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MAIN LAWS ON INTELLECTUAL PROPERTY
PROMULGATED BY THE PHILIPPINE LEGISLATURE1
TABLE OF CONTENTS
THE CURRENT LAW
REPUBLIC ACT NO. 8293
(INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES)
PART I.
THE INTELLECTUAL PROPERTY OFFICE
PART II.
THE LAW ON PATENTS
Chapter I.
GENERAL PROVISIONS
Chapter II.
PATENTABILITY
Chapter III.
RIGHT TO A PATENT
Chapter IV.
PATENT APPLICATION
Chapter V.
PROCEDURE FOR GRANT OF PATENT
7
7
7
18
18
19
22
23
25
1
Compilation version 27 December 2019 by Angelo (ODG). - The layout in this version has been
improved upon since the last. Amendments introduced by PD No. 1988 to PD No. 49 have been
incorporated.
N.B. As regards the text of R.A. No 8293 as amended, it may be considered as the final version.
However, as regards the previous laws on IP, further research into the primary sources needs to be done
to determine their accuracy.
1
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Chapter VI.
CANCELLATION OF PATENTS AND
SUBSTITUTION OF PATENTEE
Chapter VII.
REMEDIES OF A PERSON WITH A RIGHT TO A PATENT
Chapter VIII.
RIGHTS OF PATENTEES AND INFRINGEMENT OF PATENTS
Chapter IX.
VOLUNTARY LICENSING
Chapter X.
COMPULSORY LICENSING
Chapter XI.
ASSIGNMENT AND TRANSMISSION OF RIGHTS
Chapter XII.
REGISTRATION OF UTILITY MODELS
Chapter XIII.
INDUSTRIAL DESIGN AND LAYOUT-DESIGNS (TOPOGRAPHIES)
OF INTEGRATED CIRCUITS
PART III.
THE LAW ON TRADEMARKS, SERVICE MARKS
AND TRADE NAMES
PART IV.
THE LAW ON COPYRIGHT
Chapter I.
PRELIMINARY PROVISIONS
Chapter II.
ORIGINAL WORKS
Chapter III.
DERIVATIVE WORKS
Chapter IV.
WORKS NOT PROTECTED
Chapter V.
COPYRIGHT OR ECONOMIC RIGHTS
Chapter VI.
OWNERSHIP OF COPYRIGHT
Chapter VII.
TRANSFER, ASSIGNMENT AND LICENSING OF COPYRIGHT
30
32
33
40
43
49
51
53
61
83
83
86
87
88
89
89
91
2
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Chapter VIII.
LIMITATIONS ON COPYRIGHT
Chapter IX.
DEPOSIT AND NOTICE
Chapter X.
MORAL RIGHTS
Chapter XI.
RIGHTS TO PROCEEDS IN SUBSEQUENT TRANSFERS
Chapter XII.
RIGHTS OF PERFORMERS, PRODUCERS OF SOUND RECORDINGS AND
BROADCASTING ORGANIZATIONS
Chapter XIII.
PRODUCERS OF SOUND RECORDINGS
Chapter XIV.
BROADCASTING ORGANIZATIONS
Chapter XV.
LIMITATIONS ON PROTECTION
Chapter XVI.
TERM OF PROTECTION
Chapter XVII.
INFRINGEMENT
Chapter XVIII.
SCOPE OF APPLICATION
Chapter XIX.
INSTITUTION OF ACTIONS
Chapter XX.
MISCELLANEOUS PROVISIONS
PART V.
FINAL PROVISIONS
PREVIOUS LAWS
REPUBLIC ACT NO. 165 (PATENT LAW)
Chapter I.
Organization and Operation
Chapter II.
Inventions Patentable
Chapter III.
Application for Patent
92
97
97
99
100
103
104
104
104
107
112
113
114
115
119
119
119
120
122
3
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Chapter IV.
Issuance of Patent
Chapter V.
Term of Patent
Chapter VI.
Surrender, Correction and Amendments of Patent
Chapter VII.
Cancellation of Patents
Chapter VIII.
Licensing
Article One
Voluntary Licensing
Article Two
Compulsory Licensing
Article Three.
Common Provisions
Chapter IX.
Rights of Patentees and Infringement of Patents
Chapter X.
Actions and Remedies for Infringement
Chapter XI.
Assignment and Transmission of Rights
Chapter XII.
Designs and Utility Models
Chapter XIII.
Review of Orders or Decisions of Director
Chapter XIV.
Penalty for False Marking
Chapter XVI.
Miscellaneous
REPUBLIC ACT NO. 166 (TRADEMARK LAW)
Chapter I.
Powers, Duties and Functions of Patent Office
Chapter II.
Registration of Marks and Trade-Names
Chapter II-A.
The Principal Register
124
126
127
129
131
131
133
137
138
140
142
143
145
147
149
152
152
153
154
4
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Chapter III.
Renewals of Certificate of Registration
Chapter IV.
Cancellation of Registration
Chapter IV-A.
The Supplemental Register
Chapter V.
Rights and Remedies
Chapter VI.
Unfair Competition
Chapter VII.
False Designation of Origin and False Description
Chapter VIII.
Assignment and Transmission of Rights
Chapter IX.
Review of Orders or Decisions of Director
Chapter X.
Importations Prohibited
Chapter XI.
Provisions in Reference to Foreign Industrial Property
Chapter XII.
Construction and Definitions
Chapter XIII.
Fees
Chapter XIV.
Miscellaneous Provisions
PRESIDENTIAL DECREE NO. 49
(DECREE ON THE PROTECTION OF INTELLECTUAL PROPERTY)
Chapter I.
Preliminary Provisions
Chapter II.
Copyright
Article I
Scope and beneficiaries of copyright
Article II.
Limitations on Copyright
159
160
161
162
165
166
166
167
167
168
170
170
172
174
174
175
176
178
5
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Article III.
Transfer of Work and Copyright
Article IV.
Duration of Copyright
Article V.
Deposit and Notice
Article VI.
Infringement
Chapter III.
Right to Proceeds in Subsequent Transfers
Chapter IV.
Moral Rights
Chapter V.
Rights of Performers, Producers of Sounds, Recordings and
Broadcasting Organizations
Article I.
Definition of Terms
Article II.
Performers
Article III.
Producers of Sound Recordings
Article IV.
Broadcasting Organizations
Article V.
Term of Protection
Article VI.
Penalty
Chapter VII.
Institution of Actions and Proceedings
Chapter VIII.
Miscellaneous Provisions
Chapter IX.
Final Provisions
180
181
182
182
185
185
188
188
188
189
190
191
191
192
193
193
6
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THE CURRENT LAW
REPUBLIC ACT NO. 8293
(INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES)2
AN ACT PRESCRIBING THE INTELLECTUAL PROPERTY CODE AND ESTABLISHING THE
INTELLECTUAL PROPERTY OFFICE, PROVIDING FOR ITS POWERS AND FUNCTIONS,
AND FOR OTHER PURPOSES
PART I.
THE INTELLECTUAL PROPERTY OFFICE
Sec. 1.
Philippines”.
Title. - This Act shall be known as the “Intellectual Property Code of the
Sec. 2.
Declaration of State Policy. - The State recognizes that an effective
intellectual and industrial property system is vital to the development of domestic and creative
activity, facilitates transfer of technology, attracts foreign investments, and ensures market
access for our products. It shall protect and secure the exclusive rights of scientists, inventors,
artists and other gifted citizens to their intellectual property and creations, particularly when
beneficial to the people, for such periods as provided in this Act.
The use of intellectual property bears a social function. To this end, the State shall promote
the diffusion of knowledge and information for the promotion of national development and
2
The law is a consolidation of Senate Bill No. 1719 and House Bill No. 8090 by the Tenth Congress and
is a consolidation of all laws on Intellectual Property then in force. See Section 240 on repeals.
Current amendments:
1. Republic Act No. 9150 – AN ACT PROVIDING FOR THE PROTECTION OF LAYOUT-DESIGNS
(TOPOGRAPHIES) OF INTEGRATED CIRCUITS, AMENDING FOR THE PURPOSE CERTAIN
SECTIONS OF REPUBLIC ACT NO. 8293, OTHERWISE KNOWN AS THE INTELLECTUAL
PROPERTY CODE OF THE PHILIPPINES AND FOR OTHER PURPOSES
2. Republic Act No. 9502 – AN ACT PROVIDING FOR CHEAPER AND QUALITY MEDICINES,
AMENDING FOR THE PURPOSE REPUBLIC ACT NO. 8293 OR THE INTELLECTUAL
PROPERTY CODE, REPUBLIC ACT NO. 6675 OR THE GENERICS ACT OF 1988, AND
REPUBLIC ACT NO. 5921 OR THE PHARMACY LAW, AND FOR OTHER PURPOSES
3. Republic Act. No. 10372 – AN ACT AMENDING CERTAIN PROVISIONS OF REPUBLIC ACT NO.
8293, OTHERWISE KNOWN AS THE “INTELLECTUAL PROPERTY CODE OF THE
PHILIPPINES”. AND FOR OTHER PURPOSES
7
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progress and the common good.
It is also the policy of the State to streamline administrative procedures of registering
patents, trademarks and copyright, to liberalize the registration on the transfer of technology,
and to enhance the enforcement of intellectual property rights in the Philippines. (n)
Sec. 3.
International Conventions and Reciprocity. - 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. (n)
Sec. 4.
a)
b)
c)
d)
e)
f)
g)
Definitions. - 4.1. The term “intellectual property rights” consists of:
Copyright and Related Rights;
Trademarks and Service Marks;
Geographic Indications;
Industrial Designs;
Patents;
Layout-Designs (Topographies) of Integrated Circuits; and
Protection of Undisclosed Information (n, TRIPS).
