
agency of the government, so requires;

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A judicial or administrative body has determined that the manner of
exploitation, by the owner of the patent or his licensee, is anti-
competitive;

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

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

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

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

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In situations of national emergency or other circumstances of extreme
urgency as provided for under Section 80.1(c) hereof, the right holder
shall be notified as soon as reasonably practicable;

In the case of public non-commercial use of the patent by the patentee,
without satisfactory reason, as provided for under Section 80.1(d)
hereof, the right holder shall be informed promptly: Provided, That, the
Government or third person authorized by the Government, without
making a patent search, knows or has demonstrable ground to know
that a valid patent is or will be used by or for the Government;

If the demand for the patented article in the Philippines is not being met
to an adequate extent and on reasonable terms as provided for under
Section 80. 1(e) hereof , the right holder shall be informed promptly;

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

Such use shall be non-exclusive;

The right holder shall be paid adequate remuneration in the
circumstances of each case, taking into account the economic value of
the authorization; and

The existence of a national emergency or other circumstances of
extreme urgency, referred to under Section 80.1(c) hereof, shall be
subject to the determination of the President of the Philippines for the
purpose of determining the need for such use or other exploitation,
which shall be immediately executory.

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

No court, except the Supreme Court of the Philippines, shall issue any
temporary restraining order or preliminary injunction or such other provisional
remedies that will prevent its immediate execution.

80.4, The IPOPHL, in consultation with the appropriate government agencies,
shall issue the appropriate implementing rules and regulations for the use or
exploitation of patented inventions as contemplated in this Section within one
hundred twenty (120) days after the effectivity of this law.

SEC. 81. Extent of Protection and Interpretation of Claims. - 81.1. The
extent of protection conferred by the patent shall be determined by the claims, which
are to be interpreted in the light of the description and drawings.

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

SEC. 82. Civil Action for Infringement. - 82.1. The making, using, offering
for sale, selling, or importing a patented product or a product obtained directly or
indirectly from a patented process, or the use of a patented process without the
authorization of the patentee constitutes patent infringement: Provided, That, this
shall not apply to instances covered by Sections 78.1 and 78.4 (Limitations of Patent
Rights); Section 80 (Use of Invention by Government); Section 118 (f) (Compulsory
Licensing); and Section 119 (Procedures on Issuance of a Special Compulsory
License under the TRIPS Agreement) of this Act.

82.2. 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 the appropriate Regional Trial Court 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 or her rights.

82.3. 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.

82.4. 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.

82.5. 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; and

82.6. 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

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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. 83. Infringement Action by a Foreign National. - Any foreign national
or juridical entity who meets the requirements of Section 3 of this Act 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 itis licensed to do business in the Philippines under existing law.

SEC. 84, 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.

SEC. 85. 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. 86. 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. 87. Defenses in Action for Infringement. - In an action for
infringement, the defendant, in addition to other defenses available to him, may show
the invalidity of the patent, or any claim thereof, on any of the grounds on which a
petition of cancellation can be brought under Section 67 of this Act.

SEC. 88. Patent Found Invalid May be Cancelled. - in an action for
infringement, if the court shall find the patent or any claim to be invalid, it shall cancel
the same, and the Director of the Bureau 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 IPOPHL Gazette.

SEC. 89. Assessor in Infringement Action. - 89.1. 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.

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89.2. 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. 90. Criminal Action and Penalties. — independent of the civil and
administrative remedies, persons liable for infringement shall, upon conviction, be
penalized as follows:

(a) Repetition of Utility Model Infringement. ~ If infringement of utility model
is repeated by the infringer or by anyone in connivance with him after
finality of the judgment of the court against the infringer, the offender
shall suffer imprisonment for a period of not less than six (6) months
but not more than three (3) years or a fine of not less than Five
hundred thousand pesos (P 500,000.00) for individual offender, and
not less than One million pesos (P1,000,000.00) for a corporate
offender, or both, at the discretion of the court.

(b) Repetition of Patent Infringement. - If infringement of invention patents
or layout of integrated circuits is repeated by the infringer or by anyone
in connivance with him after finality of the judgment of the court against
the infringer, the offender shall suffer imprisonment for a period of not
less than three (3) years but not more than five (5) years or a fine of
not less than One Million pesos (P 1,000,000.00) but not more than
Five million pesos (P 5,000,000.00) if the infringer is an individual, and
a fine of not less than Five Million pesos (P 5,000,000.00) but not more
than Twenty million pesos (P 20,000,000.00) if the infringer is a
corporation, or both, at the discretion of the court.

Chapter IX
REGISTRATION OF UTILITY MODELS

SEC. 91. Applicability of Provisions Relating to Patents. - 91.1. Subject to
Section 92 of this Act, the provisions governing patents shall apply, mutatis
mutandis, to the registration of utility models.

91.2. Where the right to a patent conflicts with the right to a utility model
registration in the case referred to in Section 35 of this Act, the said provision shall
apply as if the word "patent" were replaced by the words “patent or utility model
registration.

SEC. 92. Special Provisions Relating to Utility Models. -92.1. An invention
qualifies for registration as a utility model if it is new and industrially applicable.
Section 27 of this Act, "Patentable Inventions", shall apply except the reference to
inventive step as a condition of protection.

92.2. Sections 49 to 55 of this Act shall not apply in the case of applications
for registration of a utility model: Provided, That applications for registration shall be
published in the IPOPHL Gazette. Within thirty (30) days from publication, third
parties may file with the Director a sworn adverse information citing grounds or
information that the utility model is non-registrable. The Director shall decide whether

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or not to register the utility model application based on information or registrability
report that the application does not comply with Section 91 of this Act.

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

92.4. In proceedings under Sections 67 to 70 of this Act, the utility model
registration shall be cancelled on any of the following grounds:

(a) That the claimed invention does not qualify for registration as a utility
model and does not meet the requirements of registrability, in particular
having regard to Section 92.1 and Sections 28, 29, 30 and 33 of this
Act;

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

(©) That any drawing which is necessary for the understanding of the
invention has not been furnished; or

(d) That the owner of the utility model registration is not the inventor or his
successor in title.

92.5. Any utility model registrant, or anyone possessing any right, title or
interest in and to the utility model invention, whose rights have been infringed, may
bring a civil action before the appropriate Regional Trail Court, 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 or her rights:
Provided, That the complaint shall include a registrability report.

SEC. 93. Conversion of Patent Applications or Applications for Utility
Model Registration. - 93.1. At any time before the grant of a patent, an applicant
may, upon payment of the prescribed fee, convert his application into an application
for registration of a utility model, which shall be accorded the filing date of the initial
application. An application may be converted only once.

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

SEC. 94. Parallel Applications. — 94.1, An applicant may file two (2)
applications for the same subject, one for utility model registration and the other for
the grant of an invention patent, whether simultaneously or consecutively.

94.2. If the utility model application is granted registration, a certificate shall
be issued to the applicant and it shall be protected as a registered utility model. The
invention application shall be deemed withdrawn unless the applicant confirms and
proceeds with the invention application within fifteen (15) days from the utility model
registration.

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94.3. If the applicant confirms and proceeds with the invention patent
application, the utility model registration shall be deemed cancelled upon the date of
grant of the corresponding patent application. If the patent application is denied, the
utility model registration remains valid unless the denial is due to the lack of novelty
of the invention.

94.4. There shall only be one protection granted at any given time and in case
of infringement, only one cause of action shall be invoked regardless of the presence
of two (2) applications.

94.5. For applications involving drugs and medicines subject of parallel
applications, the early working provision under Section 78.4 of this Act shall not be
prejudiced.

Chapter X
LAYOUT-DESIGNS (TOPOGRAPHIES) OF INTEGRATED CIRCUITS

SEC. 95. Definition of Terms. - 95.1. An Integrated Circuit is 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 or on
a piece of material, and which is intended to perform an electronic function; and

95.2. A Layout-Design is synonymous with ‘Topography’ and is 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.

SEC. 96. Conditions for Protection. — 96.1 Only layout-designs of integrated
circuits that are original shall benefit from protection under this Act. A layout-design
shall be considered original if itis 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,

96.2 A tayoutdesign consisting of a combination of elements and
interconnections that are commonplace shall be protected only if the combination,
taken as a whole, is original.

SEC. 97. Contents of the Application. - 97.1. Every application for
registration of a layout-design shall contain:

(a) Arequest for registration of the layout-design;
(b) Information identifying the applicant;

(©) Anindication of the kind of article of manufacture or handicraft to which
the layout-design shall be applied;

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(4) A representation of the article of manufacture or handicraft by way of
drawings, photographs or other adequate graphic representation 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 layout-design
registration.

97.2. The application may be accompanied by a specimen of the article
embodying the layout-design and shall be subject to the payment of the prescribed
fee.

SEC. 98. Formality Examination. — 98.1. The Office shall accord as the filing
date the date of receipt of the application containing indications allowing the identity
of the applicant to be established and a representation of the article embodying the
layout-design or a pictorial representation thereof.

98.2. If the application does not meet these requirements, the filing date
should be that date when all the elements specified in Section 97 of this Act are filed
or the mistakes corrected. Otherwise, if the requirements are not complied within the
prescribed period, the application shall be considered withdrawn.

98.3. After the conduct of a formality examination and upon full compliance
with the prescribed formality requirements, the application for registration shall be
published in the IPOPHL Gazette. Within thirty (30) days from the date of publication,
third parties may file with the Director adverse information citing grounds or
information that the design is not new or not registrable. The Director shall decide
whether or not to grant the layout-design registration based on such information.

‘An applicant has the option to file a request for deferred publication
simultaneously with the filing of the application or at any time prior to publication
date. The maximum period allowed for the deferred publication of a layout-design
application shall be thirty (30) months from the filing date or priority date of the
application. In case the request for the deferred publication is made after the filing of
the application, the allowable period for the deferred publication shall be the
Temaining time from the allowed thirty (30) months deferred publication period. The
applicant or applicants may request for a specific time for the Office to publish the
application: Provided, That it does not go beyond the allowed deferment period of
thirty (30) months.

SEC. 99. Registration. — 99.1. The conditions referred to in Section 96 of this
Act are deemed fulfilled in the absence of adverse information or where an adverse
information was resolved by the Director in favor of the applicant, the Director shall
issue the registration of the layout-design; otherwise, it shall refuse the application.

The Director may decide whether or not to register the layout-design
application based on information or registrability report that the application does not
comply with Section 96 of this Act.

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99.2. The form and contents of a layout-design certificate shall be established
by the Regulations: Provided, That the name and address of the creator shall be
mentioned in every case.

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

99.4. The Office shall record in the register any change in the identity of the
proprietor of the layout-design or its 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.

99.5. Anyone may inspect the Register and the files of registered layout-
designs including the files of cancellation proceedings.

SEC. 100. Term of Layout-Design. - 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 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.

SEC. 101. Application of Other Sections and Chapters. - 101.1. The
following provisions relating to patents shall apply mutatis mutandis to layout-design
of integrated circuits registration:

Section 34 - Right to A Patent;
Section 35- First to File Rule;
Section 36- Inventions Created Pursuant to a Commission;

Section 38.1(g)- Appointment of Agent or Representative;

Section 62- ‘Surrender of Patent;
‘Section 63- Correction of Mistakes of Office;
Section 64- Correction of Mistakes in the Applicatior

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Section 65- Changes in Patent;

Section 66- Form and Publication of Amendment;
Chapter VII- Remedies of a Person with a Right to Patent;
Chapter Vill — Rights of Patentees and Infringement of Patents:

Provided, That the lay-out design rights and limitation of
lay-out design rights stipulated hereunder shall govern;

Part Ill, Chapter Ill- Compulsory Licensing; and

Chapter XI — Assignment and Transmission of Rights

101.2. Rights Conferred to the Owner of a Layout-Design Registration, - The
‘owner of a layout-design registration shall enjoy the following rights:

fa)

(b)

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

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.

101.3. 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:

(a)

(b)

(©)

(a)

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

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

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

In respect of an integrated circuit where the person performing or
‘ordering such an act did not know and had no reasonable ground to
know when acquiring the integrated circuit or the article incorporating
such an integrated circuit, that it incorporated an unlawfully reproduced
layout- design: Provided, however, That after the time that such person
has received sufficient notice that the layout-design was unlawfully
reproduced, that person may perform any of the said acts only with
respect to the stock on hand or ordered before such time and shall be

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liable to pay to the right holder a sum equivalent to at least 5% of net
sales or such other reasonable royalty as would be payable under a
freely negotiated license in respect of such layout-design; or

{e) Where the act is performed in respect of an identical layout-design
which is original and has been created independently by a third party.

SEC. 102. Cancellation of Layout-Design Registration. - Any interested
person may petition that the registration of a layout-design be cancelled on the
ground that:

(1) the layout-design is not protectable under this Act;
(2) the right holder is not entitled to protection under this Act; or

(3) 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
IPOPHL. Reference to all cancelled layout-design registration shall be published in
the IPOPHL Gazette.

Chapter XI
ASSIGNMENT AND TRANSMISSION OF RIGHTS

SEC. 103. Transmission of Rights. - 103.1. 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 New Civil Code of the Philippines.

103.2. 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.