4.2. The term "technology transfer arrangements" refers to contracts or agreements
involving the transfer of systematic knowledge for the manufacture of a product, the application
of a process, or rendering of a service including management contracts; and the transfer,
assignment or licensing of all forms of intellectual property rights, including licensing of
computer software except computer software developed for mass market.
4.3. The term "Office" refers to the Intellectual Property Office created by this Act.
4.4. The term "IPO Gazette" refers to the gazette published by the Office under this Act. (n)
Sec. 5.
Functions of the Intellectual Property Office (IPO). –
5.1. To administer and implement the State policies declared in this Act, there is hereby
created the Intellectual Property Office (IPO) which shall have the following functions:
a) Examine applications for grant of letters patent for inventions and register utility models
and industrial designs;
8
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b) Examine applications for the registration of marks, geographic indication, integrated
circuits;
c) Register technology transfer arrangements and settle disputes involving technology
transfer payments covered by the provisions of Part II, Chapter IX on Voluntary
Licensing and develop and implement strategies to promote and facilitate technology
transfer;
d) Promote the use of patent information as a tool for technology development;
e) Publish regularly in its own publication the patents, marks, utility models and industrial
designs, issued and approved, and the technology transfer arrangements registered;
f) Administratively adjudicate contested proceedings affecting intellectual property rights;
and
g) Coordinate with other government agencies and the private sector efforts to formulate
and implement plans and policies to strengthen the protection of intellectual property
rights in the country.
5.2. The Office shall have custody of all records, books, drawings, specifications,
documents, and other papers and things relating to intellectual property rights applications
filed with the Office. (n)
Sec. 6.
The Organizational Structure of the IPO.3 –
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)
b)
c)
d)
e)
f)
g)
The Bureau of Patents;
The Bureau of Trademarks;
The Bureau of Legal Affairs;
The Documentation, Information and Technology Transfer Bureau;
The Management Information System and EDP Bureau;
The Administrative, Financial and Personnel Services Bureau; and
The Bureau of Copyright and Other Related Rights.
6.3. The Director General, Deputies Director General, Directors and Assistant Directors shall
be appointed by the President, and the other officers and employees of the Office by the
3
As amended by R.A. No. 10372
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Secretary of Trade and Industry, conformably with and under the Civil Service Law. (n)
Sec. 7.
The Director General and Deputies Director General.4 –
7.1. 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 the objectives, policies, plans, programs and
projects of the Office: Provided, That in the exercise of the authority to propose policies
and standards in relation to the following: (1) the effective, efficient, and economical
operations of the Office requiring statutory enactment; (2) coordination with other
agencies of government in relation to the enforcement of intellectual property rights; (3)
the recognition of attorneys, agents, or other persons representing applicants or other
parties before the Office; and (4) the establishment of fees for the filing and processing
of an application for a patent, utility model or industrial design or mark or a collective
mark, geographic indication and other marks of ownership, and for all other services
performed and materials furnished by the Office, the Director General shall be subject to
the supervision of the Secretary of Trade and Industry;
b) Exercise exclusive appellate jurisdiction over all decisions rendered by the Director of
Legal Affairs, the Director of Patents, the Director of Trademarks, the Director of
Copyright and Other Related Rights, and the Director of the Documentation, Information
and Technology Transfer Bureau. The decisions of the Director General in the exercise
of his appellate jurisdiction in respect of the decisions of the Director of Patents, the
Director of Trademarks and the Director of Copyright and Other Related Rights shall be
appealable to the Court of Appeals in accordance with the Rules of Court; and those in
respect of the decisions of the Director of Documentation, Information and Technology
Transfer Bureau shall be appealable to the Secretary of Trade and Industry;
c) Undertake enforcement functions supported by concerned agencies such as the
Philippine National Police, the National Bureau of Investigation, the Bureau of Customs,
the Optical Media Board, and the local government units, among others;
d) Conduct visits during reasonable hours to establishments and businesses engaging in
activities violating intellectual property rights and provisions of this Act based on report,
information or complaint received by the office; and
e) Such other functions in furtherance of protecting IP rights and objectives of this Act.
4
As amended by R.A. No. 10372
10
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7.2. 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.
7.3. Term of Office. - The Director General and the Deputies Director General shall be
appointed by the President for a term of five (5) years and shall be eligible for reappointment
only once: Provided, That the first Director General shall have a first term of seven (7) years.
Appointment to any vacancy shall be only for the unexpired term of the predecessor.
7.4. The Office of the Director General. - The Office of the Director General shall consist of
the Director General and the Deputies Director General, their immediate staff and such Offices
and Services that the Director General will set up to support directly the Office of the Director
General. (n)
Sec. 8.
functions:
The Bureau of Patents. - The Bureau of Patents shall have the following
8.1. Search and examination of patent applications and the grant of patents;
8.2. Registration of utility models, industrial designs, and integrated circuits; and
8.3. Conduct studies and researches in the field of patents in order to assist the Director
General in formulating policies on the administration and examination of patents. (n)
Sec. 9.
The Bureau of Trademarks. - The Bureau of Trademarks shall have the
following functions:
9.1. Search and examination of the applications for the registration of marks, geographic
indications and other marks of ownership and the issuance of the certificates of registration;
and
9.2. Conduct studies and researches in the field of trademarks in order to assist the
Director General in formulating policies on the administration and examination of trademarks.
(n)
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Sec. 9A.
The Bureau of Copyright and Other Related Rights.5 - The Bureau of Copyright
and Other Related Rights shall have the following functions:
9A.1. Exercise original jurisdiction to resolve disputes relating to the terms of a license
involving the author’s right to public performance or other communication of his work;
9A.2. Accept, review and decide on applications for the accreditation of collective
management organizations or similar entities;
9A.3. Conduct studies and researches in the field of copyright and related rights; and
9A.4. Provide other copyright and related rights service and charge reasonable fees
therefor.
Sec. 10.
The Bureau of Legal Affairs. - The Bureau of Legal Affairs shall have the
following functions:
10.1. Hear and decide opposition to the application for registration of marks; cancellation of
trademarks; subject to the provisions of Section 64, cancellation of patents, utility models, and
industrial designs; and petitions for compulsory licensing of patents;
10.2.
(a) Exercise original jurisdiction in administrative complaints for violations of laws
involving intellectual property rights: Provided, That its jurisdiction is limited to
complaints where the total damages claimed are not less than Two hundred
thousand pesos (Php 200,000): Provided further, That availment of the provisional
remedies may be granted in accordance with the Rules of Court. The Director of
Legal Affairs shall have the power to hold and punish for contempt all those who
disregard orders or writs issued in the course of the proceedings. (n)
(b) After formal investigation, the Director for Legal Affairs may impose one (1) or more
of the following administrative penalties:
5
(i)
The issuance of a cease and desist order which shall specify the acts that the
respondent shall cease and desist from and shall require him to submit 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
Introduced by R.A. No. 10372
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following:
(1) An assurance to comply with the provisions of the intellectual property law
violated;
(2) An assurance 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 Director of Legal Affairs may also require the respondent to submit
periodic compliance reports and file a bond to guarantee compliance of his
undertaking;
(iii)
The condemnation or seizure of products which are subject of the offense. The
goods seized hereunder shall be disposed of in such manner as may be
deemed appropriate by the Director of Legal Affairs, such as by sale, donation
to distressed local governments or to charitable or relief institutions,
exportation, recycling into other goods, or any combination thereof, under
such guidelines as he may provide;
(iv)
The forfeiture of paraphernalia and all real and personal properties which have
been used in the commission of the offense;
(v)
The imposition of administrative fines in such amount as deemed reasonable
by the Director of Legal Affairs, which shall in no case be less than Five
thousand pesos (Php 5,000) nor more than One hundred fifty thousand pesos
(Php 150,000). In addition, an additional fine of not more than One thousand
pesos (Php 1,000) shall be imposed for each day of continuing violation;
(vi)
The cancellation of any permit, license, authority, or registration which may
have been granted by the Office, or the suspension of the validity thereof for
such period of time as the Director of Legal Affairs may deem reasonable
which shall not exceed one (1) year;
(vii) The withholding of any permit, license, authority, or registration which is being
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secured by the respondent from the Office;
(viii) The assessment of damages;
(ix)
Censure; and
(x)
Other analogous penalties or sanctions. (Sec. 6, 7, 8, and 9, Executive Order
No. 913 [1983] a)
10.3. The Director General may by Regulations establish the procedure to govern the
implementation of this Section. (n)
Sec. 11.
The Documentation, Information and Technology Transfer Bureau.6 - The
Documentation, Information and Technology Transfer Bureau shall have the following functions:
11.1. Support the search and examination activities of the Office through the following
activities:
(a) Maintain and upkeep classification systems whether they be national or international
such as the International Patent Classification (IPC) system;
(b) Provide advisory services for the determination of search patterns;
(c) Maintain search files and search rooms and reference libraries; and
(d) Adapt and package industrial property information.
11.2. Establish networks or intermediaries or regional representatives;
11.3. Educate the public and build awareness on intellectual property through the conduct
of seminars and lectures, and other similar activities;
11.4. Establish working relations with research and development institutions as well as with
local and international intellectual property professional groups and the like;
11.5. Perform state-of-the-art searches;
11.6. Promote the use of patent information as an effective tool to facilitate the
development of technology in the country;
11.7. Provide technical, advisory, and other services relating to the licensing and promotion
of technology, and carry out an efficient and effective program for technology transfer; and
6
Otherwise called the “Innovation Bureau” by the IPOPHL
14
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11.8. Register technology transfer arrangements, and settle disputes involving technology
transfer payments. (n)
Sec. 12.
The Management Information Services and EDP Bureau.7 - The
Management Information Services and EDP Bureau shall:
12.1. Conduct automation planning, research and development, testing of systems,
contracts with firms, contracting, purchase and maintenance of equipment, design and
maintenance of systems, user consultation, and the like; and
12.2. Provide management information support and service to the Office. (n)
Sec. 13.
Bureau. -
The Administrative, Financial and Human Resource Development Service
13.1. 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 Office's
obligations, office maintenance, proper safety and security, and other utility services;
and comply with government regulatory requirements in the areas of performance
appraisal, compensation and benefits, employment records and reports;
(b) Receive all applications filed with the Office and collect fees therefore; and
(c) Publish patent applications and grants, trademark applications, and registration of
marks, industrial designs, utility models, geographic indication, and lay-out-designs of
integrated circuits registrations.
13.2. The Patent and Trademark Administration Services shall perform the following
functions among others:
(a) Maintain registers of assignments, mergings, licenses, and bibliographic on patents and
trademarks;
(b) Collect maintenance fees, issue certified copies of documents in its custody and
perform similar other activities; and
(c) Hold in custody all the applications filed with the office, and all patent grants, certificate
7
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of registrations issued by the office, and the like.
13.3. The Financial Service shall formulate and manage a financial program to ensure
availability and proper utilization of funds; provide for an effective monitoring system of the
financial operations of the Office; and
13.4. The Human Resource Development Service shall design and implement human
resource development plans and programs for the personnel of the Office; provide for present
and future manpower needs of the organization; maintain high morale and favorable employee
attitudes towards the organization through the continuing design and implementation of
employee development programs. (n)
Sec. 14.
Use of Intellectual Property Rights Fees by the IPO. -
14.1. 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, like upgrading of its
facilities, equipment outlay, human resource development, and the acquisition of the
appropriate office space, among others, to improve the delivery of its services to the public.
This amount, which shall be in addition to the Office's annual budget, shall be deposited and
maintained in a separate account or fund, which may be used or disbursed directly by the
Director General.
14.2. After five (5) years from the coming into force of this Act, the Director General shall,
subject to the approval of the Secretary of Trade and Industry, determine if the fees and
charges mentioned in Subsection 14.1 hereof that the Office shall collect 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 said Subsection 14.1 but shall forthwith, cease to receive any
funds from the annual budget of the National Government; if not, the provisions of said
Subsection 14.1 shall continue to apply until such time when the Director General, subject to
the approval of the Secretary of Trade and Industry, certifies that the above-stated fees and
charges the Office shall collect are enough to fund its operations. (n).
Sec. 15.
Special Technical and Scientific Assistance. - The Director General is
empowered to obtain the assistance of technical, scientific or other qualified officers and
employees of other departments, bureaus, offices, agencies and instrumentalities of the
Government, including corporations owned, controlled or operated by the Government, when
deemed necessary in the consideration of any matter submitted to the Office relative to the
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enforcement of the provisions of this Act. (Sec. 3, R.A. No. 165a)
Sec. 16.
Seal of Office. - The Office shall have a seal, the form and design of which
shall be approved by the Director General. (Sec. 4, R.A. No. 165a)
Sec. 17.
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. 5, R.A. No. 165a)
Sec. 18.
The IPO Gazette. - All matters required to be published under this Act shall
be published in the Office's own publication to be known as the IPO Gazette. (n)
Sec. 19.
Disqualification of Officers and Employees of the Office. - All officers and
employees of the Office shall not apply or act as an attorney or patent agent of an application
for a grant of patent, for the registration of a utility model, industrial design or mark 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. (Sec. 77,
R.A. No. 165a)
PART II.
THE LAW ON PATENTS
Chapter I.
GENERAL PROVISIONS
Sec. 20.
Definition of Terms Used in Part II, The Law on Patents. – As used in Part II,
the following terms shall have the following meanings:
20.1. "Bureau" means the Bureau of Patents;
20.2. "Director" means the Director of Patents;
20.3. "Regulations" means the Rules of Practice in Patent Cases formulated by the Director
of Patents and promulgated by the Director General;
20.4. "Examiner" means the patent examiner;
20.5. "Patent application" or "application" means an application for a patent for an
invention except in Chapters XII and XIII, where application means an application for a utility
model and an industrial design, respectively; and
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20.6. "Priority date" means the date of filing of the foreign application for the same
invention referred to in Section 31 of this Act. (n)
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Chapter II.
PATENTABILITY
Sec. 21.
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. 7, R.A. No.165a)
Sec. 22.
protection:
Non-Patentable Inventions. - The following shall be excluded from patent
22.1. Discoveries, scientific theories and mathematical methods, and in the case of drugs
and medicines, the mere discovery of a new form or new property of a 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.
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;8
22.2. Schemes, rules and methods of performing mental acts, playing games or doing
business, and programs for computers;
22.3 Methods for treatment of the human or animal body by surgery or therapy and
diagnostic methods practiced on the human or animal body. This provision shall not apply to
products and composition for use in any of these methods;
22.4. 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 subsection shall not preclude Congress to consider the enactment of
a law providing sui generis protection of plant varieties and animal breeds and a system of
community intellectual rights protection;
8
As amended by R.A. No. 9502
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22.5. Aesthetic creations; and
22.6. Anything which is contrary to public order or morality. (Sec. 8, R.A. No. 165a)
Sec. 23.
Novelty. - An invention shall not be considered new if it forms part of a prior
art. (Sec. 9, R.A. No. 165a)
Sec. 24.
Prior Art. - Prior art shall consist of:
24.1. Everything which has been made available to the public anywhere in the world, before
the filing date or the priority date of the application claiming the invention; and
24.2. The whole contents of an application for a patent, utility model, or industrial design
registration, published in accordance with this Act, filed or effective in the Philippines, with a
filing or priority date that is earlier than the filing or priority date of the application: Provided,
That the application which has validly claimed the filing date of an earlier application under
Section 31 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. 9, R.A. No. 165a)
Sec. 25.
Non-Prejudicial Disclosure. –
25.1. 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
(c) A third party which obtained the information directly or indirectly from the inventor.
25.2. For the purposes of Subsection 25.1, "inventor" also means any person who, at the
filing date of application, had the right to the patent. (n)
Sec. 26.
Inventive Step.9 - 26.1 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
9
as amended by R.A. No. 9502
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priority date of the application claiming the invention. (n)
26.2 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. 27.
Industrial Applicability. - An invention that can be produced and used in any
industry shall be industrially applicable. (n)
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Chapter III.
RIGHT TO A PATENT
Sec. 28.
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. 10, R.A. No. 165a)
Sec. 29.
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. (3rd
sentence, Sec. 10, R.A. No. 165a.)
Sec. 30.
Inventions Created Pursuant to a Commission. –
30.1. The person who commissions the work shall own the patent, unless otherwise
provided in the contract.
30.2. 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. (n)
Sec. 31.
Right of Priority. - An application for patent filed by any person who has
previously applied for the same invention in another country which by treaty, convention, or law
affords similar privileges to Filipino citizens, shall be considered as filed as of the date of filing
the foreign application: Provided, That: (a) the local application expressly claims priority; (b) it is
filed within twelve (12) months from the date the earliest foreign application was filed; and (c) a
certified copy of the foreign application together with an English translation is filed within six (6)
months from the date of filing in the Philippines. (Sec. 15, R.A. No. 165a)
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Chapter IV.
PATENT APPLICATION
Sec. 32.
The Application. - 32.1. The patent application shall be in Filipino or English
and shall contain the following:
(a) A request for the grant of a patent;
(b) A description of the invention;
(c) Drawings necessary for the understanding of the invention;
(d) One or more claims; and
(e) An abstract.
32.2. No patent may be granted unless the application identifies the inventor. If the
applicant is not the inventor, the Office may require him to submit said authority. (Sec. 13, R.A.
No. 165a)
Sec. 33.
Appointment of Agent or Representative. - An applicant who is not a resident
of the Philippines must appoint and maintain a resident agent or representative in the
Philippines upon whom notice or process for judicial or administrative procedure relating to the
application for patent or the patent may be served. (Sec. 11, R.A. No. 165a)
Sec. 34.
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. (n)
Sec. 35.
Disclosure and Description of the Invention. –
35.1. Disclosure. - The application shall disclose the invention in a manner sufficiently clear
and complete for it to be carried out by a person skilled in the art. Where the application
concerns a microbiological process or the product thereof and involves the use of a
micro-organism which cannot be sufficiently disclosed in the application in such a way as to
enable the invention to be carried out by a person skilled in the art, and such material is not
available to the public, the application shall be supplemented by a deposit of such material
with an international depository institution.
35.2. Description. - The Regulations shall prescribe the contents of the description and the
order of presentation. (Sec. 14, R.A. No. 165a)
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Sec. 36.
The Claims. –
36.1. 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.
36.2. The Regulations shall prescribe the manner of the presentation of claims. (n)
Sec. 37.
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. (n)
Sec. 38.
Unity of Invention. –
38.1. The application shall relate to one invention only or to a group of inventions forming a
single general inventive concept.
38.2. 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
further, That each divisional application shall not go beyond the disclosure in the initial
application.
38.3. 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. 17, R.A. No.
165a)
Sec. 39.
Information Concerning Corresponding Foreign Application for Patents. - The
applicant shall, at the request of the Director, furnish him with the date and number of any
application for a patent filed by him abroad, hereafter referred to as the "foreign application,"
relating to the same or essentially the same invention as that claimed in the application filed
with the Office and other documents relating to the foreign application. (n)
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Chapter V.