SEC. 104, Assignment of Inventions. - 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.

SEC. 105. Form of Assignment. - The assignment must be in writing,
acknowledged before a notary public or other officer authorized to administer oath or
perform notarial acts, and certified under the hand and official seal of the notary or
such other officer.

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SEC. 106. Recording. - 106.1. The Office shall record assignments, licenses
and other instruments relating to the transmission of any right, title or interest in and
to inventions, and patents or application for patents or inventions to which they
relate, which are presented in due form to the Office for registration, in books and
records kept for the purpose. The original documents together with a signed
duplicate thereof shall be filed, and the contents thereof should be kept confidential.
If the original is not available, an authenticated copy thereof in duplicate may be
filed. Upon recording, the Office shall retain the duplicate, return the original or the
authenticated copy to the party who filed the same and notice of the recording shall
be published in the IPOPHL Gazette.

106.2. Such instruments shall be void as against any subsequent purchaser
‘or mortgagee for valuable consideration and without notice, unless, it is so recorded
in the Office, within three (3) months from the date of said instrument, or prior to the
subsequent purchase or mortgage.

SEC. 107. Rights of Joint Owners. - If two (2) or more persons jointly own a
patent and the invention covered thereby, either by the issuance of the patent in their
joint favor or by reason of the assignment of an undivided share in the patent and
invention or by reason of the succession in title to such share, each of the joint
owners shall be entitled to personally make, use, sell, or import the invention for his
own profit: Provided however, That neither of the joint owners shall be entitled to
grant licenses or to assign his right, title or interest or part thereof without the
consent of the other owner or owners, or without proportionally dividing the proceeds
with such other owner or owners.

PART Ill
INNOVATION SUPPORT AND LICENSING

Chapter |
GENERAL PROVISIONS

SEC. 108. Definition of Terms. — As used in Part Ill:

(a) “Bureau” means the Bureau of Innovation Support and Business
Development;

(b) “Commercialization” as a form of utilization, means the process of
deriving economic gain from a technology, such as but not limited to
the creation of a spin-off company, or through licensing, or the sale of
the technology or intellectual property rights;

(c) “Licensing” means the act of engaging in a contract or agreement
wherein an intellectual property rights owner authorizes another to use
such rights in exchange for an agreed payment, fee, or royalty;

(4) "Neutral Country’ means a country other than the Philippines without
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{e) “Utilization” means the use of intellectual property or intellectual
property rights, whether or not for commercial use.

SEC. 109. Supporting Innovation. - The Bureau shall implement policies
and programs to promote and support innovation through, but not limited to the
following:

109.1. Capacity building on intellectual property management and
commercialization and valuation of intellectual property;

109.2. Assistance to inventors and micro, small, and medium enterprises in
getting support for research and development, management, and commercialization
of their intellectual property; and

109.3. Establishment of network in research and development institutions,
‘state universities and colleges, other higher educational institutions, technical-
vocational institutions, and other relevant public or private institutions.

Chapter II
VOLUNTARY LICENSING

SEC. 110. Voluntary License Contract. - 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, or will
substantially prevent, restrict or lessen competition in the market and have adverse
effect on trade, all technology transfer arrangements shall comply with the provisions
of this Chapter.

SEC. 111. Jurisdiction to Settle Disputes on Royalties, - The Director of
the Bureau of Innovation Support and Business Development shall exercise quasi-
judicial jurisdiction in the settlement of disputes between parties to a technology
transfer arrangement arising from technology transfer payments, including the fixing
of the appropriate amount or rate of royalty.

SEC. 112. Prohibited Clauses. - Except in cases under Section 116 of this
Act, the following provisions are prohibited from inclusion in Technology Transfer
Arrangements:

(2) 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, except if these will be sourced locally when
comparable alternatives are locally available and such imposition is
essential for maintaining the quality of the products or services
produced or rendered under the agreements;

(b) Those pursuant to which the licensor reserves the right to fix the sale

or resale prices of the products manufactured on the basis of the
license;

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(c)

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

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

Those that establish a full or partial purchase option in favor of the
licensor;

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

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

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

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;

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

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

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;

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;

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

Other clauses with equivalent effects, such as those which impose
upon the licensee unreasonable post-termination non-compete
covenants surviving more than one (1) year after termination of the
technology transfer arrangement.

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The Bureau's findings and decision on the above may serve as prima facie
evidence before the Philippine Competition Commission that the subject technology
transfer arrangement does not violate Philippine competition laws.

SEC, 113, Mandatory Provisions. - The following provisions shall be
included in voluntary license contracts:

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

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

(c) In the event the technology transfer arrangement shall provide for
arbitration, the venue of arbitration shall be the Philippines or any
neutral country; and

(4) The Philippine taxes on all payments relating to the technology transfer
arrangement shall be borne by the licensor.

SEC. 114, Rights of Licensor. - In the absence of any provision to the
contrary in the technology transfer arrangement, the grant of a license shall not
prevent the licensor from granting further licenses to third person nor from exploiting
the subject matter of the technology transfer arrangement himself.

SEC. 115. 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.

SEC. 116. Exceptional Cases. - In exceptional or meritorious cases where
substantial benefits will accrue to the economy, such as high technology content,
increase in foreign exchange earings, employment generation, regional dispersal of
industries or substitution with or use of local raw materials, or in the case of
companies with pioneer status registered with the Board of Investments, exemption
from any of the above requirements may be allowed by the Bureau of Innovation
Support and Business Development after evaluation thereof on a case by case
basis.

SEC. 117. Non-Registration with the Bureau of Innovation Support and
Business Development. - Technology transfer arrangements that conform with the
provisions of Sections 112 and 113 of this Act need not be registered with the
Bureau of Innovation Support and Business Development.

Non-conformance with any of the provisions of Sections 112 and 113 of this

Act, however, shall automatically render the technology transfer arrangement
unenforceable, unless said technology transfer arrangement is approved and

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registered with the Bureau of Innovation Support and Business Development under
the provisions of Section 116 of this Act on exceptional cases.

Chapter Ill
COMPULSORY LICENSING

SEC. 118. Grounds for Compulsory Licensing. - The Director General of
the IPOPHL 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:

(a) _ National emergency or other circumstances of extreme urgency;

(b) Where the public interest, in particular, national security, nutrition,
health or the development of other vital sectors of the national
economy as determined by the appropriate agency of the Government,
so requires;

(©) 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;

(d) In case of public non-commercial use of the patent by the patentee,
without satisfactory reason;

(e) _ If the patented invention is not being worked in the Philippines on a
commercial scale, although capable of being worked, without
satisfactory reason: Provided, That the importation of the patented
article shall constitute working or using the patent; or.

(f) When 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 DOH.

SEC. 119, Procedures on Issuance of a Special Compulsory License
under the TRIPS Agreement. - 119.1. The Director General of the IPOPHL, upon
the written recommendation of the Secretary of the DOH, 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 the license to exercise reasonable measures to
prevent the re-exportation of the products imported under this provision.

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

exception to Sections 125 (d) and 125 (f) of this Act and shall be immediately
executory.

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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.

119.2. 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.

119.3. 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 73.1 and Section 75 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.

SEC. 120. Requirement to Obtain a License on Reasonable Commercial
Terms. - 120.1. 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.

120.2. The requirement under Section 120.1 hereof shall not apply in any of
the following cases:

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

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

(c) In cases of public non-commercial use; or

(d) 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 DOH.

120.3. In situations of national emergency or other circumstances of extreme
urgency, the right holder shall be notified as soon as reasonably practicable.

120.4. 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.

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120.5. 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 DOH, the right holder shall be informed promptly.

SEC. 121. Compulsory Licensing of Patents Involving Semi-Conductor
Technology. - In the case of compulsory licensing of patents involving semi-
conductor technology, the license may only be granted in case of public non-
commercial use or to remedy a practice determined after judicial or administrative
process to be anti-competitive.

SEC. 122. 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:

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

122.2. 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;

122.3, The use authorized in respect of the first patent shall be non-
assignable except with the assignment of the second patent; and

122.4. The terms and conditions of Sections 120, 121, and 123 to 125 of this
Act are complied with.

SEC. 123. Form and Contents of Petition. - The petition for compulsory
licensing must be in writing, verified by the petitioner and accompanied by payment
of the required filing fee. It shall contain the name and address of the petitioner as
well as those of the respondents, the number and date of issue of the patent in
connection with which compulsory license is sought, the name of the patentee, the
title of the invention, the statutory grounds upon which compulsory license is sought,
the ultimate facts constituting the petitioner's cause of action, and the relief prayed
for.

SEC. 124. Notice of Hearing. - 124.1. Upon filing of a petition, the Director
General 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 38.1(g) of this Act shall
be bound to accept service of notice of the filing of the petition within the meaning of
this Section.

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124.2. In every case, the notice shall be published by the said Office in a
newspaper of general circulation, once a week for three (3) consecutive weeks and
once in the IPOPHL Gazette at applicant's expense.

SEC. 125. Terms and Conditions of Compulsory License. - The basic
terms and conditions including the rate of royalties of a compulsory license shall be
fixed by the Director General subject to the following conditions:

(a)

()
(c)

(d)

(e)

)

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

The license shall be non-exclusive;

The license shall be non-assignable, except with that part of the
enterprise or business with which the invention is being exploited;

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.

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

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

SEC, 126. Amendment, Cancellation, Surrender of Compulsory License.
— 126.1. Upon the request of the patentee or the licensee, the Director General may
amend the decision granting the compulsory license, upon proper showing of new
facts or circumstances justifying such amendment.

126.2. Upon the request of the patentee, the Director General may cancel the
compulsory license:

(a)

()

()

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

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

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

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

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

SEC. 127. Licensee’s Exemption from Liability. - Any person who works a
patented product, substance or process under a license granted under this Chapter,
shall be free from any liability for infringement: Provided however, That in the case of
voluntary licensing, no collusion with the licensor is proven. This is without prejudice
to the right of the rightful owner of the patent to recover from the licensor whatever
he may have received as royalties under the license.

PART IV.
THE LAW ON TRADEMARKS, SERVICE MARKS AND TRADE NAMES

Chapter |
GENERAL PROVISIONS

SEC. 128. Definitions. - As used in Part IV:
(a) "Bureau" means the Bureau of Trademarks;

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

(©) “Certification mark” means any sign, used or intended for use in
commerce with the owner's permission by someone other than its
owner, to certify regional or other geographic origin, material, mode of
manufacture, quality, accuracy, or other characteristics of someone's
goods or services, or that the work or labor on goods or services was
performed by members of a group or associations;

(4) "Director" means the Director of the Bureau of Trademarks;

(e) "Examiner" means the trademark examiner;

(f) "Mark" means any sign or any combination of signs as may be
prescribed by the Regulations, capable of distinguishing the goods
(trademark) or services (service mark) of an enterprise and may
include a stamped or marked container of goods;

(9) “Trade name" means the name or designation identifying or
distinguishing an enterprise; and

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(h)

“Regulations” mean the Rules of Practice in Trademarks and Service
Marks formulated by the Director and approved by the Director
General.

SEC. 129. How Marks are Acquired. - The rights in a mark shall be acquired
through registration made validly in accordance with the provisions of this law.

SEC. 130. Registrability. - 130.1. A mark cannot be registered if it:

(a)

(b)

(c)

(@)

(e)

Consists of matter which:

(1) is deceptive or scandalous; or

(2) may disparage or falsely suggest a connection with living or
dead persons, institutions, entities, beliefs, customs, values or
national symbols, national identity, heritage or patrimony; or

(3) brings any of the foregoing into contempt, disrespect, or
disrepute;

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

Consists of a name, portrait or signature identifying a particular living
individual except by his written consent, or the name, signature, or
portrait of a deceased President of the Philippines, during the life of the
surviving spouse, if any, except by written consent of the latter;

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

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

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rather than of the public at large, including knowledge in the Philippines
which has been obtained as a result of the promotion of the mark;

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

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

(h) Consists exclusively of signs or of indications that have become
customary or usual to designate the goods or services in everyday
language or in bona fide and established trade practice;

(i) Consists exclusively of signs or of indications that may serve in trade to
designate the kind, quality, quantity, intended purpose, value,
geographical origin, subject matter, time or production of the goods or
rendering of the services, or other characteristics of the goods or
services, except when the application for registration is for a
geographical indication either as a collective or certification mark.

() Consists of shapes that may be necessitated by technical factors or by
the nature of the goods themselves or factors that affect their intrinsic
value;

(K)__ Consists of color alone, unless defined by a given form;
() Lacks distinctiveness;

(m) impairs or dilutes the distinctiveness, or harms the reputation of a well-
known mark, as declared by competent authority, whether registered or
not; or

(n) Is contrary to public order or public policy.