PROCEDURE FOR GRANT OF PATENT
Sec. 40.
Filing Date Requirements. –
40.1. The filing date of a patent application shall be the date of receipt by the Office of at
least the following elements:
(a) An express 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.
40.2. If any of these elements is not submitted within the period set by the Regulations, the
application shall be considered withdrawn. (n)
Sec. 41.
According a Filing Date. - The Office shall examine whether the patent
application satisfies the requirements for the grant of date of filing as provided in Section 40
hereof. 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 40, 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. (n)
Sec. 42.
Formality Examination. –
42.1. 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 32 and the Regulations within the prescribed period,
otherwise the application shall be considered withdrawn.
42.2. The Regulations shall determine the procedure for the re-examination and revival of
an application as well as the appeal to the Director of Patents from any final action by the
examiner. (Sec. 16, R.A. No. 165a)
Sec. 43.
Classification and Search. - An application that has complied with the formal
requirement shall be classified and a search conducted to determine the prior art. (n)
Sec. 44.
Publication of Patent Application. –
44.1. The patent application shall be published in the IPO Gazette together with a search
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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.
44.2. After publication of a patent application, any interested party may inspect the
application documents filed with the Office.
44.3. The Director General, subject to the approval of the Secretary of Trade and Industry,
may prohibit or restrict the publication of an application, if in his opinion, to do so would be
prejudicial to the national security and interests of the Republic of the Philippines. (n)
Sec. 45.
Confidentiality Before Publication. - 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. (n)
Sec. 46.
Rights Conferred by a Patent Application After Publication. - The applicant
shall have all the rights of a patentee under Section 76 against any person who, without his
authorization, exercised any of the rights conferred under Section 71 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:
46.1. Actual knowledge that the invention that he was using was the subject matter of a
published application; or
46.2. 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. (n)
Sec. 47.
Observation by Third Parties. - Following the publication of the patent
application, any person may present observations in writing concerning the patentability of the
invention. Such observations shall be communicated to the applicant who may comment on
them. The Office shall acknowledge and put such observations and comment in the file of the
application to which it relates. (n)
Sec. 48.
Request for Substantive Examination. –
48.1. The application shall be deemed withdrawn unless within six (6) months from the date
of publication under Section 41, a written request to determine whether a patent application
meets the requirements of Sections 21 to 27 and Sections 32 to 39 and the fees have been
paid on time.
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48.2. Withdrawal of the request for examination shall be irrevocable and shall not authorize
the refund of any fee. (n)
Sec. 49.
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. (n)
Sec. 50.
Grant of Patent. –
50.1. If the application meets the requirements of this Act, the Office shall grant the patent:
Provided, That all the fees are paid on time.
50.2. If the required fees for grant and printing are not paid in due time, the application shall
be deemed to be withdrawn.
50.3. A patent shall take effect on the date of the publication of the grant of the patent in
the IPO Gazette. (Sec. 18, R.A. No. 165a)
Sec. 51.
Refusal of the Application. –
51.1. The final order of refusal of the examiner to grant the patent shall be appealable to the
Director in accordance with this Act.
51.2. The Regulations shall provide for the procedure by which an appeal from the order of
refusal from the Director shall be undertaken. (n)
Sec. 52.
Publication Upon Grant of Patent. –
52.1. The grant of the patent together with other related information shall be published in
the IPO Gazette within the time prescribed by the Regulations.
52.2. Any interested party may inspect the complete description, claims, and drawings of
the patent on file with the Office. (Sec. 18, R.A. No. 165a)
Sec. 53.
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. (Secs. 19 and 20, R.A. No. 165a)
Sec. 54.
Term of Patent. - The term of a patent shall be twenty (20) years from the
filing date of the application. (Sec. 21, R.A. No. 165a)
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Sec. 55.
Annual Fees. –
55.1. 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 44
hereof, and on each subsequent anniversary of such date. Payment may be made within three
(3) months before the due date. The obligation to pay the annual fees shall terminate should the
application be withdrawn, refused, or cancelled.
55.2. 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 be published in the IPO Gazette and the lapse
shall be recorded in the Register of the Office.
55.3. 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. 22, R.A. No. 165a)
Sec. 56.
Surrender of Patent. –
56.1. 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.
56.2. 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.
56.3. 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 IPO 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. 24, R.A. No. 165a)
Sec. 57.
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. 25,
R.A. No. 165)
Sec. 58.
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
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patent of a formal and clerical nature, not incurred through the fault of the Office. (Sec. 26, R.A.
No. 165a)
Sec. 59.
Changes in Patents. -
59.1. 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 letter (b), made in good faith:
Provided, That where the change would result in a broadening of the extent of
protection conferred by the patent, no request may be made after the expiration of two
(2) years from the grant of a patent and the change shall not affect the rights of any third
party which has relied on the patent, as published.
59.2. 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.
59.3. If, and to the extent to which the Office changes the patent according to this section,
it shall publish the same. (n)
Sec. 60.
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 IPO Gazette and
copies of the patent kept or furnished by the Office shall include a copy of the certificate of
amendment or correction. (Sec. 27, R.A. No. 165)
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Chapter VI.
CANCELLATION OF PATENTS AND
SUBSTITUTION OF PATENTEE
Sec. 61.
Cancellation of Patents. –
61.1. Any interested person may, upon payment of the required fee, petition to cancel the
patent or any claim thereof, or parts of the claim, on any of the following grounds:
(a) That what is claimed as the invention is not new or patentable;
(b) 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; or
(c) That the patent is contrary to public order or morality.
61.2. Where the grounds for cancellation relate to some of the claims or parts of the claim,
cancellation may be effected to such extent only. (Secs. 28 and 29, R.A. No. 165a)
Sec. 62.
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. 30, R.A. No. 165)
Sec. 63.
Notice of Hearing. - Upon filing of a petition for cancellation, the Director of
Legal Affairs shall forthwith serve notice of the filing thereof upon the patentee and all persons
having grants or licenses, or any other right, title or interest in and to the patent and the
invention covered thereby, as appears of record in the Office, and of notice of the date of
hearing thereon on such persons and the petitioner. Notice of the filing of the petition shall be
published in the IPO Gazette. (Sec. 31, R.A. No. 165a)
Sec. 64.
Committee of Three. - In cases involving highly technical issues, on motion
of any party, the Director of Legal Affairs may order that the petition be heard and decided by a
committee composed of the Director of Legal Affairs as chairman and two (2) members who
have the experience or expertise in the field of technology to which the patent sought to be
cancelled relates. The decision of the committee shall be appealable to the Director General. (n)
Sec. 65.
Cancellation of the Patent. –
65.1. If the Committee finds that a case for cancellation has been proved, it shall order the
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patent or any specified claim or claims thereof cancelled.
65.2. 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.
65.3. If the fee for the printing of a new patent is not paid in due time, the patent should be
revoked.
65.4. If the patent is amended under Subsection 65.2 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. (n)
Sec. 66.
Effect of Cancellation of Patent or Claim. - The rights conferred by the patent
or any specified claim or claims cancelled shall terminate. Notice of the cancellation shall be
published in the IPO Gazette. Unless restrained by the Director General, the decision or order
to cancel by Director of Legal Affairs shall be immediately executory even pending appeal.
(Sec. 32, R.A. No. 165a)
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Chapter VII.
REMEDIES OF A PERSON WITH A RIGHT TO A PATENT
Sec. 67.
Patent Application by Persons Not Having the Right to a Patent. –
67.1. If a person referred to in Section 29 other than the applicant, is declared by final court
order or decision as having the right to the patent, such person may, within three (3) months
after the decision has become final:
(a) Prosecute the application as his own application in place of the applicant;
(b) File a new patent application in respect of the same invention;
(c) Request that the application be refused; or
(d) Seek cancellation of the patent, if one has already been issued.
67.2. The provisions of Subsection 38.2 shall apply mutatis mutandis to a new application
filed under Subsection 67.1(b). (n)
Sec. 68.
Remedies of the True and Actual Inventor. - If a person, who was deprived
of the patent without his consent or through fraud is declared by final court order or decision to
be the true and actual inventor, the court shall order for his substitution as patentee, or at the
option of the true inventor, cancel the patent, and award actual and other damages in his favor
if warranted by the circumstances. (Sec. 33, R.A. No. 165a)
Sec. 69.
Publication of the Court Order. - The court shall furnish the Office a copy of
the order or decision referred to in Sections 67 and 68, which shall be published in the IPO
Gazette within three (3) months from the date such order or decision became final and
executory, and shall be recorded in the register of the Office. (n)
Sec. 70.
Time to File Action in Court. - The actions indicated in Sections 67 and 68
shall be filed within one (1) year from the date of publication made in accordance with Sections
44 and 51, respectively. (n)
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Chapter VIII.
RIGHTS OF PATENTEES AND INFRINGEMENT OF PATENTS
Sec. 71.
Rights Conferred by Patent. –
71.1. A patent shall confer on its owner the following exclusive rights:
(a) Where the subject matter of a patent is a product, to restrain, prohibit and prevent any
unauthorized person or entity from making, using, offering for sale, selling or importing
that product;
(b) Where the subject matter of a patent is a process, to restrain, prevent or prohibit any
unauthorized person or entity from using the process, and from manufacturing, dealing
in, using, selling or offering for sale, or importing any product obtained directly or
indirectly from such process.
71.2. Patent owners shall also have the right to assign, or transfer by succession the patent,
and to conclude licensing contracts for the same. (Sec. 37, R.A. No. 165a)
Sec. 72.