130.2. For the purpose of declaring a mark well-known as provided for under
Paragraphs (e) and (m) hereof, the Director General, Director of the Bureau of Legal
Affairs, Director of the Bureau of Trademarks and judicial authorities are considered
competent authorities in relation to their respective functions or jurisdictions. The
Adjudication Officers are also considered competent authorities if an issue of well-
known status of a mark is raised before them,

130.3. As regards signs or devices mentioned in Section 130.1 (i), (k), and (I)
hereof or those where the shapes of the goods themselves or portion thereof, their
packaging, or containers are not necessitated by technical factors or those factors
only affect their intrinsic value, nothing shall prevent the registration of any such sign
or device which has become distinctive in relation to the goods for which registration
is requested as a result of the use that have been made of it in commerce in the
Philippines. The Office may accept as prima facie evidence that the mark has
become distinctive, as used in connection with the applicant's goods or services in
commerce, proof of substantially exclusive and continuous use thereof by the

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applicant in commerce in the Philippines for three (3) years before the date on which
the claim of distinctiveness is made.

130.4. The nature of the goods to which the mark is applied will not constitute
an obstacle to registration.

Chapter II
APPLICATION

SEC. 131. Requirements of Application. - 131.1. The application for the
registration of the mark shall be in Filipino or in English and shall contain the

following:

(a)

(b)

()

(@)

(e)

0)

(9)

(h)
0)

A request for registration;

The name and address of the applicant;

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

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

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

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

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

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

(3) Where available, the application number of the earlier
applicatio

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;

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

One or more reproductions of the mark or series marks, as prescribed
in the Regulations;

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() _ Atranstiteration or translation of the mark or of some parts of the mark,
as prescribed in the Regulations;

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

() A signature or other self-identification of the applicant or his
representative

131.2. To maintain the application or registration of the mark, it must be used
on goods or services covered in the registration. For this purpose, the applicant or
registrant shall file a declaration of actual use of the mark with evidence to that effect
within:

(a) Three (3) years and six (6) months from the filing date of the
application;

(b) One (1) year from the fifth (5") anniversary of the registration;
(c) One (1) year from date of each renewal; and
(d) One (1) year from the fith (5") anniversary of each renewal.

Otherwise, the application shall be refused or the mark shall be removed from
the Register by the Director.

SEC. 132. Representation; Address for Service. - If the applicant is not
domiciled or has no real and effective commercial establishment in the Philippines,
he shall designate by a written document filed in the Office, the name and address of
a Philippine resident who may be served notices or process in proceedings affecting
the mark. Such notices or services may be served upon the person so designated by
leaving a copy thereof at the address specified in the last designation filed. If the
person so designated cannot be found at the address given in the last designation,
‘such notice or process may be served upon the Director.

SEC. 133. Disclaimers. - The Office may allow or require the applicant to
disclaim an unregistrable component of an otherwise registrable mark but such
disclaimer shall not prejudice or affect the applicant's or owner's rights then existing
or thereafter arising in the disclaimed matter, nor such shall disclaimer prejudice or
affect the applicant's or owner's right on another application of later date if the
disclaimed matter became distinctive of the applicant's or owner's goods, business
or services.

SEC. 134, Filing Date. - 134.1. Requirements. - The filing date of an application
shall be the date on which the Office received the following indications and elements
in English or Filipino:

(a) _ Anexpress indication that the registration of a mark is sought;

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(b) The identity of the applicant;

(c) Contact details of the applicant or his representative, if any;

(¢) — Arreproduction of the mark to be registered; and

(e) The list of the goods or services covered by the mark to be registered.

134.2. Payment of the required filing fee on or immediately after the date of
filing of the above requirements shall confirm the filing date and application number
accorded to the application.

SEC. 135. Single Registration for Goods or Services. - Where goods or
services belonging to several classes of the Nice Classification have been included
in one (1) application, such an application shall result in one registration.

SEC. 136. Division of Application. - Any application referring to several
goods or services, hereafter referred to as the “initial application," may be divided by
the applicant into two (2) or more applications, hereafter referred to as the “divisional
applications," by distributing among the latter the goods or services referred to in the
initial application. The divisional applications shall preserve the filing date of the
initial application or the benefit of the right of priority.

SEC. 137. Signature and Other Means of Self-Identification. -137.1.
Where a signature is required, the Office shall accept:

(a) Ahand-written signature; or

(b) The use of other forms of signature, such as an electronic, digital,
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.

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

137.3, No attestation, notarization, authentication, legalization or other
certification of any signature or other means of seff-identification referred to in the
preceding paragraphs, shall be required. Where the signature concems the
‘surrender of a registration, the request must be notarized and if notarized in another
country, apostilled.

SEC. 138. Priority Right. - 138.1. An application for registration of a mark
filed in the Philippines by a person referred to in Section 3 of this Act, and who
previously duly filed an application for registration of the same mark in one of those
countries, shall be considered as filed as of the day the application was first filed in
the foreign country: Provided, That the application in the Philippines is filed within six

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(6) months from the date on which the application was first filed in the foreign
country.

138.2. 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 130.1(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.

138.3. In like manner and subject to the same conditions and requirements,
the right provided under this Section may be based upon a subsequent regularly filed
application in the same foreign country: Provided, That any foreign application filed
prior to such subsequent application has been withdrawn, abandoned, or otherwise
disposed of, without having been laid open to public inspection and without leaving
any rights outstanding, and has not served, nor thereafter shall serve, as a basis for
claiming a right of priority.

Chapter Ill
TRADEMARK REGISTRATION

SEC. 139. Application Number and Filing Date. — 139.1. The Office shall
examine whether the application satisfies the formalities and substantive
requirements for the grant of registration. If the application does not satisfy the
registration requirements, the applicant shall be given the opportunity to complete or
correct the application as required, otherwise, the application shall be considered
abandoned.

139.2. An abandoned application may be revived as a pending application
upon good cause shown and the payment of the required fee.

SEC. 140. Examination and Publication. — 140.1. Once the application
meets the filing requirements of Section 134 of this Act, the Office shall examine
whether the application meets the requirements of Section 131 hereof and the mark
as defined in Section 128 hereof is registrable under Section 130 of this Act.

140.2, Where the Office finds that the conditions referred to in Section 140.1
hereof are fulfilled, it shall, upon payment of the prescribed fee, forthwith cause the
application, as filed, to be published in the prescribed manner.

140.3. If after the examination, the applicant is not entitled to registration for
any reason, the Office shall advise the applicant thereof and the reasons therefor.
The applicant shall have a period of four (4) months in which to reply or amend his
application, which shall then be re- examined. The Regulations shall determine the
procedure for the re- examination or revival of an application as well as the appeal to
the Director from any final action by the Examiner.


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140.4. An abandoned application may be revived as a pending application
within three (3) months from the date of abandonment, upon good cause shown and
the payment of the required fee.

140.5. The final decision of refusal of the Director shall be appealable to the
Director General in accordance with the procedure fixed by the Regulations.

SEC. 141. Opposition. - Any person who believes that he would be damaged
by the registration of a mark may, upon payment of the required fee and within thirty
(30) days after the publication of the application, file with the Bureau of Legal Affairs
an opposition thereto. For good cause shown and upon payment of the required
surcharge, the time for filing an opposition may be extended by the Director of the
Bureau of Legal Affairs, who shall notify the applicant of such extension.

SEC. 142, Notice and Hearing. - Upon the filing of an opposition, the Office
shall serve notice of the filing on the applicant, and of the date of the hearing thereof
upon the applicant and the oppositor and all other persons having any right, title or
interest in the mark covered by the application, as appear of record in the Office.

SEC. 143. Remand of Application to the Examiner. - The Examiner may
again exercise jurisdiction over the application upon remand of the Director on the
ground of newly discovered information or objection to the registration of the mark
prior to the registration thereof and subject to the jurisdiction of the Bureau of Legal
Affairs. After remand of an application, the amendment(s) recommended by the
Examiner, if any, may be approved by the Director and may be made without
withdrawing the allowance, The Examiner may likewise issue a subsequent action
on the basis of the newly discovered information or objection.

SEC. 144. Issuance and Publication of Certificate. - When the period for
filing the opposition or appeal has expired or the decision or order granting the
application has become final and executory, and upon payment by the applicant of
the required fee, the Office shall issue the certificate of registration, with notice
thereof published in the IPOPHL Gazette.

SEC. 145. Registration of Mark and Issuance of a Certificate to the
Owner or His Assignee. - 145.1. The Office shall maintain a Register in which shall
be registered marks, numbered in the order of their registration, and all transactions
in respect of each mark, required to be recorded by virtue of this law.

145.2. The registration of a mark shall include a reproduction of the mark and
shall mention: its number; the name and address of the registered owner and, if the
registered owner's address is outside the country, his address for service within the
country; the dates of application and registration; if priority is claimed, an indication
of this fact, and the number, date and country of the application, basis of the priority
claims; the list of goods or services in respect of which registration has been
granted, with the indication of the corresponding class or classes; and such other
data as the Regulations may prescribe from time to time.

145.3. A certificate of registration of a mark may be issued to the assignee of
the applicant: Provided, That the assignment is recorded in the Office. In case of a

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change of ownership, the Office shall at the written request signed by the owner, or
his representative, or by the new owner, or his representative and upon a proper
showing and the payment of the prescribed fee, issue to such assignee a new
certificate of registration of the said mark in the name of such assignee, and for the
unexpired part of the original period.

145.4. The Office shall record any change of address, or address for service,
which shall be notified to it by the registered owner.

145.5. In the absence of any provision to the contrary in this Act,
communications to be made to the registered owner by virtue of this Act shall be
sent to him at his last recorded address and, at the same, at his last recorded
address for service.

SEC.146, Certificates of Registration. - A certificate of registration of a mark
shall be prima facie evidence of the validity of the registration, the registrant's
ownership of the mark, and of the registrant's exclusive right to use the same in
connection with the goods or services and those that are related thereto specified in
the certificate.

SEC. 147. Publication of Registered Marks; Inspection of Register. -
147.1. The Office shall publish, in the form and within the period fixed by the
Regulations, the mark registered, in the order of their registration, reproducing all the
particulars referred to in Section 145.2 of this Act.

147.2 Notwithstanding the provisions of Republic Act No. 10173, otherwise
known as the “Data Privacy Act of 2012", and in accordance with the provisions of
Executive Order No. 2, series of 2016, entitled “Operationalizing in the Executive
Branch the People’s Constitutional Right to Information and the State Policies to Full
Public Disclosure and Transparency in the Public Service and Providing Guidelines
Therefor’, all official documents pertaining to a registered mark, including the
application, prosecution history and declaration of actual use, shall be open to the
public for inspection upon request and payment of the prescribed fee.

SEC. 148. Cancellation upon Application by Registrant; Amendment or
Disclaimer of Registration. - Upon application of the registrant, the Office may
permit any registration to be surrendered for cancellation, and upon cancellation the
appropriate entry shall be made in the records of the Office. Upon application of the
registrant and payment of the prescribed fee, the Office for good cause may permit
any registration to be amended or to be disclaimed in part.

SEC. 149. Sealed and Certified Copies as Evidence. - Copies of any
records, books, papers, or drawings belonging to the Office relating to marks, and
copies of registrations, when authenticated by the seal of the Office and certified by
the Director of the Bureau of Trademarks or in his name by an employee of the
Office duly authorized by said Director, shall be evidence in all cases wherein the
originals would be evidence; and any person who applies and pays the prescribed
fee shall secure such copies.


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SEC. 150. Correction of Mistakes Made by the Office. - Certificate of
trademark registration may be cancelled or corrected in accordance with the
Regulations. All certificates of registration heretofore issued in accordance with the
Regulations and the registration to which they are attached shall have the same
force and effect as if such certificates and their issuance had been authorized by this
Act

SEC. 151. Correction of Mistake in the Trademark Registrations. - Upon
request of any interested person and payment of the prescribed fee, the Office is
authorized to correct any formal or clerical mistake in trademark registrations not
incurred through the fault of the Office.

SEC. 152. Classification of Goods and Services. - 152.1. Each registration,
and any publication of the Office which concerns an application or registration
effected by the Office shall indicate the goods or services by their names, grouped
according to the classes of the Nice Classification, and each group shall be
preceded by the number of the class of that Classification to which that group of
goods or services belongs, presented in the order of the classes of the said
Classification.

152.2. Goods or services that are in the same class are not necessarily
similar. On the other hand, goods or services that are in different classes are not
necessarily dissimilar.

SEC. 153. Duration. - A certificate of registration shall remain in force for ten
(10) years from the date of registration.

In case a motion for extension for the period to file an opposition is granted by
the Bureau of Legal Affairs but no opposition is filed, the mark is deemed registered
the day following the expiration of the publication period. When an opposition is filed,
a mark shall be considered registered on the date the decision or final order giving
due course to the application becomes final and executory.

SEC. 154. Renewal. — A certificate of registration may be renewed for periods
of ten (10) years at its expiration upon payment of the prescribed fee and upon filing
of a request in accordance with the Rules promulgated by the Office.

SEC. 155. Rights Conferred. - 155.1. Except in cases of importation of drugs
and medicines allowed under Section 78.1 of this Act and of off- patent drugs and
medicines, the owner of a registered mark shall have the exclusive right to prevent,
prohibit, and restrain all third parties not having the owner's consent from using in
the course of trade identical or similar signs or containers for goods or services
which are identical or similar to those in respect of which the trademark is registered
where such use would result in a likelihood of confusion. In case of the use of an
identical sign for identical goods or services, a likelihood of confusion shall be
presumed.

There shall be no infringement of trademarks or tradenames of imported or
sold patented drugs and medicines allowed under Section 78.1 of this Act, as well as
imported or sold off-patent drugs and medicines: Provided, That said drugs and

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medicines bear the registered marks that have not been tampered, unlawfully
modified, or infringed upon, under Section 163 of this Act.

155.2. The exclusive right of the owner of a well-known mark defined in
Section 130.1(e) of this Act 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.

SEC. 156. Lawful Use of Indications by Third Parties. 156.1. Use of
Indications of Third Parties for Purposes Other than Use of the Mark; Descriptive
Fair Use. Registration of the mark shall not confer on the registered owner the right
to preclude third parties from using bona fide their names, addresses, pseudonyms,
a geographical name, or exact indications concerning the kind, quality, quantity,
destination, value, place of origin, or time of production or of supply, of their goods or
services: Provided, that such use is confined to the purposes of mere identification or
information and cannot mislead the public as to the source of the goods or services.

156.2. Other Use of the Mark; Nominative Fair Use. The registered owner of a
protectable trademark cannot preclude third parties from nominative use of a
registered mark: Provided, That the following requisites occur:

(a) The goods or service of the third party is not readily identifiable without
the use of indication;

(b) That only so much of the registered trademark as is reasonably
necessary to identify the product or service is used, and

(©) That such use does not suggest sponsorship, endorsement, or
affiliation with the trademark owner.

SEC. 157. Assignment and Transfer of Application and Registration. -
157.1. An application for registration of a mark, or its registration, may be assigned
or transferred with or without the transfer of the business using the mark.

157.2. Such assignment or transfer shall, however, be null and void if it is
liable to mislead the public, particularly as regards the nature, source, manufacturing
process, characteristics, or suitability for their purpose, of the goods or services to
which the mark is applied.

157.3. The assignment of the application for registration of a mark, or of its
registration, shall be in writing and require the signatures of the contracting parties.
Transfers by mergers or other forms of succession may be made by any document
supporting such transfer.

157.4. Assignments and transfers of registration of marks shall be recorded at
the Office on payment of the prescribed fee; assignment and transfers of
applications for registration shall, on payment of the same fee, be provisionally

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recorded, and the mark, when registered, shall be in the name of the assignee or
transferee.

187.5. Assignments and transfers shall have no effect against third parties
until they are recorded at the Office.

SEC. 158. License Contracts. - 158.1. Any license contract concerning the
registration of a mark, or an application therefor, shall provide for effective control by
the licensor of the quality of the goods or services of the licensee in connection with
which the mark is used. If the license contract does not provide for such quality
control, or if such quality control is not effectively carried out, the license contract
‘shall not be valid.

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

SEC.159. Cancellation of Registration. - 159.1. A petition to cancel a
registration of a mark under this Act may be filed with the Bureau of Legal Affairs by
any interested person at any time:

(a) _ If the registration was contrary to the provisions of this Act;
(b) If the registration was obtained fraudulently;

(c) If the registration was obtained in bad faith;

(d) __ If the mark has been abandoned;

(e) Ifthe mark is being used to misrepresent the source of the goods or
services on or in connection with which the mark is used;

(f) If the registered owner of the mark without legitimate reason fails to
use the mark within the Philippines, or to cause it to be used in the
Philippines by virtue of a license during an uninterrupted period of forty-
two (42) months or longer; or

(9) _ ifthe mark has become generic.

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

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

SEC. 160. Non-use of a Mark When Excused. - 160.1. Non-use of a mark
may be excused if caused by circumstances arising independently of the will of the
trademark owner. Lack of funds shall not excuse non-use of a mark.

160.2, The use of the mark in a form different from the form in which it is
registered, which does not alter its distinctive character, shall not be ground for
cancellation or removal of the mark and shall not diminish the protection granted to
the mark,

160.3. The use of a mark in connection with one or more of the goods or
services belonging to the class in respect of which the mark is registered shall
prevent its cancellation or removal in respect of all other goods or services of the
same class.

160.4. The use of a mark by a company related with the registrant or applicant
shall inure to the latter's benefit, and such use shall not affect the validity of such
mark or of its registration: Provided, That such mark is not used in such manner as
to deceive the public. If use of a mark by a person is controlled by the registrant or
applicant with respect to the nature and quality of the goods or services, such use
shall inure to the benefit of the registrant or applicant.

SEC. 161. Requirements of Petition; Notice and Hearing. - Insofar as
applicable, the petition for cancellation shall be in the same form as provided for
under Section 141 of this Act, and notice and hearing shall be in the same manner
provided for under Section 142 of this Act.

SEC. 162. Cancellation of Registration. - If the Bureau of Legal Affairs finds
that a case for cancellation has been made out, it shall order the cancellation of the
registration. When the order or judgment becomes final, any right conferred by such
registration upon the registrant or any person in interest of record shall terminate.
Notice of cancellation shall be published in the IPOPHL Gazette.

Chapter IV
INFRINGEMENT

SEC. 163. Infringing Acts. — The following acts committed without the
consent of the owner, shall constitute infringement:


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(a)

(b)

Use in commerce of any reproduction, counterfeit, copy, or colorable
imitation of a registered mark or container or a dominant feature
thereof in connection with the sale, offering for sale, distribution, or
advertising of any goods or services including other preparatory steps
necessary to cary 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;

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 Section 163 (a) hereof or
this Section are committed regardless of whether there is actual sale of
goods or services using the infringing material.

SEC. 164 . Solidary Liability. - The following shall be held solidarily liable
with the infringer only to the extent of civil damages suffered by the complainant:

(a)

(b)

One who, for profit or benefit, permits the use of the latter's premises in
selling, offering for sale, manufacturing, or distribution of any infringing,
counterfeit or pirated goods or content, and has been proven to have
knowledge of such fact and participated in the infringing act of the
tenants;

Intemet service providers, domain name registries and registrars,
website owners, online intermediaries, online platforms, social media
platforms, or any similar entities engaged in selling, offering for sale,
or making available to the public any infringing, counterfeit or pirated
goods or content, who (i) fail to exercise due diligence in complying
with the minimum requirements set by law, or (ji) fail to take down or
block access to the infringing material or website within a reasonable
time or enforce their policy against infringement, counterfeiting or
piracy, after notice of the fact of infringement or counterfeiting has been
given.

The concerned entity referred to in this paragraph (b) shall not be held
liable if it is able to prove that it has exercise due diligence in
ascertaining the accuracy and reliability of the documents or
information submitted by the online merchant or exhibitor and that it
has no knowledge of such fact of infringement and counterfeiting and
no participation in the infringing and counterfeiting act.

SEC. 165. Actions, Damages and Injunction for Infringement. - 165.1. The
owner of a registered mark may recover damages from any person who infringes his

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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, or in
the event such measure of damages cannot be readily ascertained with reasonable
certainty, 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 was used in the infringement of the rights of the
complaining party.

165.2. On application of the complainant, the court may impound during the
pendency of the action, materials and implements primarily or predominantly used in
the act of infringement, sales invoices and other documents evidencing sales.

165.3. In cases where actual intent to mislead the public or to defraud the
complainant is shown, the damages may be doubled in the discretion of the court.

165.4. The complainant, upon proper showing, may also be granted
injunction.

‘SEC. 166. Power of Court to Order Infringing Material Destroyed. - 166.1.
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.

166.2. 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. 167. 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. 168. Limitations to Actions for 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:

(2) Notwithstanding the provisions of Section 163 of this Act, 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

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of his business or enterprise: Provided, That the right may only be
used in, or transferred or assigned together with the existing enterprise
or business or with that part of the enterprise or business in which the
mark is used.

(b) 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.

(©) Where the infringement complained of is contained in or is part of a
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 shall not be available to the owner of the right infringed with
respect to an issue of a newspaper, magazine, or other similar
periodical or an electronic communication containing infringing matter
where restraining the dissemination of such infringing matter in any
particular issue of such periodical or electronic communication would
delay the delivery of such issue or transmission of such electronic
communication customarily conducted in accordance with sound
business practice, and not due to any method or device adopted to
evade this Section or to prevent or delay the issuance of an injunction
or restraining order with respect to such infringing matter; and

(¢) There shall be no infringement of trademarks or tradenames of
imported or sold drugs and medicines allowed under Section 78.1 of
this Act, as well as imported or sold off-patent drugs and medicines:
Provided, That said drugs and medicines bear the registered marks
that have not been tampered, unlawfully modified, or infringed upon as
defined under Section 163 of this Act.

SEC. 169. Right of Foreign Corporation 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 civil or administrative action 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.

SEC. 170. Authority to Determine Right to Registration. - In any action
involving a registered mark, the court or the Office may determine the right to
registration or ownership, and if applicable, order the cancellation of a registration, in
whole or in part, and otherwise rectify the register by the substitution of the rightful

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‘owner as the registrant with respect to the registration of any party to the action in
the exercise of this right. Where the determination was made by the court, the
judgment or order shall be certified by the court to the Director General, who shall
cause the entry of the appropriate annotation upon the records of the respective
Bureau, and shall be controlled thereby.

SEC. 171. Action for False or Fraudulent Declaration. - Any person who
shall procure registration in the Office of a mark by a false or fraudulent declaration
or representation, whether oral or in writing, or by any false means, shall be liable in
a civil action by any person injured thereby for any damages sustained in
consequence thereof.

SEC. 172. Jurisdiction of Court. - All actions under Sections 158, 163, 173,
and 175 to 178 of this Act shall be brought before the proper courts with appropriate
jurisdiction under existing laws,

SEC. 173. Notice of Filing Suit Given to the Director. - It shall be the duty
of the clerks of such courts within one (1) month after the filing of any action, suit, or
proceeding involving a mark registered under the provisions of this Act, to notify the
Director in writing setting forth: the names and addresses of the litigants and
designating the number of the registration or registrations and within one (1) month
after the judgment is entered or an appeal is taken, the clerk of court shall give
notice thereof to the Office, and the latter shall endorse the same upon the file
wrapper of the said registration or registrations and incorporate the same as a part of
the contents of said file wrapper.

Chapter V
TRADE NAMES OR BUSINESS NAMES;
COLLECTIVE MARKS

SEC. 174. Trade Names or Business Names. - 174.1. A name or
designation may not be used as a trade name if by its nature or the use to which
such name or designation may be put, it is contrary to public order or morals and if,
in particular, it is liable to deceive trade circles or the public as to the nature of the
enterprise identified by that name.

174.2. (a) Notwithstanding any laws or regulations providing for any obligation
to register trade names, such names shall be protected, even prior to or without
registration, against any unlawful act committed by third parties.

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

174.3. The remedies provided for under Sections 161 to 165, 175, and 176 of
this Act shall apply mutatis mutandis.


174.4. Any change in the ownership of a trade name shall be made with the
transfer of the enterprise or part thereof identified by that name. The provisions of
Sections 157.2 to 157.4 of this Act shall apply mutatis mutandis.

SEC. 175. Goods Bearing Infringing Marks or Trade Names. - 175. 1.
Imported Goods. Imported goods which shall copy or simulate the name of any
domestic product, or manufacturer, or dealer, or which shall copy or simulate a mark
registered in accordance with the provisions of this Act, or shall bear a mark or trade
name calculated to induce the public to believe that the article is manufactured in the
Philippines, or that it is manufactured in any foreign country or locality other than the
country or locality where it is in fact manufactured, shall, upon notice and hearing, be
seized and disposed of or destroyed. In order to aid the officers of the customs
service in enforcing this prohibition, any person who is entitled to the benefits of this
Act, may require that his name and residence, the name of the locality in which his
goods are manufactured, and a copy of the certificate of registration of his mark or
trade name, be recorded in books which shall be kept for this purpose in the Bureau
of Customs, under such regulations as the Collector of Customs with the approval of
the Secretary of Finance shall prescribe, and may fumish to the said Bureau
facsimiles of his name, the name of the locality in which his goods are manufactured,
or his registered mark or trade name, and thereupon the Collector of Customs shall
cause one (1) or more copies of the same to be transmitted to each collector or to
other proper officer of the Bureau of Customs.

175.2. Exported Goods. Exported goods, or goods intended to be exported,
which shall copy or simulate the name of any domestic product, or manufacturer, or
dealer, or which shall copy or simulate a mark registered in accordance with the
Provisions of this Act, or shall bear a mark or trade name calculated to induce the
Public to believe that the article is manufactured in the Philippines, or that it is
manufactured in any foreign country or locality other than the country or locality
where it is in fact manufactured, shall, upon notice and hearing, be seized and
disposed of or destroyed.

SEC. 176. Collective Marks and Certification Marks. - 176.1. Subject to
Sections 176.2 and 176.3 hereof, Sections 129 to 173 and 175 of this Act shall
apply to collective marks and certification marks, except that references therein to
“mark” shall be read as “collective mark" or “certification mark.”

176.2. (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.

(b) The registered owner of a collective mark or a certification mark shall
notify the Director of any changes made in respect of the agreement referred to in
Section 176.2 (a) of this Act.

176.3. In addition to the grounds provided for under Section 157 of this Act,
the Office or the court shall cancel the registration of a collective mark or certification

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mark if the person requesting the cancellation proves that the registered owner uses
the mark, or uses or permits its use in contravention of the agreements referred to in
Sections 176.2 of this Act or uses or permits its use in a manner liable to deceive
trade circles or the public as to the origin or any other common characteristics of the
goods or services concerned.