Limitations of Patent Rights.10 - The owner of a patent has no right to prevent
third parties from performing, without his authorization, the acts referred to in Section 71 hereof
in the following circumstances:
72.1. 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: 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;
72.2. 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;
72.3. Where the act consists of making or using exclusively for experimental use of the
invention for scientific purposes or educational purposes and such other activities directly
10
as amended by R.A. No. 9502
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related to such scientific or educational experimental use;
72.4. 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 government
regulatory agencies required under any law of the Philippines or of another country that
regulates the manufacture, construction, use or sale of any product: Provided, That, in order to
protect the data submitted by the original patent holder from unfair commercial use provided in
Article 39.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS
Agreement), the Intellectual Property Office, in consultation with the appropriate government
agencies, shall issue the appropriate rules and regulations necessary therein not later than one
hundred twenty (120) days after the enactment of this law;
72.5. 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
72.6. 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. (Secs. 38 and 39, R.A.
No. 165a)
Sec. 73.
Prior User. –
73.1. Notwithstanding Section 72 hereof, 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.
73.2. 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. 40, R.A. No. 165a)
Sec. 74.
Use of Invention by Government.11 –
74.1. A Government agency or third person authorized by the Government may exploit the
11
As amended by R.A. No. 9502
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invention even without agreement of the patent owner where:
(a) The public interest, in particular, national security, nutrition, health or the development
of other sectors, as determined by the appropriate agency of the government, so
requires; or
(b) A judicial or administrative body has determined that the manner of exploitation, by the
owner of the patent or his licensee, is anti-competitive; or
(c) In the case of drugs and medicines, there is a national emergency or other
circumstance of extreme urgency requiring the use of the invention; or
(d) In the case of drugs and medicines, there is a public non-commercial use of the patent
by the patentee, without satisfactory reason; or
(e) In the case of drugs and medicines, the demand for the patented article in the
Philippines is not being met to an adequate extent and on reasonable terms, as
determined by the Secretary of the Department of Health.
74.2. Unless otherwise provided herein, the use by the Government, or third person
authorized by the Government shall be subject, where applicable, to the following provisions:
(a) In situations of national emergency or other circumstances of extreme urgency as
provided under Section 74.1 (c), the right holder shall be notified as soon as reasonably
practicable;
(b) In the case of public non-commercial use of the patent by the patentee, without
satisfactory reason, as provided under Section 74.1 (d), the right holder shall be
informed promptly: Provided, That, the Government or third person authorized by the
Government, without making a patent search, knows or has demonstrable ground to
know that a valid patent is or will be used by or for the Government;
(c) If the demand for the patented article in the Philippines is not being met to an adequate
extent and on reasonable terms as provided under Section 74.1 (e), the right holder
shall be informed promptly;
(d) The scope and duration of such use shall be limited to the purpose for which it was
authorized
(e) Such use shall be non-exclusive;
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(f) The right holder shall be paid adequate remuneration in the circumstances of each case,
taking into account the economic value of the authorization; and
(g) The existence of a national emergency or other circumstances of extreme urgency,
referred to under Section 74.1 (c), 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.
74.3. 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.
74.4. The Intellectual Property Office (IPO), 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. 75.
Extent of Protection and Interpretation of Claims. –
75.1. 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.
75.2. 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. (n)
Sec. 76.
Civil Action for Infringement. –
76.1. 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 72.1 and 72.4 (Limitations of Patent
Rights); Section 74 (Use of Invention by Government); Section 93.6 (Compulsory Licensing);
and Section 93-A (Procedures on Issuance of a Special Compulsory License under the TRIPS
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Agreement) of this Code.12
76.2. 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 a court of
competent jurisdiction, to recover from the infringer such damages sustained thereby, plus
attorney’s fees and other expenses of litigation, and to secure an injunction for the protection of
his rights.
76.3. If the damages are inadequate or cannot be readily ascertained with reasonable
certainty, the court may award by way of damages a sum equivalent to reasonable royalty.
76.4. 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.
76.5. The court may, in its discretion, order that the infringing goods, materials and
implements predominantly used in the infringement be disposed of outside the channels of
commerce or destroyed, without compensation; and
76.6. Anyone who actively induces the infringement of a patent or provides the infringer
with a component of a patented product or of a product produced because of a patented
process knowing it to be especially adopted for infringing the patented invention and not
suitable for substantial non-infringing use shall be liable as a contributory infringer and shall be
jointly and severally liable with the infringer. (Sec. 42, R.A. No. 165a)
Sec. 77.
Infringement Action by a Foreign National. - Any foreign national or juridical
entity who meets the requirements of Section 3 and not engaged in business in the Philippines,
to which a patent has been granted or assigned under this Act, may bring an action for
infringement of patent, whether or not it is licensed to do business in the Philippines under
existing law. (Sec. 41-A, R.A. No. 165a)
Sec. 78.
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
12
As amended by R.A. No. 9502
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manufacturing and business secrets. (n)
Sec. 79.
Limitation of Action for Damages. - No damages can be recovered for acts of
infringement committed more than four (4) years before the institution of the action for
infringement. (Sec. 43, R.A. No. 165)
Sec. 80.
Damages; Requirement of Notice. - Damages cannot be recovered for acts of
infringement committed before the infringer had known, or had reasonable grounds to know of
the patent. It is presumed that the infringer had known of the patent if on the patented product,
or on the container or package in which the article is supplied to the public, or on the
advertising material relating to the patented product or process, are placed the words
"Philippine Patent" with the number of the patent. (Sec. 44, R.A. No. 165a
Sec. 81.
Defenses in Action for Infringement. - In an action for infringement, the
defendant, in addition to other defenses available to him, may show the invalidity of the patent,
or any claim thereof, on any of the grounds on which a petition of cancellation can be brought
under Section 61 hereof. (Sec. 45, R.A. No. 165)
Sec. 82.
Patent Found Invalid May be Cancelled. - In an action for infringement, if the
court shall find the patent or any claim to be invalid, it shall cancel the same, and the Director of
Legal Affairs upon receipt of the final judgment of cancellation by the court, shall record that
fact in the register of the Office and shall publish a notice to that effect in the IPO Gazette. (Sec.
46, R.A. No. 165a)
Sec. 83.
Assessor in Infringement Action. –
83.1. Two (2) or more assessors may be appointed by the court. The assessors shall be
possessed of the necessary scientific and technical knowledge required by the subject matter
in litigation. Either party may challenge the fitness of any assessor proposed for appointment.
83.2. Each assessor shall receive a compensation in an amount to be fixed by the court and
advanced by the complaining party, which shall be awarded as part of his costs should he
prevail in the action. (Sec. 47, R.A. No. 165a)
Sec. 84.
Criminal Action for Repetition of Infringement. - If infringement is repeated by
the infringer or by anyone in connivance with him after finality of the judgment of the court
against the infringer, the offenders shall, without prejudice to the institution of a civil action for
damages, be criminally liable therefor and, upon conviction, shall suffer imprisonment for the
period of not less than six (6) months but not more than three (3) years and/or a fine of not less
than One hundred thousand pesos (PhP 100,000) but not more than Three hundred thousand
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pesos (Php 300,000), at the discretion of the court. The criminal action herein provided shall
prescribed in three (3) years from date of the commission of the crime. (Sec. 48, R.A. No. 165a)
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Chapter IX.
VOLUNTARY LICENSING
Sec. 85.
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 having an adverse effect on competition and trade, all
technology transfer arrangements shall comply with the provisions of this Chapter. (n)
Sec. 86.
Jurisdiction to Settle Disputes on Royalties. - The Director of the
Documentation, Information and Technology Transfer Bureau shall exercise quasi-judicial
jurisdiction in the settlement of disputes between parties to a technology transfer arrangement
arising from technology transfer payments, including the fixing of appropriate amount or rate of
royalty. (n)
Sec. 87.
Prohibited Clauses. - Except in cases under Section 91, the following
provisions shall be deemed prima facie to have an adverse effect on competition and trade:
87.1. Those which impose upon the licensee the obligation to acquire from a specific
source capital goods, intermediate products, raw materials, and other technologies, or of
permanently employing personnel indicated by the licensor;
87.2. Those pursuant to which the licensor reserves the right to fix the sale or resale prices
of the products manufactured on the basis of the license;
87.3. Those that contain restrictions regarding the volume and structure of production;
87.4. Those that prohibit the use of competitive technologies in a non-exclusive technology
transfer agreement;
87.5. Those that establish a full or partial purchase option in favor of the licensor;
87.6. Those that obligate the licensee to transfer for free to the licensor the inventions or
improvements that may be obtained through the use of the licensed technology;
87.7. Those that require payment of royalties to the owners of patents for patents which are
not used;
87.8. Those that prohibit the licensee to export the licensed product unless justified for the
protection of the legitimate interest of the licensor such as exports to countries where exclusive
licenses to manufacture and/or distribute the licensed product(s) have already been granted;
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87.9. Those which restrict the use of the technology supplied after the expiration of the
technology transfer arrangement, except in cases of early termination of the technology transfer
arrangement due to reason(s) attributable to the licensee;
87.10. Those which require payments for patents and other industrial property rights after
their expiration, termination arrangement;
87.11. Those which require that the technology recipient shall not contest the validity of any
of the patents of the technology supplier;
87.12. Those which restrict the research and development activities of the licensee
designed to absorb and adapt the transferred technology to local conditions or to initiate
research and development programs in connection with new products, processes or
equipment;
87.13. Those which prevent the licensee from adapting the imported technology to local
conditions, or introducing innovation to it, as long as it does not impair the quality standards
prescribed by the licensor;
87.14. Those which exempt the licensor for liability for non-fulfillment of his responsibilities
under the technology transfer arrangement and/or liability arising from third party suits brought
about by the use of the licensed product or the licensed technology; and
87.15. Other clauses with equivalent effects. (Sec. 33-C(2), RA 165a)
Sec. 88.