176.4. The registration of a collective mark or certification mark, or an
application therefor shalll not be the subject of a license contract.

SEC. 177. Unfair Competition, Rights, Regulation and Remedies. - 177.1.
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.

177.2. 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
Quilty of unfair competition, and shall be subject to an action therefor.

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

(a) 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
believe that the goods offered are those of a manufacturer or dealer,
other than the actual manufacturer or dealer, or who otherwise clothes
the goods with such appearance as shall deceive the public and
defraud another of his legitimate trade, or any subsequent vendor of
such goods or any agent of any vendor engaged in selling such goods
with a like purpose;

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

(c) Any person who shall make any false statement in the course of trade
‘or who shall commit any other act contrary to good faith of a nature
calculated to discredit the goods, business or services of another.

177.4. The remedies provided for under Sections 165, 166 and 170 of this Act
shall apply mutatis mutandis.

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SEC. 178. False Designations of Origin; False Description or
Representation. - 178.1. Any person who, on or in connection with any goods or
services, or any container for goods, uses in commerce any word, term, name,
symbol, or device, or any combination thereof, or any false designation of origin,
false or misleading description of fact, or false or misleading representation of fact,
which:

(a) Is likely to cause confusion, or to cause mistake, or to deceive as to the
affiliation, connection, or association of such person with another
person, or as to the origin, sponsorship, or approval of his or her
goods, services, or commercial activities by another person; or

(b) In commercial advertising or promotion, misrepresents the nature,
characteristics, sponsorship, qualities, or geographic origin of goods,
services, or commercial activities, shall be liable to a civil action for
damages and injunction provided for under Sections 165 and 166 of
this Act by any interested person.

178.2. Any goods 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,

Chapter VI
CRIMINAL ACTIONS AND PENALTIES

SEC. 179. Penalties. - Independent of the civil and administrative remedies,
persons liable for trademark infringement, unfair competition, false designations of
origin, or false designation or representation shall, upon conviction, be punished by
imprisonment or fine, or both, at the discretion of the court, as follows:

(2) Imprisonment from three (3) years to five (5) years, or a fine ranging
from One hundred thousand pesos (P 100,000.00) to Four hundred
thousand pesos (P 400,000.00), or both for the first offense;

(b) Imprisonment from five (5) years and one (1) day to seven (7) years, or
a fine ranging from over Four hundred thousand pesos (P 400,000.00)
to Two million pesos (P 2,000,000.00), 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 (P 2,000,000.00) to Four
million pesos (P 4,000,000.00), or both for the third and subsequent
offenses;

(d) In cases of counterfeit goods that threaten life, public health and safety,

the court shall impose the maximum penalty of ten (10) years of
imprisonment or a fine of Four million pesos (P 4,000,000.00), or both.

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Chapter Vit
INDUSTRIAL DESIGN

SEC. 180. Definition of Terms. - An industrial design is any composition of
lines or colors or any three-dimensional form, whether or not associated with lines or
colors: Provided, That such composition or form gives a special appearance to and
can serve as pattem for an industrial product or handicraft.

Parts or components of such product or handicraft may be subject for
industrial design registration independent of the protection given to industrial designs
of such product or handicraft as a whole: Provided, That such parts or components
meet the requirements for protection of industrial designs.

SEC. 181. Conditions for Protection. - 181.1. Only industrial designs that
are new or original shall benefit from protection under this Act.

181.2. 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.

SEC. 182. Contents of the Application. - 182.1. Every application for
registration of an industrial design shall contain:

(a) Arequest for registration of the industrial design;
(b) Information identifying the applicant;

(c) An indication of the kind of article of manufacture or handicraft to which
the industrial 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 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 registration.

182.2. The application may be accompanied by a specimen of the article
embodying the industrial design and shall be subject to the payment of the
prescribed fee.

SEC. 183. 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

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application for design registration, provided that each article is of, or has, the same
design or a substantially similar design.

SEC.184. Formality Examination. — 184.1. The Office shall accord as the
filing date the date of receipt of the application containing indications allowing the
identity of the applicant to be established and a representation of the article
embodying the industrial design or a pictorial representation thereof.

184.2. If the application does not meet these requirements, the filing date
should be that date when all the elements specified in Section 182 of this Act are
filed or the mistakes corrected. Otherwise, if the requirements are not complied
within the prescribed period, the application shall be considered withdrawn.

184.3. After the conduct of a formality examination and upon full compliance
with the prescribed formality requirements, the application for registration shall be
published in the IPOPHL Gazette. Within thirty (30) days from the date of publication,
third parties may file with the Director adverse information citing grounds or
information that the design is not new or not registrable. The Director shall decide
whether or not to grant the industrial design registration based on such information.

An applicant has the option to file a request for deferred publication
simultaneously with the filing of the application or at any time prior to publication
date. The maximum period allowed for the deferred publication of an industrial
design application shall be thirty (30) months from the filing date or priority date of
the application. In case the request for the deferred publication is made after the
filing of the application, the allowable period for the deferred publication shall be the
remaining time from the allowed thirty (30) months deferred publication period. The
applicant or applicants may request for a specific time for the Office to publish the
application: Provided, That it does not go beyond the allowed deferment period of
thirty (30) months.

SEC. 185. Registration. — 185.1. The conditions referred to in Section 182 of
this Act are deemed fulfiled in the absence of adverse information or where an
adverse information was resolved by the Director in favor of the applicant, the
Director shall issue the registration of the industrial design; otherwise, it shall refuse
the application.

The Director may decide whether or not to register the industrial design
application based on information or registrability report that the application does not
comply with Sections 180 or 181 of this Act.

185.2. The form and contents of an industrial design certificate shall be
established by the Regulations: Provided, That the name and address of the creator
shall be mentioned in every case.

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

185.4. The Office shall record in the register any change in the identity of the
proprietor of the industrial design or its representative, if proof thereof is furnished to

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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.

185.5. Anyone may inspect the Register and the files of registered industrial
designs including the files of cancellation proceedings.

SEC. 186. The Term of Industrial Design. - 186.1. The registration of an
industrial design shall be for a period of five (5) years from the filing date of the
application.

186.2. The registration of an industrial design may be renewed for not more
than two (2) consecutive periods of five (5) years each by paying the renewal fee.

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

186.4. The Regulations shall fix the amount of renewal fee, the surcharge and
other requirements regarding the recording of renewals of registration.

SEC. 187. Application of Other Sections and Chapters. - 187.1. The following
provisions relating to patents shall apply mutatis mutandis to an industrial design
registration:

Section 29 - Novelty;

Section 30 - Prior art; Provided, That the disclosure is contained in
Printed documents or in any tangible form;

Section 31 - Non- prejudicial Disclosure;

Section 34 - Right to A Patent;

Section 36 - First to File Rule;

Section 36- Inventions Created Pursuant to a Commission;

Section 37 Right of Priority; Provided, That the application for

industrial design shall be filed within six (6) months from
the earliest filing date of the corresponding foreign
application;

Section 38.1 (g)- | Appointment of Agent or Representative;

Section 57- Refusal of the Application;

Sections 62 to 65- Surrender, Correction of and Changes in Patent;

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Chapter VII- Remedies of a Person with a Right to Patent;
Chapter VIII- Rights of Patentees and Infringement of Patents; and
Chapter IX- Assignment and Transmission of Rights

187.2. 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 or
her consent, protection under this Chapter cannot be invoked against the injured
party.

187.3. Any industrial design registrant, or anyone possessing any right, title
or interest in and to the registered industrial design, whose rights have been
infringed, may bring a civil action before the appropriate Regional Trial Court, 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: Provided, That the complaint shall include a registrability report.

SEC. 188. Cancellation of Design Registration. - 188.1. At any time during the
term of the industrial design registration, any person upon payment of the required
fee, may petition the Director of the Bureau of Legal Affairs to cancel the industrial
design on any of the following grounds:

(2) If the subject matter of the industrial design is not registrable within the
terms of Sections 180 or 181 of this Act;

(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.

188.2. 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.

SEC. 189. Industrial Design Infringement. — The provisions of Section 90

(a) of this Act shall also apply to criminal actions and penalties for industrial design
infringement.

PARTV
COPYRIGHT AND RELATED RIGHTS

Chapter |
GENERAL PROVISIONS

SEC. 190. Definitions. - For the purpose of this Act, the following terms have
the following meaning:

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“Author” is the natural person who has created the work;

“Copyright” is the bundle of exclusive economic rights and moral rights;

“Collective Management Organization” is any entity engaged in
collective management of copyright and related rights subject to the
rules and regulations of the Office.

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

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

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

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

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

"Public performance,” in the case of a work other than an audiovisual
work, is the recitation, playing, dancing, acting or otherwise performing
the work, either directly or by means of any device or process; in the
case of an audiovisual work, the showing of its images in sequence
and the making of the 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 or at different times, and
where the performance can be perceived without the need for
communication within the meaning of Section 190 (e) of this Act;

“Published works" are 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

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such copies has been such, as to satisfy the reasonable requirements
of the public, having regard to the nature of the work;

“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;

“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 204 of
this Act;

“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;

“Right holder” refers to a person or entity who owns a copyright or
related right;

“Technological measure” is 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;

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; and

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.

Chapter Il
ORIGINAL WORKS

SEC. 191. Literary and Artistic Works. — 191.1. Literary and artistic works,
hereinafter referred to as “works", are original intellectual creations in the literary and
artistic domain protected from the moment of their creation. Originality means that
the work was independently created by the author. Literary and artistic works shall
include in particular:

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Books, pamphlets, articles and other writings;
Periodicals and newspapers;

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

Letters and other private communications;

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

Musical compositions, with or without words;

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

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

Illustrations, maps, plans, sketches, charts and three-dimensional
works relative to geography, topography, architecture or science;

Drawings or plastic works of a scientific or technical character;

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

Audiovisual works and cinematographic works and works produced by
a process analogous to cinematography or any process for making
audio-visual recordings;

Pictorial illustrations and advertisements;

Computer programs and data bases; and

Other literary, scholarly, scientific and artistic works.

191.2. Works are protected by the sole fact of their creation, without need of
any formality or registration, imespective of their mode, medium, or form of
expression, as well as of their content, quality and purpose.

Chapter Il
DERIVATIVE WORKS

SEC. 192. Derivative Works. - 192.1. The following derivative works shall
also be protected by copyright:

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(a) _ Dramatizations, translations, adaptations, abridgments, arrangements,
and other alterations of literary or artistic works; and

{b) Collections of literary, scholarly or artistic works, and compilations of
data and other materials which are original by reason of the selection or coordination
or arrangement of their contents.

192.2. The works referred to in Section 192.1 (a) and (b) hereof shall be
protected as new works: Provided however, That such new work shall not affect the
force of any subsisting copyright upon the original works employed or any part
thereof, or be construed to imply any right to such use of the original works, or to
secure or extend copyright in such original works.

SEC. 193. Published Edition of Work. - In addition to the right to publish
granted by the author, his heirs or assigns, the publisher shall have a copyright
consisting merely of the right of reproduction of the typographical arrangement of the
published edition of the work.

Chapter IV
WORKS NOT PROTECTED

SEC. 194. Unprotected Subject Matter. - Notwithstanding the provisions of
Sections 191 and 192 hereof, no protection shall extend, under this Act, to any of the
following:

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

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

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

SEC.195. Works of the Government. - 195.1. No copyright shall subsist in
any work of the Government of the Philippines. However, prior approval of the
goverment agency or office wherein the work is created shall be necessary for
exploitation of such work for profit. Such agency or office may, among other things,
impose as a condition the payment of royalties. No prior approval or conditions shall
be required for the use of any purpose of statutes, rules and regulations, and
speeches, lectures, sermons, addresses, and dissertations, pronounced, read or
rendered in courts of justice, before administrative agencies, in deliberative
assemblies and in meetings of public character.

195.2. The author of speeches, lectures, sermons, addresses, and

dissertations mentioned in the preceding paragraphs shall have the exclusive right of
making a collection of such works.

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195.3. Notwithstanding the foregoing provisions, the Government is not
precluded from receiving and holding copyrights transferred to it by assignment,
bequest or otherwise; nor shall publication or republication by the government in a
public document of any work in which copyright is subsisting be taken to cause any
abridgment or annulment of the copyright or to authorize any use or appropriation of
such work without the consent of the copyright owner.

Chapter V
ECONOMIC RIGHTS

SEC. 196. Economic Rights. - Subject to the provisions of Chapter VIII of
this Act, economic rights shall consist of the exclusive right to carry out, authorize or
prevent the following acts:

(a)
(b)

(c)

(a)

(e)
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(9)

Reproduction of the work or substantial portion of the work;

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

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

Rental of the original or a copy of an audiovisual or cinematographic
work, a work embodied in a sound recording, a computer program, a
compilation of data and other materials or a musical work in graphic
form, irrespective of the ownership of the original or the copy which is
the subject of the rental;

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

Public performance of the work; and

Other communication to the public of the work.

Chapter VI
OWNERSHIP OF COPYRIGHT

SEC. 197. Rules on Copyright Ownership. - 197.1. Copyright ownership
shall be governed by the following rules:

(a)

(b)

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

In the case of works of joint authorship, the co-authors shall be the
original owners of the copyright and in the absence of agreement, their
rights shall be governed by the rules on co-ownership. If, however, a
work of joint authorship consists of parts that can be used separately
and the author of each part can be identified, the author of each part
shall be the original owner of the copyright in the part that he has
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(C)__ Inthe case of work created by an author during and in the course of his
employment, the copyright shall belong to:

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

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

(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.

The foregoing notwithstanding, with respect to commissioned photographs,
films and paintings intended for private use, the following rights belong to the person
who commissioned the work:

(a) _ Distribution or issuance of the work to the public,
(b) Exhibition or display of the work in public, and
(©) Communication of the work in public.

197.2. In the case of audiovisual work, the copyright shall belong to the
producer, the author of the scenario, the composer of the music, the film director,
and the author of the work so adapted. However, subject to contrary or other
stipulations among the creators, the producer shall exercise the copyright to an
extent required for the exhibition of the work in any manner, except for the right to
collect performing license fees for the performance of musical compositions, with or
without words, which are incorporated into the work; and

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

‘SEC. 198. Anonymous and Pseudonymous Works. - For purposes of this
Act, the publishers shall be deemed to represent the authors of articles and other
writings published without the names of the authors or under pseudonyms, unless
the contrary appears, or the pseudonyms or adopted name leaves no doubts as to
the author's identity, or if the author of the anonymous works discloses his identity.

Chapter Vil
TRANSFER, ASSIGNMENT AND LICENSING OF COPYRIGHT

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SEC. 199. Rights of Assignee or Licensee. - 199.1. The copyright may be
assigned or licensed in whole or in part. Within the scope of the assignment or
license, the assignee or licensee is entitled to all the rights and remedies which the
assignor or licensor had with respect to the copyright.

199.2. Copyright or related rights are not deemed assigned or licensed inter
vivos, in whole or in part, unless there is a written indication of such intention.

199.3, The submission of a literary, photographic or artistic work to a
newspaper, magazine or periodical for publication shall constitute only a license to
make a single publication unless a greater right is expressly granted. If two (2) or
more persons jointly own a copyright or any part thereof, neither of the owners shall
be entitled to grant licenses without the prior written consent of the other owner or
owners.

199.4. Any exclusivity in the economic rights in a work may be exclusively
licensed. Within the scope of the exclusive license, the licensee is entitled to all the
rights and remedies which the licensor had with respect to the copyright.

199.5. The copyright owner has the right to regular statements of accounts
from the assignee or the licensee with regard to assigned or licensed work.

SEC. 200. Copyright and Material Object. - The copyright is distinct from
the property in the material object subject to it. Consequently, the transfer,
assignment or licensing of the copyright shall not itself constitute a transfer of the
material object. Nor shall a transfer or assignment of the sole copy or of one or
several copies of the work imply transfer, assignment or licensing of the copyright.

SEC. 201. Filing of Assignment or License. - An assignment or exclusive
license may be filed with the Bureau of Copyright and Related Rights upon payment
of the prescribed fee for registration in books and records kept for the purpose. Upon
recording, a copy of the instrument shall be returned to the sender with a notation of
the fact of record, Notice of the record shall be published in the IPOPHL Gazette.

SEC 202. Designation of Collective Management Organizations. —
202.1.The owners of copyright and related rights or their heirs may designate a
society of artists, writers, composers and other right-holders to collectively manage
their economic or moral rights on their behalf, to be otherwise known as a Collective
Management Organization.

202.2. Mandatory Accreditation with the Office. For the said collective
management organizations to enforce or license the rights they administer, they shall
first secure the necessary accreditation from the Bureau of Copyright and Related
Rights. The accreditation regulation shall apply to local and foreign collective
management organizations and individuals or entities engaging, directly or indirectly,
in any of the activities in Section 202.3 hereof in behatf of more than one right holder,
but only organizations duly organized under the laws of the Philippines may be
accredited to operate as a collective management organization. The Bureau of
Copyright and Related Rights may impose such restrictions or limitations in the
accreditation regulations as may be necessary to serve public interest.

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Any person may refuse the payment or remittance of royalties to a collective
management organization which is not accredited. Any person may also refuse
payment or remittance of royalties to a collective management organization for a
rights holder if the latter is not represented by a registered member of the collective
management organization. In addition, any such organization found functioning as a
collective management organization without said accreditation after due notice and
hearing shall be liable for an administrative fine equivalent to one hundred percent
(100%) of the gross revenue it earned for the Philippine territory, or which shall in no
case be less than Fifty thousand pesos (P 50,000.00) but shall not exceed One
million pesos (P1,000,000.00), whichever is higher.

The users who dealt with the non-accredited collective management
organization knowing that said collective management organization is not accredited
shall, after due notice and hearing, likewise be held solidarily liable for the
aforementioned fine equivalent to one hundred percent (100%) of the total payment
they have made to the said non-accredited collective management organization.

202.3. Effect of Accreditation, - Accreditation shall authorize a local collective
management organization to negotiate, grant licenses, collect and distribute
royalties, and other remuneration of its members.

Chapter Vill
LIMITATIONS ON COPYRIGHT

SEC. 203. Limitations on Copyright. — Notwithstanding the provisions of
Chapter V, the following acts shall not constitute infringement of copyright:

(a) The recitation or performance of a work, once it has been lawfully
made accessible to the public, if done privately and free of charge or if
made strictly for a charitable or religious institution or society;

(b) The making of quotations from a published work if they are compatible
with fair use and only to the extent justified for the purpose, including
quotations from newspaper articles and periodicals in the form of press
summaries: Provided, That the source and the name of the author, if
appearing on the work, are mentioned;

(c) The reproduction or communication to the public by mass media of
articles on current political, social, economic, scientific or religious
topic, lectures, addresses and other works of the same nature, which
are delivered in public if such use is for information purposes and has
not been expressly reserved: Provided, That the source is clearly
indicated;

(4) The reproduction and communication to the public of literary, scientific
or artistic works as part of reports of current events by means of
photography, cinematography or broadcasting to the extent necessary
for the purpos:

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The inclusion of a work in a publication, broadcast, or other
communication to the public, sound recording or film, if such inclusion
is made by way of illustration for teaching purposes and is compatible
with fair use: Provided, That the source and of the name of the author,
if appearing in the work, are mentioned;

The recording made in schools, universities, or educational institutions
of a work included in a broadcast for the use of such schools,
universities or educational institutions: Provided, That such recording
must be deleted within a reasonable period after they were first
broadcast: Provided further, That such recording may not be made
from audiovisual works which are part of the general cinema repertoire
of feature films except for brief excerpts of the work;

The making of ephemeral recordings by a broadcasting organization by
means of its own facilities and for use in its own broadcast;

The use made of a work by or under the direction or control of the
Government, by the Bureau of Copyright and Related Rights, by the
National Library or by educational, scientific or professional institutions
where such use is in the public interest and is compatible with fair use;

The public performance or the communication to the public of a work,
in a place where no admission fee is charged in respect of such public
performance or communication, by a club or institution for charitable or
educational purpose only, whose aim is not profit making, subject to
such other limitations as may be provided for under the Regulations;

Public display of the original or a copy of the work not made by means
of a film, slide, television image or otherwise on screen or by means of
any other device or process: Provided, That either the work has been
published, or, that the original or the copy displayed has been sold,
given away or otherwise transferred to another person by the author or
his successor in title;

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

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


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(m) The copyright in a work that is situated, otherwise than temporarily, in a
public place, or in premises open to the public, is not infringed by the
making of a painting, drawing, engraving or photograph of the work or
by the inclusion of the work in a cinematograph film or in a television
broadcast.

SEC. 204. Fair Use of a Copyrighted Work. 204.1. The fair use of a
copyrighted work for criticism, comment, news reporting, teaching including limited
number of copies for classroom use, scholarship, research, and similar purposes is
not an infringement of copyright.

Decompilation, which is understood here to be the reproduction of the code
and translation of the forms of a computer program to achieve the interoperability of
an independently created computer program with other programs, may also
constitute fair use under the criteria established by this Section, to the extent that
such decompilation is done for the purpose of obtaining the information necessary to
achieve such interoperability.

In determining whether the use made of a work in any particular case is fair
use, the factors to be considered shall include:

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

(b) The nature of the copyrighted work;

(c) The amount and substantiality of the portion used in relation to the
copyrighted work as a whole; and

(4) The effect of the use upon the potential market for or value of the
copyrighted work.

204.2. The fact that a work is unpublished shall not by itself bar a finding of
fair use if such finding is made upon consideration of all the above factors.

SEC. 205. Work of Architecture. - Copyright in a work of architecture shall
include the right to control the erection of any building which reproduces the whole or
a substantial part of the work either in its original form or in any form recognizably
derived from the original: Provided, That the copyright in any such work shall not
include the right to control the reconstruction or rehabilitation in the same style as the
original of a building to which that copyright relates.

SEC. 206. Reproduction for Research and Private Study. — 206.1.
Notwithstanding the provisions of Section 196 (a) of this Act, and subject to the
provisions of Section 206.2 hereof, the reproduction, in a single copy, for research or
private study, of a work kept in a library, museum or other institution to which the
public has access, shall be permitted, without the authorization of the owner of
copyright in the work.

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Provided, That where the identity of the author of any such work or, in the
case of a work of joint authorship, of any of the authors is known to the library,
museum or other institution, as the case may be, the above provisions shall apply
only if such reproduction is made at a time more than forty (40) years from the date
of the death of the author or, in the case of a work of joint authorship, from the death
of the last surviving author whose identity is known or, if the identity of more authors.
than one is known from the death of such of those authors who dies last.

206.2. The permission granted under Section 206.1 hereof shall not extend to
the reproduction of:

(a) Awork of architecture in the form of building or other construction;
(b) — Acompilation of data and other materials;

(c) A computer program except as provided for under Section 208 of this
Act; and

(4) Any work in cases where reproduction would unreasonably conflict with
a normal exploitation of the work or would otherwise unreasonably prejudice the
legitimate interests of the author.

SEC. 207. Reprographic and Other Reproductions by Libraries. — 207.1.
Notwithstanding the provisions of Section 196 (a) of this Act, any library or archive
whose activities are not for profit may, without the authorization of the author or
copyright owner, make a limited number of copies of the work, as may be necessary
for such institutions to fulfill their mandate, by reprographic reproduction:

(a) Where the work by reason of its fragile character or rarity cannot be
lent to user in its original form;

(b) Where the works are isolated articles contained in composite works or
brief portions of other published works and the reproduction is
necessary to supply them; when this is considered expedient, to
persons requesting their loan for purposes of research or study instead
of lending the volumes or booklets which contain them; and

(c) Where the making of such limited copies is in order to preserve and, if
necessary in the event that it is lost, destroyed or rendered unusable,
replace a copy, or to replace, in the permanent collection of another
similar library or archive, a copy which has been lost, destroyed or
rendered unusable and copies are not available with the publisher.

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

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207.3. Notwithstanding Section 196 (a) of this Act, a library may create a
digital reproduction of a work and lend out the secured digital reproduction to one
valid user at a time: Provided, That the library shall -

(2) owna legal copy or copies of the work;

(b) maintain a corresponding ratio of legal copies of the work to the copies
of the work lent, such that, at any given time, it shall not lend more
physical and digital copies than the number of the copies it legally
‘owns; and

(c) _ use technological measures to ensure that the digital file cannot be
copied or redistributed.

SEC. 208. Reproduction of Computer Program. — 208.1. Notwithstanding
the provisions of Section 196 (a) of this Act, the reproduction in one (1) back-up copy
or adaptation of a computer program shall be permitted, without the authorization of
the author of, or other owner of copyright in a computer program, by the lawful owner
of that computer program: Provided, That the copy or adaptation is necessary for:

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

(b) Archival purposes, and, for the replacement of the lawfully owned copy
of the computer program in the event that the lawfully obtained copy of
the computer program is lost, destroyed or rendered unusable.

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

208.3. This provision shall be without prejudice to the application of Section
204 of this Act whenever appropriate.

SEC. 209. Prohibition on Importation and Exportation of Copyrighted
Works. — 209.1 Notwithstanding the provision of Section 196 (c) of this Act, but
subject to the limitation under Section 204.2 hereof and the provisions of Republic
‘Act No. 10863, otherwise known as the “Customs Modernization and Tariff Act’, the
importation or exportation of a copy of a work by an individual for personal purposes
shall be permitted without the authorization of the author of, or other owner of
copyright in, the work under the following circumstances:

(a) When copies of the work are not available in the Philippines: and

(1) Not more than one (1) copy at one time is imported for strictly
individual use only; or

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(2) The importation is by authority of and for the use of the
Philippine Government; or

(3) The importation, consisting of not more than three (3) such
copies or likenesses in any one invoice, is not for sale but for the
use only of any religious, charitable, or education society or
institution duly incorporated or registered, or is for the
encouragement of the fine arts, or for any school, college,
university or free library in the Philippines.

(b) When such copies form parts of libraries and personal baggage
belonging to persons or families arriving from or leaving for foreign
countries and are not intended for sale: Provided, That such copies do
not exceed three (3).