Mandatory Provisions. - The following provisions shall be included in
voluntary license contracts:
88.1. That the laws of the Philippines shall govern the interpretation of the same and in the
event of litigation, the venue shall be the proper court in the place where the licensee has its
principal office;
88.2. Continued access to improvements in techniques and processes related to the
technology shall be made available during the period of the technology transfer arrangement;
88.3. In the event the technology transfer arrangement shall provide for arbitration, the
Procedure of Arbitration of the Arbitration Law of the Philippines or the Arbitration Rules of the
United Nations Commission on International Trade Law (UNCITRAL) or the Rules of Conciliation
and Arbitration of the International Chamber of Commerce (ICC) shall apply and the venue of
arbitration shall be the Philippines or any neutral country; and
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88.4. The Philippine taxes on all payments relating to the technology transfer arrangement
shall be borne by the licensor. (n)
Sec. 89.
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. 33-B, R.A. 165a)
Sec. 90.
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. 33-C (1), R.A. 165a)
Sec. 91.
Exceptional Cases. - In exceptional or meritorious cases where substantial
benefits will accrue to the economy, such as high technology content, increase in foreign
exchange earnings, employment generation, regional dispersal of industries and/or substitution
with or use of local raw materials, or in the case of Board of Investments, registered companies
with pioneer status, exemption from any of the above requirements may be allowed by the
Documentation, Information and Technology Transfer Bureau after evaluation thereof on a case
by case basis. (n)
Sec. 92.
Non-Registration with the Documentation, Information and Technology
Transfer Bureau. - Technology transfer arrangements that conform with the provisions of
Sections 86 and 87 need not be registered with the Documentation, Information and
Technology Transfer Bureau. Non-conformance with any of the provisions of Sections 87 and
88, however, shall automatically render the technology transfer arrangement unenforceable,
unless said technology transfer arrangement is approved and registered with the
Documentation, Information and Technology Transfer Bureau under the provisions of Section 91
on exceptional cases. (n)
Chapter X.
COMPULSORY LICENSING
Sec. 93.
Grounds for Compulsory Licensing.13 The Director General of the
Intellectual Property Office may grant a license to exploit a patented invention, even without the
agreement of the patent owner, in favor of any person who has shown his capability to exploit
the invention, under any of the following circumstances:
13
As amended by R.A. No. 9502
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93.1. National emergency or other circumstances of extreme urgency;
93.2. Where the public interest, in particular, national security, nutrition, health or the
development of other vital sectors of the national economy as determined by the appropriate
agency of the Government, so requires; or
93.3. Where a judicial or administrative body has determined that the manner of
exploitation by the owner of the patent or his licensee is anti-competitive; or
93.4. In case of public non-commercial use of the patent by the patentee, without
satisfactory reason;
93.5. If the patented invention is not being worked in the Philippines on a commercial scale,
although capable of being worked, without satisfactory reason: Provided, That the importation
of the patented article shall constitute working or using the patent. (Secs. 34, 34-A, 34-B, R.A.
No. 165a) and
93.6. Where the demand for patented drugs and medicines is not being met to an adequate
extent and on reasonable terms, as determined by the Secretary of the Department of Health.
Sec. 93-A. Procedures on Issuance of a Special Compulsory License under the TRIPS
Agreement.14 –
93-A.1. The Director General of the Intellectual Property Office, upon the written
recommendation of the Secretary of the Department of Health, shall, upon filing of a petition,
grant a special compulsory license for the 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 100.4 and 100.6 of Republic Act No. 8293 and shall be immediately executory.
No court, except the Supreme Court of the Philippines, shall issue any temporary
restraining order or preliminary injunction or such other provisional remedies that will prevent
14
Introduced by R.A. No. 9502
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the grant of the special compulsory license.
93-A.2. A compulsory license shall also be available for the manufacture and export of
drugs and medicines to any country having insufficient or no manufacturing capacity in the
pharmaceutical sector to address public health problems: Provided, That, a compulsory license
has been granted by such country or such country has, by notification or otherwise, allowed
importation into its jurisdiction of the patented drugs and medicines from the Philippines in
compliance with the TRIPS Agreement.
93-A.3. The right to grant a special compulsory license under this section shall not limit or
prejudice the rights, obligations and flexibilities provided under the TRIPS Agreement and
under Philippine laws, particularly Section 72.1 and Section 74 of the Intellectual Property
Code, as amended under this Act. It is also without prejudice to the extent to which drugs and
medicines produced under a compulsory license can be exported as allowed in the TRIPS
Agreement and applicable laws.
Sec. 94.
Period for Filing a Petition for a Compulsory License.15 –
94.1. A compulsory license may not be applied for on the ground stated in Subsection 93.5
before the expiration of a period of four (4) years from the date of filing of the application or
three (3) years from the date of the patent whichever period expires last.
94.2. A compulsory license which is applied for on any of the grounds stated in
Subsections 93.2, 93.3, 93.4 and 93.6 and Section 97 may be applied for at any time after the
grant of the patent. (Sec. 34(1), R.A. No. 165)
Sec. 95.
Requirement to Obtain a License on Reasonable Commercial Terms.16 –
95.1. The license will only be granted after the petitioner has made efforts to obtain
authorization from the patent owner on reasonable commercial terms and conditions but such
efforts have not been successful within a reasonable period of time.
95.2. The requirement under Subsection 95.1 shall not apply in any of the following cases:
(a) Where the petition for compulsory license seeks to remedy a practice determined after
judicial or administrative process to be anti-competitive;
(b) In situations of national emergency or other circumstances of extreme urgency;
15
16
As amended by R.A. No. 9502
As amended by R.A. No. 9502
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(c) In cases of public non-commercial use; and
(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 Department of Health.
95.3. In situations of national emergency or other circumstances of extreme urgency, the
right holder shall be notified as soon as reasonably practicable.
95.4. 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.
(n)
95.5. Where the demand for the patented drugs and medicines in the Philippines is not
being met to an adequate extent and on reasonable terms, as determined by the Secretary of
the Department of Health, the right holder shall be informed promptly.
Sec. 96.
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. (n)
Sec. 97.
Compulsory License Based on Interdependence of Patents.- If the invention
protected by a patent, hereafter referred to as the "second patent," within the country cannot
be worked without infringing another patent, hereafter referred to as the "first patent," granted
on a prior application or benefiting from an earlier priority, a compulsory license may be granted
to the owner of the second patent to the extent necessary for the working of his invention,
subject to the following conditions:
97.1. The invention claimed in the second patent involves an important technical advance
of considerable economic significance in relation to the first patent;
97.2. The owner of the first patent shall be entitled to a cross-license on reasonable terms
to use the invention claimed in the second patent;
97.3. The use authorized in respect of the first patent shall be non-assignable except with
the assignment of the second patent; and
97.4. The terms and conditions of Sections 95, 96 and 98 to 100 of this Act. (Sec. 34-C,
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R.A. No. 165a)
Sec. 98.
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. 34-D, R.A. No. 165)
Sec. 99.
Notice of Hearing. –
99.1. Upon filing of a petition, the Director of Legal Affairs shall forthwith serve notice of the
filing thereof upon the patent owner and all persons having grants or licenses, or any other
right, title or interest in and to the patent and invention covered thereby as appears of record in
the Office, and of notice of the date of hearing thereon, on such persons and petitioner. The
resident agent or representative appointed in accordance with Section 33 hereof, shall be
bound to accept service of notice of the filing of the petition within the meaning of this Section.
99.2. In every case, the notice shall be published by the said Office in a newspaper of
general circulation, once a week for three (3) consecutive weeks and once in the IPO Gazette at
applicant’s expense. (Sec. 34-E, R.A. No. 165)
Sec. 100.
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
of Legal Affairs subject to the following conditions:
100.1. The scope and duration of such license shall be limited to the purpose for which it
was authorized;
100.2. The license shall be non-exclusive;
100.3. The license shall be non-assignable, except with that part of the enterprise or
business with which the invention is being exploited;
100.4. Use of the subject matter of the license shall be devoted predominantly for the
supply of the Philippine market: Provided, That this limitation shall not apply where the grant of
the license is based on the ground that the patentee’s manner of exploiting the patent is
determined by judicial or administrative process, to be anti-competitive.
100.5. The license may be terminated upon proper showing that circumstances which led
46
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to its grant have ceased to exist and are unlikely to recur: Provided, That adequate protection
shall be afforded to the legitimate interest of the licensee; and
100.6. 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. 35-B, R.A. No. 165a)
Sec. 101.
Amendment, Cancellation, Surrender of Compulsory License. –
101.1. Upon the request of the patentee or the licensee, the Director of Legal Affairs may
amend the decision granting the compulsory license, upon proper showing of new facts or
circumstances justifying such amendment.
101.2. Upon the request of the patentee, the said Director may cancel the compulsory
license:
(a) If the ground for the grant of the compulsory license no longer exists and is unlikely to
recur;
(b) if the licensee has neither begun to supply the domestic market nor made serious
preparation therefor;
(c) if the licensee has not complied with the prescribed terms of the license;
101.3. The licensee may surrender the license by a written declaration submitted to the
Office.
101.4. The said Director shall cause the amendment, surrender, or cancellation in the
Register, notify the patentee, and/or the licensee, and cause notice thereof to be published in
the IPO Gazette. (Sec. 35-D, R.A. No. 165a)
Sec. 102.