209.2 Copies imported as allowed by this Section may not lawfully be used in
any way to violate the rights of the owner of the copyright or annul or limit the
protection secured by this Act, and such unlawful use shall be deemed an
infringement and shali be punishable as such without prejudice to the proprietor's
right of action.

209.3. Infringing Works. - Subject to the provisions of Republic Act No. 10863,
infringing works under Section 209.2 hereof shall include works for import, for export,
in transit or being transshipped within the Philippines.

209.4. Importation and Exportation of Infringing Materials. - Subject to the
provisions of Republic Act No. 10863, and upon the approval of the Secretary of
Finance, the Commissioner of Customs is hereby empowered to promulgate rules
and regulations for preventing the importation, exportation or transshipment of
infringing articles prohibited under Part IV of this Act and under relevant treaties and
conventions to which the Philippines may be a party and, upon notice and hearing,
for seizing and condemning and disposing of the same.

Chapter IX
REGISTRATION AND DEPOSIT

SEC. 210. Transfer of Powers from National Library and the Supreme
Court Library to Bureau of Copyright and Related Rights. - The powers, duties
and functions vested in, or performed and exercised by, the National Library and the
Supreme Court Library in connection with the registration of copyrights are hereby
transferred to the Bureau of Copyright and Related Rights.

SEC. 211. Copyright Registration and Deposit. - At any time during the
subsistence of the copyright, the owner or owners of the copyright or of any
exclusive right in the work may, register and deposit the works with the Bureau of
Copyright and Related Rights in such manner and form as may be prescribed in
accordance with regulations. Such registration and deposit is not a condition of
copyright protection.


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SEC. 212. Cancellation of Certificate of Registration and Deposit. —
212.1. A certificate of registration and deposit shall be cancelled by the Bureau of
Copyright and Related Rights by virtue of a final order or decision of the Director of
the Bureau of Legal Affairs, or the Director General, or of the appropriate court,
pursuant to which a new certificate may be issued.

212.2. 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. 213. Notice of Copyright. - Each copy of a work published or offered
for sale may contain a notice bearing the name of the copyright owner, and the year
of its first publication, and, in copies produced after the creator's death, the year of
such death.

Chapter X
MORAL RIGHTS

SEC. 214. Scope of Moral Rights. - The author of a work shall,
independently of the economic rights in Section 196 of this Act or the grant of an
assignment or license with respect to such right, have the following rights:

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

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

214.3. Right of Objection to Modification. - To object to any distortion,
mutilation or other modification of, or other derogatory action in relation to, his or her
work which would be prejudicial to his or her honor or reputation; and

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

SEC. 215. Breach of Contract. - An author cannot be compelled to perform
his contract to create a work or for the publication of his work already in existence
However, he may be held liable for damages for breach of such contract.

SEC. 216. Waiver of Moral Rights. -An author may waive his or her rights
mentioned in Section 214 of this Act by a written instrument, but no such waiver shall
be valid where its effects is to permit another:

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

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

SEC. 217. Non-transferability of Moral Rights... Moral rights shall not be
assignable or subject to license.

SEC. 218. Contribution to Collective Work. - When an author contributes to
a collective work, his or her right to have his contribution attributed to him or her is
deemed waived unless he expressly reserves it.

SEC. 219. Editing, Arranging and Adaptation of Work. - In the absence of
a contrary stipulation at the time an author licenses or permits another to use his
work, the necessary editing, arranging or adaptation of such work, for publication,
broadcast, use in a motion picture, dramatization, or mechanical or electrical
reproduction in accordance with the reasonable and customary standards or
requirements of the medium in which the work is to be used, shall not be deemed to
contravene the author's rights secured by this chapter. Nor shall complete
destruction of a work unconditionally transferred by the author be deemed to violate
such rights.

SEC. 220. Term of Moral Rights. - 220.1. The rights of an author under
Section 214.1 of this Act shall last in perpetuity, while the rights under Sections
214.2, 214.3 and 214.4 of this Act shall be coterminous with the economic rights.
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 Bureau of
Copyrights and Related Rights.

In default of such person or persons, such enforcement shall devolve upon
either the author's heirs, and in default of the heirs, the Director of the Bureau of
Copyrights and Related Rights.

220.2. For purposes of this Section, "Person" shall mean any individual,
partnership, corporation, association, or society. The Director of the Bureau of
Copyrights and Related Rights may prescribe reasonable fees to be charged for
services in the application of provisions of this Section.

SEC. 221. Enforcement Remedies. - Violation of any of the rights conferred
by this Chapter shall entitle those charged with their enforcement to the same rights
and remedies available to a copyright owner. In addition, damages which may be
availed of under the New Civil Code of the Philippines may also be recovered. Any
damage recovered after the creator's death shall be held in trust for and remitted to
his heirs, and in default of the heirs, shall belong to the government.

Chapter XI
RIGHTS TO PROCEED IN SUBSEQUENT TRANSFERS

SEC. 222. Sale or Lease of Work. - In every sale or lease of an original work
of painting or sculpture or of the original manuscript of a writer or composer,
subsequent to the first disposition thereof by the author, the author or his heirs shall
have an inalienable right to participate in the gross proceeds of the sale or lease to

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the extent of five percent (5%). This right shall exist during the lifetime of the author
and for fifty (50) years after his death.

222.1. Liability to Pay Resale Royalty. — Payment of resale royalty shall be
made by the seller to the author or his heirs, within sixty (60) days from the date of
sale or lease of the work.

222.2. For purposes of monitoring the implementation of this particular
provision, there is hereby created a National Registry of Qualified Works to be
maintained by the Bureau of Copyright and Related Rights. This registry shall
provide the means for the enrollment and registration of works qualified for the
application of resale right. It shall also serve as the repository of information on the
author or his heirs, for purposes of remittance of the resale royalty. Auction houses,
art galleries, art salesrooms, or any dealers of works of art are required to report
compliance with payment of the resale royalty to the Bureau of Copyright and
Related with regularity and in such periods as may be provided by regulations to be
issued for this purpose.

SEC. 223. Works Not Covered. - The provisions of this Chapter shall not
apply to prints, etchings, engravings, works of applied art, or works of similar kind
wherein the author primarily derives gain from the proceeds of reproductions.

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

SEC. 224, Definitions. - For the purpose of this Act, the following terms shall
have the following meanings:

(2) An “audiovisual work " 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;

(b) "Broadcasting" is 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 broadcasting where the means for decrypting are
provided to the public by the broadcasting organization or with its
consent;

(c) "Broadcasting organization” is a natural person or a juridical entity duly
authorized to engage in broadcasting;

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"Communication to the public of a performance or a sound recording"
is the transmission to the public, by any medium, otherwise than by
broadcasting, of an unfixed performance, or of a performance fixed in
an audiovisual fixation, or of the representation of sounds fixed in a.
sound recording;

For purposes of Section 228 of this Act, “communication to the public”
includes the making of a performance fixed in an audiovisual fixation
audible and visible to the public.

For purposes of Section 231 of this Act, “communication to the public”
includes making the sounds or representations if sounds fixed in a
phonogram audible to the public.

“Fixation” is the embodiment of sounds, or of moving images, or of the
representations thereof, from which they can be perceived, reproduced
or communicated through a device;

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

“Producer of a sound recording" is 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;

“Publication of a fixed performance or a sound recording’ is 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;

“Rebroadcasting’ is the simultaneous broadcasting by one
broadcasting organization of the broadcast of another broadcasting
organization; and

“Sound recording’ is the fixation of the sounds of a performance or of
other sounds, or representation of sound, other than in the form of a
fixation incorporated in a cinematographic or other audiovisual work;

Chapter XIII
PERFORMERS

SEC. 225. Scope of Performers’ Rights. - Subject to the provisions of

(a)

Section 234 of this Act, performers shall enjoy the following exclusive rights:

As regards their performances, the right of authorizing:

(1) The broadcasting and other communication to the public of their
performance; and

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(2) The fixation of their unfixed performance.

(b) The right of authorizing the direct or indirect reproduction, in any
manner or form, of their performances fixed in sound recordings or
audiovisual works or fixations;

(c) 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 other forms of transfer of
‘ownership;

(d) 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

(e) 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, 226. Moral Rights of Performers. - 226.1. Rights Granted. -
Independently of a performer's economic rights, the performer, shall, as regards live
aural performances or performances fixed in sound recordings or in audiovisual
works or fixations, have the right to claim to be identified as the performer of the
performances, except where the omission is dictated by the manner of the use of the
performance, and to object to any distortion, mutilation or other modification of the
his performances that would be prejudicial to the person's reputation.

226.2. Term of Protection. - The right to be identified as the performer in
accordance with Section 226.1 hereof shall last in perpetuity. The person or persons
to be charged with the posthumous enforcement of all the rights under Section
226.1 hereof shall be named in a written instrument which shall be filed with the
Bureau of Copyright and Related Rights.

In default of such person or persons, such enforcement shall devolve upon
either the author's heirs, and in default of the heirs, the Bureau of Copyright and
Related Rights.

SEC. 227. Limitation on Right. - Subject to the provisions of Section 231 of
this Act, once the performer has authorized the broadcasting or fixation of his
performance, the provisions of Section 225 of this Act shall have no further
application.

SEC. 228. Additional Remuneration for Subsequent Communications or
Broadcasts. - Performers shall have an inalienable right to participate in the gross
proceeds of subsequent commercial use or communication to the public of his
performance, to the extent of five percent (5%), as additional remuneration.

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SEC. 229. 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.

Chapter XIV
PRODUCERS OF SOUND RECORDINGS

SEC. 230. Scope of Right. - Subject to the provisions of Section 237 of this
Act, producers of sound recordings shall enjoy the following exclusive rights:

(a) The right to authorize the direct or indirect reproduction of their sound
recordings, in any manner or form;

(b) The right to authorize the first public distribution of the original and
copies of their sound recordings through sale or other forms of
transferring ownership;

(c) The right to authorize the commercial rental to the public of the original
and copies of their sound recordings, even after distribution by them by
or pursuant to authorization by the producer; and

(d) 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. 231. Communication to the Public. - if a sound recording published
for commercial purposes, or a reproduction of such sound recording, is used directly
for broadcasting or for 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.

SEC. 232. Limitation of Right. - Sections 203 and 204 of this Act shall apply
mutatis mutandis to the producer of sound recordings.

Chapter XV
BROADCASTING ORGANIZATIONS

SEC, 233, Scope of Right. - Subject to the provisions of Section 235 of this
Act, broadcasting organizations shall enjoy the exclusive right to carry out, authorize
or prevent any of the following acts:

(a) The rebroadcasting of their broadcasts;

(b) The fixation of the broadcast for the purpose of communication to the
public; and

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(c) The use for fresh transmissions of the fixated broadcast or the
reproduction of the fixated broadcast.

Chapter XVI
LIMITATIONS ON PROTECTION

SEC. 234, Limitations on Rights. - The provisions of Chapter VIll of this Act
shall apply mutatis mutandis to the rights of performers, producers of sound
recordings and broadcasting organizations.

Chapter XVII
TERM OF PROTECTION

SEC. 235. Term of Protection. - 235.1. Subject to the provisions of Sections
235.2 to 235.5 hereof, the copyright in works under Sections 191 and 192 of this Act
shall be protected during the life of the author and for fifty (50) years after his death.
This rule also applies to posthumous works.

235.2. In case of works of joint authorship, the economic rights shall be
protected during the life of the last surviving author and for fifty (50) years after his
death.

235.3. In case of anonymous or pseudonymous works, the copyright shall be
protected for fifty (50) years from the date on which the work was first lawfully
published: Provided, That where, before the expiration of the said period, the
author's identity is revealed or is no longer in doubt, the provisions of Sections 235.1
and 235.2 hereof shall apply, as the case may be: Provided further, That such works
if not published before shall be protected for fifty (50) years counted from the making
of the work.

235.4. In case of works of applied art the protection shall be for a period of
twenty-five (25) years from the date of making.

235.5. In case of photographic works, the protection shall be for fifty (50)
years from publication of the work and, if unpublished, fifty (50) years from the
making.

235.6. In case of audio-visual works including those produced by process
analogous to photography or any process for making audio-visual recordings, the
term shall be fifty (50) years from date of publication and, if unpublished, from the
date of making.

SEC. 236. Calculation of Term. - The term of protection subsequent to the
death of the author provided in the preceding Section shall run from the date of his
death or of publication, but such terms shall always be deemed to begin on the first
day of January of the year following the event which gave rise to them.

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SEC. 237. Term of Protection for Performers, Producers and
Broadcasting Organizations. - 237.1. The rights granted to performers and
producers of sound recordings under this law shall expire:

(a) For performances not incorporated in recordings, fifty (50) years from
the end of the year in which the performance took place; and

(b) For sound or sound and images recordings and for performances
incorporated therein, fifty (50) years from the end of the year in which
the recording took place.

237.2. In case of broadcasts, the term shall be twenty (20) years from the
date the broadcast took place. The extended term shall be applied only to old works
with subsisting protection under the prior law.

Chapter XVIII
INFRINGEMENT

SEC. 238, Infringement. - Any person infringes a right protected under this
Act when one:

(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;

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

238.1 Remedies for Infringement. - Any person infringing a right protected
under this law shall be liable:

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

(b) To pay to the copyright proprietor or his assigns or heirs such actual
damages, including legal costs and other expenses, as he may have
incurred due to the infringement as well as the profits the infringer may
have made due to such infringement, and in proving profits the plaintiff
shall be required to prove sales only and the defendant shall be
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:

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(1) Circumvents effective technological measures; or

(2) 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.

(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.

(4) 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.

(e) Such other terms and conditions, including the payment of moral and
exemplary damages, which the court may deem proper, wise and
equitable and the destruction of infringing copies of the work even in
the event of acquittal in a criminal case.

The copyright owner may elect, at any time before final judgment is 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 but not less than Fifty thousand pesos (P 50,000.00). In
awarding statutory damages, the court may consider the following factors:

(a) The nature and purpose of the infringing act;

(b) The flagrancy of the infringement;

(c) Whether the defendant acted in bad faith;

(d) The need for deterrence;

(e) Any loss that the plaintiff has suffered or is likely to suffer by reason of
the infringement; and

(fy 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

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(P10,000.00): Provided, That the amount of damages to be awarded shall be
doubled against any person who:

(a) Circumvents effective technological measures; or

(b) 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.

238.2. 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.

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

SEC. 239. Criminal Penalties. - 239.1. Independent of the civil and
administrative remedies, persons liable for willful infringement shall, upon conviction,
be punished, by imprisonment or fine, or both, at the discretion of the court, as
follows:

(a) Imprisonment from three (3) years to five (5) years, or a fine ranging
from one hundred thousand pesos (P 100,000.00) to Three hundred
thousand pesos (P 300,000.00), or both for the first offense.

(b) Imprisonment from five (5) years and one (1) day to seven (7) years or
a fine ranging from over Three hundred thousand pesos (P
300,000.00) to One Million pesos (P 1,000,000.00), 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 One million pesos (P 1,000,000.00) to Three
million pesos (P 3,000,000.00), or both for the third or subsequent
offenses.

(4) __ Inall cases, subsidiary imprisonment in cases of insolvency.

239.2. 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 239.1. (a), (b) and (c) herein for the first, second, third and
subsequent offense, shall be imposed when the infringement is committed by:

(a) The circumvention of effective technological measures;

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(b) The removal or alteration of any electronic rights management
information from a copy of a work, sound recording, or fixation of a
performance, by a person, knowingly and without authority; or

(©) The distribution, importation for distribution, broadcast, or
communication to the public of works or copies of works, by a person
without authority, knowing that electronic rights management
information has been removed or altered without authority.

239.3. 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. 240. Affidavit Evidence. - 240.1. In an action under this Chapter, an
affidavit made before a notary public by or on behalf of the owner of the copyright in
any work or other subject matter and stating that:

(a) At the time specified therein, copyright subsisted in the work or other
‘subject matter;

(b) He or the person named therein is the owner of the copyright; and

(c) The copy of the work or other subject matter annexed thereto is a true
copy thereof.

The affidavit shall be admitted in evidence in any proceedings under this
Chapter and shall be prima facie proof of the matters therein stated until the contrary
is proved, and the court before which such affidavit is produced shall assume that
the affidavit was made by or on behalf of the owner of the copyright.

240.2, In an action under this Chapter:
(a) Copyright shall be presumed to subsist in the work or other subject
matter to which the action relates if the defendant does not put in issue

the question whether copyright subsists in the work or other subject
matter; and

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(b) Where the subsistence of the copyright is established, the plaintiff shall
be presumed to be the owner of the copyright if he claims to be the
‘owner of the copyright and the defendant does not put in issue the
question of his ownership.

(c) Where the defendant, without good faith, puts in issue the questions of
whether copyright subsists in a work or other subject matter to which
the action relates, or the ownership of copyright in such work or subject
matter, thereby occasioning unnecessary costs or delay in the
proceedings, the court may direct that any costs to the defendant in
respect of the action shall not be allowed by him and that any costs
occasioned by the defendant to other parties shall be paid by him to
such other parties.

SEC, 241, Presumption of Authorship. — 241.1. The natural person whose
name is indicated on a work in the usual manner as the author shall, in the absence
of proof to the contrary, be presumed to be the author of the work. This provision
shall be applicable even if the name is a pseudonym, where the pseudonym leaves
no doubt as to the identity of the author.

241.2. The person or body corporate whose name appears on an audiovisual
work or on sound recording in the usual manner shall, in the absence of proof to the
contrary, be presumed to be the maker of said work or the producer of said sound
recording

SEC, 242. International Registration of Works. - A statement concerning a
work, recorded in an international register in accordance with an international treaty
to which the Philippines is or may become a party, shall be construed as true until
the contrary is proved except:

(1) where the statement cannot be valid under this Act or any other law
concerning intellectual property; or

(2) where the statement is contradicted by another statement recorded in
the international register.

‘SEC. 243, Disclosure of Information. - Where any article or its packaging or
an implement for making it is seized or detained under a valid search and seizure
under this Act is, or is reasonably suspected to be, by an authorized enforcement
officer, in violation of this Act, the said officer shall, wherever reasonably practicable,
notify the owner of the copyright in question or his authorized agent of the seizure or
detention, as the case may be.

Chapter XIX
SCOPE OF APPLICATION

SEC. 244. Points of Attachment for Works under Sections 191 and 192. -
244.1. The protection afforded by this Act to copyrightable works under Sections
491 and 192 of this Act shall apply to:

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(a) — Works of authors who are nationals of, or have their habitual residence
in, the Philippines;

(b) Audio-visual works the producer of which has his headquarters or
habitual residence in the Philippines;

(c) Works of architecture erected in the Philippines or other artistic works
incorporated in a building or other structure located in the Philippines;

(d) Works first published in the Philippines; and
(e) Works first published in another country but also published in the
Philippines within thirty days, irrespective of the nationality or residence
of the authors.
244.2. The provisions of this Act shall also apply to works that are to be
protected by virtue of and in accordance with any international convention or other
international agreement to which the Philippines is a party.

SEC. 245. Points of Attachment for Performers. -The provisions of this Act
shall be extended to:

(a) Performers who are nationals of the Philippines;

(b) Performers who are not nationals of the Philippines subject to any of
the following conditions:

(1) Performance takes place in the Philippines; or

(2) Performance is incorporated in sound recordings or in
audiovisual fixations that are protected under this Act; or

(3) Performance which has not been fixed in sound recording or in
audiovisual fixations but are carried by broadcast qualifying for
protection under this Act.

SEC. 246. Points of Attachment for Sound Recordings. - The provisions of
this Act on the protection of sound recordings shall apply to:

(a) sound recordings the producers of which are nationals of the
Philippines; and

(b) sound recordings that were first published in the Philippines.

SEC. 247. Points of Attachment for Broadcasts. - 247.1. 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

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

247.2. 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.

Chapter XX
INSTITUTION OF ACTIONS

SEC. 248. Jurisdiction. — Civil or administrative actions under Chapter VIII of
Part Il, Chapters VI and VI! of Part IV and Chapter XVIII of Part V of this Act shall be
cognizable by the Regional Trial Courts or by the Office and other administrative
agencies with appropriate jurisdiction under existing laws.

SEC. 249. Damages. - No damages may be recovered under this Act after
the lapse of four (4) years from the time the cause of action arose.

Chapter XXI
MISCELLANEOUS PROVISIONS

SEC. 250. Ownership of Deposit and Instruments. — All copies deposited
and instruments in writing filed with the Bureau of Copyright and Related Rights and
in accordance with the provisions of this Act shall become the property of the
Government.

SEC. 251. Public Records. — The section or division of the Bureau of
Copyright and Related Rights charged with receiving copies and instruments
deposited and with keeping records required under this Act and everything in it shall
be opened to public inspection. The Bureau Director is empowered to issue such
safeguards and regulations as may be necessary to implement this Section.

‘SEC. 252. Compulsory License on Copyright. - 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 and as may be prescribed by the Regulations.

PART VI
FINAL PROVISIONS

SEC. 253. Adoption of intellectual Property (IP) Policies. — Schools,
universities, research and development institutions and public entities shall adopt
intellectual property policies and programs that would govern the use and creation of
intellectual property with the purpose of safeguarding the intellectual creations of the
leaming institution and its employees, and adopting locally-established industry
practice fair use guidelines. Similarly, private entities are encouraged to adopt
intellectual property policies. These policies may be developed in relation to licensing
agreements entered into for purposes of implementing the state policies under this
Act.

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SEC. 254. Equitable Principles to Govern Proceedings. — In all inter partes
proceedings in the Office under this Act, the equitable principles of laches, estoppel,
and acquiescence where applicable, may be considered and applied.

SEC, 255, Revocation of Business Permit, License, or Authority. The
appropriate agency, including local goverment units, upon recommendation of the
Office, may cancel, revoke, or suspend any business permit, license or authority of
any person, natural or juridical, who refuses or fails to comply with the decision or
order of the Director General or of any Bureau or Office of the Intellectual Property
Office of the Philippines.

SEC. 256. Reverse Reciprocity of Foreign Laws. - Any condition,
restriction, limitation, diminution, requirement, penalty or any similar burden imposed
by the law of a foreign country on a Philippine national seeking protection of
intellectual property rights in that country, shall reciprocally be enforceable upon
nationals of said country, within Philippine jurisdiction.

SEC. 257. Appeals. — 257.1. Appeals from decisions of Regional Trial Courts
shall be governed by the Rules of Court. Unless restrained by a higher court, the
judgment of the Regional Trial Court shall be executory even pending appeal under
such terms and conditions as the court may prescribe.

257.2. Unless expressly provided in this Act or other statutes, appeals from
decisions of administrative officials shall be provided in the Regulations.

SEC. 258. Applications Pending on Effective Date of Act. —
Notwithstanding the repeals under Section 263 of this Act, all pending applications
for the grant of patents and registration of utility models, layout designs of integrated
circuits, trademarks and industrial designs filed and processed, granted or
registered under the previous acts shall be proceeded and prosecuted under said
laws, unless the applicant opts the same to be processed, granted or registered
under this Act. Likewise, all existing grants and registrations under the same acts
shall continue to be enforced.

SEC. 259. 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.

SEC. 260. Public Domain. — 260.1. Patents, utility models, layout designs,
industrial designs and copyright shall belong to the public domain pursuant to the
relevant sections of Part Il - Law on Patents, Part IV- Law on Trademarks, and Part
V- Copyright and Related Rights of this Act.

260.2. The Bureau of Innovation Support and Business Development shall
create immediately and maintain an updated digital registry of all works, inventions,
industrial and lay-out designs that has become part of the public domain. The public
shall have access to the registry subject to the payment of reasonable fees.

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260.3. The Bureau of Copyright and Related Rights shall create immediately
and maintain an updated digital registry of all copyright works that has become part
of the public domain.

260.4. The contents of the registries, and the public's access thereto subject
to payment of reasonable fees, shall be prescribed in the Implementing Rules and
Regulations.

SEC, 261, Compensation Structure. - 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, otherwise known as the “Compensation and Classification Act of 1989", as
amended

SEC. 262. Separability. - If any portion or provision of this Act is
‘subsequently declared invalid or unconstitutional, other provisions hereof which are
not affected thereby shall remain in full force and effect.

SEC, 263. Repealing Clause. — 263.1, Republic Act No. 165, entitled “An Act
Creating a Patent Office, Prescribing Its Powers and Duties, Regulating the Issuance
of Patents, and Appropriating Funds Therefor’, as amended; Republic Act No. 166,
entitled “An Act to Provide for the Registration and Protection of Trade-Marks, Trade-
Names and Service-Marks, Defining Unfair Competition and False Marking and
Providing Remedies Against the Same, and for Other Purposes’, as amended;
Articles 188 and 189 of Act No. 3815, otherwise known as the “Revised Penal
Code’, as amended; Presidential Decree No. 49, series of 1972, entitled “Decree on
the Protection of Intellectual Property”, and Presidential Decree No. 285, series of
1973, entitled “Authorizing the Compulsory Licensing or Reprinting of Educational,
Scientific or Cultural Books and Materials as a Temporary or Emergency Measure
Whenever the Prices Thereof Become So Exorbitant as to be Detrimental to the
National Interest", as amended, are hereby repealed.

263.2. Republic Act No. 8293, otherwise known as the “Intellectual Property
Code of the Philippines", as amended by Republic Act No. 9150, Republic Act No.
9502 and Republic Act No. 10372, is hereby repealed.

263.3. Executive Order No. 736, series of 2008, entitled “Institutionalizing
Permanent Units to Promote, Protect and Enforce Intellectual Property Rights (IPR)
in Different Law Enforcement and Other Agencies under the Coordination of the
National Committee on Intellectual Property Rights (NCIPR)’, is hereby amended
accordingly.

263.4. All other laws, presidential decrees or issuances, executive orders,
letters of instruction, administrative orders, rules and regulations or parts thereof
which are contrary or inconsistent with any provisions of this act are hereby
repealed or amended accordingly.

SEC. 264. Effectivity. - This Act shall take effect fifteen (15) days after its
publication in the Official Gazette or in a newspaper of general circulation.

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