Licensee’s Exemption from Liability. - Any person who works a patented
product, substance and/or process under a license granted under this Chapter, shall be free
from any liability for infringement: Provided however, That in the case of voluntary licensing, no
collusion with the licensor is proven. This is without prejudice to the right of the rightful owner of
the patent to recover from the licensor whatever he may have received as royalties under the
license. (Sec. 35-E, R.A. No. 165a)
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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 Civil Code.
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. 50, R.A. No. 165a)
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. 51, R.A. No. 165)
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. (Sec. 52, R.A.
No. 165)
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 IPO 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. 53, R.A. No. 165a)
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
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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. (Sec. 54, R.A. No. 165)
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Chapter XII.
REGISTRATION OF UTILITY MODELS
Sec. 108.
Applicability of Provisions Relating to Patents. –
108.1. Subject to Section 109, the provisions governing patents shall apply, mutatis
mutandis, to the registration of utility models.
108.2. Where the right to a patent conflicts with the right to a utility model registration in the
case referred to in Section 29, the said provision shall apply as if the word "patent" were
replaced by the words "patent or utility model registration." (Sec. 55, R.A. No. 165a)
Sec. 109.
Special Provisions Relating to Utility Models. –
109.1
(a) An invention qualifies for registration as a utility model if it is new and industrially
applicable.
(b) Section 21, "Patentable Inventions", shall apply except the reference to inventive step as
a condition of protection.
109.2. Sections 43 to 49 shall not apply in the case of applications for registration of a
utility model.
109.3. A utility model registration shall expire, without any possibility of renewal, at the end
of the seventh year after the date of the filing of the application.
109.4. In proceedings under Sections 61 to 64, the utility model registration shall be
cancelled on the following grounds:
(a) That the claimed invention does not qualify for registration as a utility model and does
not meet the requirements of registrability, in particular having regard to Subsection
109.1 and Sections 22, 23, 24 and 27;
(b) That the description and the claims do not comply with the prescribed requirements;
(c) That any drawing which is necessary for the understanding of the invention has not
been furnished;
(d) That the owner of the utility model registration is not the inventor or his successor in
title. (Secs. 55, 56, and 57, R.A. No. 165a)
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Sec. 110.
Registration. -
Conversion of Patent Applications or Applications for Utility Model
110.1. At any time before the grant or refusal of a patent, an applicant for a patent 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.
110.2. 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.
58, R.A. No. 165a)
Sec. 111.
Prohibition against Filing of Parallel Applications. - An applicant may not file
two (2) applications for the same subject, one for utility model registration and the other for the
grant of a patent whether simultaneously or consecutively. (Sec. 59, R.A. No. 165a)
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Chapter XIII.
INDUSTRIAL DESIGN AND LAYOUT-DESIGNS (TOPOGRAPHIES)
OF INTEGRATED CIRCUITS
Sec. 112.
Definition of Terms.17 –
1. An Industrial Design is any composition of lines or colors or any three-dimensional form,
whether or not associated with lines or colors: Provided, That such composition or form gives a
special appearance to and can serve as pattern for an industrial product or handicraft. (Sec. 55,
R.A. No. 165a)
2. Integrated Circuit means a product, in its final form, or an intermediate form, in which the
elements, at least one of which is an active element and some or all of the interconnections are
integrally formed in and/or on a piece of material, and which is intended to perform an
electronic function; and
3. Layout-Design is synonymous with 'Topography' and means the three-dimensional
disposition, however expressed, of the elements, at least one of which is an active element, and
of some or all of the interconnections of an integrated circuit, or such a three-dimensional
disposition prepared for an integrated circuit intended for manufacture.
Sec. 113.
Substantive Conditions for Protection.18 –
113.1. Only industrial designs that are new or ornamental shall benefit from protection under
this Act.
113.2. 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. (n)
113.3. Only layout-designs of integrated circuits that are original shall benefit from
protection under this Act. A layout-design shall be considered original if it is the result of its
creator's own intellectual effort and is not commonplace among creators of layout-designs and
manufacturers of integrated circuits at the time of its creation.
113.4. A layout-design consisting of a combination of elements and interconnections that
are commonplace shall be protected only if the combination, taken as a whole, is original.
17
18
As amended by R.A. No. 9150
As amended by R.A. No. 9150
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Sec. 114.
Contents of the Application.19 –
114.1. Every application for registration of an industrial design or layout-design shall
contain:
(a) A request for registration of the industrial design or layout-design;
(b) Information identifying the applicant;
(c) An indication of the kind of article of manufacture or handicraft to which the industrial
design or layout-design shall be applied;
(d) A representation of the article of manufacture or handicraft by way of drawings,
photographs or other adequate graphic representation of the industrial design or of the
layout-design as applied to the article of manufacture or handicraft which clearly and
fully discloses those features for which protection is claimed; and
(e) The name and address of the creator, or where the applicant is not the creator, a
statement indicating the origin of the right to the industrial design or layout-design
registration.
114.2. The application may be accompanied by a specimen of the article embodying the
industrial design or layout-design and shall be subject to the payment of the prescribed fee. (n)
Sec. 115.
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. (n)
Sec. 116.
Examination.20 –
116.1. 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 the layout-design or a pictorial
representation thereof.
116.2. If the application does not meet these requirements, the filing date should be that
date when all the elements specified in Sec. 114 are filed or the mistakes corrected. Otherwise
if the requirements are not complied within the prescribed period, the application shall be
considered withdrawn.
116.3. After the application has been accorded a filing date and the required fees paid on
time, the applicant shall comply with the requirements of Sec. 114 within the prescribed period,
19
20
As amended by R.A. No. 9150
As amended by R.A. No. 9150
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otherwise the application shall be considered withdrawn.
116.4. The Office shall examine whether the industrial design or layout-design complies
with requirements of Sec. 112 (Definitions) and Sec. 113 (Substantive Conditions for
Protection).
Sec. 117.
Registration. –
117.1. Where the Office finds that the conditions referred to in Sec. 113 are fulfilled, it shall
order that registration be effected in the industrial design or layout-design register and cause
the issuance of an industrial design or layout-design certificate of registration; otherwise, it shall
refuse the application.
117.2. The form and contents of an industrial design or layout-design certificate shall be
established by the Regulations: Provided, That the name and address of the creator shall be
mentioned in every case.
117.3. Registration shall be published in the form and within the period fixed by the
Regulations.
117.4. The Office shall record in the register any change in the identity of the proprietor of
the industrial design or layout-design or his representative, if proof thereof is furnished to it. A
fee shall be paid, with the request to record the change in the identity of the proprietor. If the
fee is not paid, the request shall be deemed not to have been filed. In such case, the former
proprietor and the former representative shall remain subject to the rights and obligations as
provided in this Act.
117.5. Anyone may inspect the Register and the files of registered industrial designs or
layout-designs including the files of cancellation proceedings. (n)
Sec. 118.
The Term of Industrial Design or Layout-Design Registration.21 -
118.1. The registration of an industrial design shall be for a period of five (5) years from the
filing date of the application.
118.2. 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.
118.3. 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
21
As amended by R.A. No. 9150
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payment of the fees after such expiration, upon payment of a surcharge.
118.4. The Regulations shall fix the amount of renewal fee, the surcharge and other
requirements regarding the recording of renewals of registration.
118.5. Registration of a layout-design shall be valid for a period of ten (10) years, without
renewal, and such validity to be counted from the date of commencement of the protection
accorded to the layout-design. The protection of a layout-design under this Act shall
commence:
a) on the date of the first commercial exploitation, anywhere in the world, of the
layout-design by or with the consent of the right holder: Provided, That an application
for registration is filed with 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. 119.
Application of Other Sections and Chapters.22 –
119.1. The following provisions relating to patents shall apply mutatis mutandis to an
industrial design registration:
22
Section 21
-
Novelty
Section 24
-
Prior art; Provided, That the disclosure is contained in printed
documents or in any tangible form;
Section 25
-
Non-prejudicial Disclosure;
Section 28
-
Right to a Patent;
Section 29
-
First to File Rule;
Section 30
-
Inventions Created Pursuant to a Commission;
Section 31
-
Right of Priority: Provided, That the application for industria
design shall be filed within six (6) months from the earliest filing
As amended by R.A. No. 9150
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date of the corresponding foreign application;
Section 33
-
Appointment of Agent or Representative;
Section 51
-
Refusal of the Application;
Sections 56 to 60
-
Surrender, Correction of and Changes in Patent;
Chapter VII
-
Remedies of a Person with a Right to Patent;
Chapter VIII
-
Rights of Patentees and Infringement of Patents; and
Chapter XI
-
Assignment and Transmission of Rights
119.2. If the essential elements of an industrial design which is the subject of an application
have been obtained from the creation of another person without his consent, protection under
this Chapter cannot be invoked against the injured party. (n)
119.3. The following provisions relating to patents shall apply mutatis mutandis to a layout
-design of integrated circuits registration:
Section 28
-
Right to a Patent;
Section 29
-
First to File Rule;
Section 30
-
Inventions Created Pursuant to a Commission;
Section 33
-
Appointment of Agent or Representative;
Section 56
-
Surrender of Patent;
Section 57
-
Correction of Mistakes of the Office;
Section 58
-
Correction of Mistakes in the Application;
Section 59
-
Changes in Patents;
Section 60
-
Form and Publication of Amendment;
Chapter VII
-
Remedies of a Person with a Right to Patent;
Chapter VIII
-
Rights of Patentees and Infringement of Patents: Provided, That
the layout-design rights and limitation of layout-design rights
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provided hereunder shall govern:
Chapter X
-
Compulsory Licensing;
Chapter XI
-
Assignment and Transmission of Rights
119.4. Rights Conferred to the Owner of a Layout-Design Registration. - The owner of a
layout-design registration shall enjoy the following rights:
(1) to reproduce, whether by incorporation in an integrated circuit or otherwise, the
registered layout-design in its entirety or any part thereof, except the act of reproducing
any part that does not comply with the requirement of originality; and
(2) to sell or otherwise distribute for commercial purposes the registered layout-design, an
article or an integrated circuit in which the registered layout-design is incorporated.
119.5. Limitations of Layout Rights. - The owner of a layout design has no right to prevent
third parties from reproducing, selling or otherwise distributing for commercial purposes the
registered layout-design in the following circumstances:
(1) Reproduction of the registered layout-design for private purposes or for the sole
purpose of evaluation, analysis, research or teaching;
(2) Where the act is performed in respect of a layout-design created on the basis of such
analysis or evaluation and which is itself original in the meaning as provided herein;
(3) Where the act is performed in respect of a registered lay-out-design, or in respect of an
integrated circuit in which such a layout-design is incorporated, that has been put on
the market by or with the consent of the right holder;
(4) In respect of an integrated circuit where the person performing or ordering such an act
did not know and had no reasonable ground to know when acquiring the integrated
circuit or the article incorporating such an integrated circuit, that it incorporated an
unlawfully reproduced layout-design: Provided, however, That after the time that such
person has received sufficient notice that the layout-design was unlawfully reproduced,
that person may perform any of the said acts only with respect to the stock on hand or
ordered before such time and shall be liable to pay to the right holder a sum equivalent
to at least 5% of net sales or such other reasonable royalty as would be payable under
a freely negotiated license in respect of such layout-design; or
(5) Where the act is performed in respect of an identical layout-design which is original and
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has been created independently by a third party.
Sec. 120.
Cancellation of Design Registration.23 –
120.1. At any time during the term of the industrial design registration, any person upon
payment of the required fee, may petition the Director of Legal Affairs to cancel the industrial
design on any of the following grounds:
(a) If the subject matter of the industrial design is not registrable within the terms of
Sections 112 and 113;
(b) If the subject matter is not new; or
(c) If the subject matter of the industrial design extends beyond the content of the
application as originally filed.
120.2. 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. (n)
120.3. Grounds for Cancellation of Layout-Design of Integrated Circuits.- Any interested
person may petition that the registration of a layout-design be cancelled on the ground that:
(i) the layout-design is not protectable under this Act;
(ii) the right holder is not entitled to protection under this Act; or
(iii) where the application for registration of the layout-design, was not filed within two (2)
years from its first commercial exploitation anywhere in the world.
Where the grounds for cancellation are established with respect only to a part of the
layout-design, only the corresponding part of the registration shall be cancelled.
Any cancelled layout-design registration or part thereof, shall be regarded as null and void
from the beginning and may be expunged from the records of the Intellectual Property Office.
Reference to all cancelled layout-design registration shall be published in the IPO Gazette.
23
As amended by R.A. No. 9150
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PART III.
THE LAW ON TRADEMARKS, SERVICE MARKS
AND TRADE NAMES
Sec. 121.
meanings:
Definitions. - As used in Part III, the following terms have the following
121.1. "Mark" means any visible sign capable of distinguishing the goods (trademark) or
services (service mark) of an enterprise and shall include a stamped or marked container of
goods; (Sec. 38, R.A. No. 166a)
121.2. "Collective mark" means any visible 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; (Sec. 40, R.A. No. 166a)
121.3. "Trade name" means the name or designation identifying or distinguishing an
enterprise; (Sec. 38, R.A. No. 166a)
121.4. "Bureau" means the Bureau of Trademarks;
121.5. "Director" means the Director of Trademarks;
121.6. "Regulations" means the Rules of Practice in Trademarks and Service Marks
formulated by the Director of Trademarks and approved by the Director General; and
121.7. "Examiner" means the trademark examiner. (Sec. 38, R.A. No. 166a)
Sec. 122.
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. 2-A, R.A. No. 166a)
Sec. 123.
Registrability. –
123.1. A mark cannot be registered if it:
(a) Consists of immoral, deceptive or scandalous matter, or matter which may disparage or
falsely suggest a connection with persons, living or dead, institutions, beliefs, or
national symbols, or bring them into contempt or disrepute;
(b) Consists of the flag or coat of arms or other insignia of the Philippines or any of its
political subdivisions, or of any foreign nation, or any simulation thereof;
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(c) Consists of a name, portrait or signature identifying a particular living individual except
by his written consent, or the name, signature, or portrait of a deceased President of the
Philippines, during the life of his widow, if any, except by written consent of the widow;
(d) Is identical with a registered mark belonging to a different proprietor or a mark with an
earlier filing or priority date, in respect of:
(i) The same goods or services, or
(ii) Closely related goods or services, or
(iii) If it nearly resembles such a mark as to be likely to deceive or cause confusion;
(e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is
considered by the competent authority of the Philippines to be well-known
internationally and in the Philippines, whether or not it is registered here, as being
already the mark of a person other than the applicant for registration, and used for
identical or similar goods or services: Provided, That in determining whether a mark is
well-known, account shall be taken of the knowledge of the relevant sector of the
public, rather than of the public at large, including knowledge in the Philippines which
has been obtained as a result of the promotion of the mark;
(f) Is identical with, or confusingly similar to, or constitutes a translation of a mark
considered well-known in accordance with the preceding paragraph, which is registered
in the Philippines with respect to goods or services which are not similar to those with
respect to which registration is applied for: Provided, That use of the mark in relation to
those goods or services would indicate a connection between those goods or services,
and the owner of the registered mark: Provided further, That the interests of the owner
of the registered mark are likely to be damaged by such use;
(g) Is likely to mislead the public, particularly as to the nature, quality, characteristics or
geographical origin of the goods or services;
(h) Consists exclusively of signs that are generic for the goods or services that they seek to
identify;
(i) Consists exclusively of signs or of indications that have become customary or usual to
designate the goods or services in everyday language or in bona fide and established
trade practice;
(j) Consists exclusively of signs or of indications that may serve in trade to designate the
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kind, quality, quantity, intended purpose, value, geographical origin, time or production
of the goods or rendering of the services, or other characteristics of the goods or
services;
(k) Consists of shapes that may be necessitated by technical factors or by the nature of the
goods themselves or factors that affect their intrinsic value;
(l) Consists of color alone, unless defined by a given form; or
(m) Is contrary to public order or morality.
123.2. As regards signs or devices mentioned in paragraphs (j), (k), and (l), nothing shall
prevent the registration of any such sign or device which has become distinctive in relation to
the goods for which registration is requested as a result of the use that have been made of it in
commerce in the Philippines. The Office may accept as prima facie evidence that the mark has
become distinctive, as used in connection with the applicant’s goods or services in commerce,
proof of substantially exclusive and continuous use thereof by the applicant in commerce in the
Philippines for five (5) years before the date on which the claim of distinctiveness is made.
123.3. The nature of the goods to which the mark is applied will not constitute an obstacle
to registration. (Sec. 4, R.A. No. 166a)
Sec. 124.
Requirements of Application. -
124.1. The application for the registration of the mark shall be in Filipino or in English and
shall contain the following:
(a) A request for registration;
(b) The name and address of the applicant;
(c) The name of a State of which the applicant is a national or where he has domicile; and
the name of a State in which the applicant has a real and effective industrial or
commercial establishment, if any;
(d) Where the applicant is a juridical entity, the law under which it is organized and existing;
(e) The appointment of an agent or representative, if the applicant is not domiciled in the
Philippines;
(f) Where the applicant claims the priority of an earlier application, an indication of:
i) The name of the State with whose national office the earlier application was filed or
if filed with an office other than a national office, the name of that office,
ii) The date on which the earlier application was filed, and
iii) Where available, the application number of the earlier application;
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(g) Where the applicant claims color as a distinctive feature of the mark, a statement to that
effect as well as the name or names of the color or colors claimed and an indication, in
respect of each color, of the principal parts of the mark which are in that color;
(h) Where the mark is a three-dimensional mark, a statement to that effect;
(i) One or more reproductions of the mark, as prescribed in the Regulations;
(j) A transliteration or translation of the mark or of some parts of the mark, as prescribed in
the Regulations;
(k) The names of the goods or services for which the registration is sought, grouped
according to the classes of the Nice Classification, together with the number of the
class of the said Classification to which each group of goods or services belongs; and
(l) A signature by, or other self-identification of, the applicant or his representative.
124.2. The applicant or the registrant shall file a declaration of actual use of the mark with
evidence to that effect, as prescribed by the Regulations within three (3) years from the filing
date of the application. Otherwise, the application shall be refused or the mark shall be
removed from the Register by the Director.
124.3. One (1) application may relate to several goods and/or services, whether they belong
to one (1) class or to several classes of the Nice Classification.
124.4. If during the examination of the application, the Office finds factual basis to
reasonably doubt the veracity of any indication or element in the application, it may require the
applicant to submit sufficient evidence to remove the doubt. (Sec. 5, R.A. No. 166a)
Sec. 125.
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. 3, R.A. No.
166a)
Sec. 126.
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. 13, R.A. No. 166a)
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Sec. 127.
Filing Date. –
127.1. 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) An express or implicit indication that the registration of a mark is sought;
(b) The identity of the applicant;
(c) Indications sufficient to contact the applicant or his representative, if any;
(d) A reproduction of the mark whose registration is sought; and
(e) The list of the goods or services for which the registration is sought.
127.2. No filing date shall be accorded until the required fee is paid. (n)
Sec. 128.
Single Registration for Goods and/or Services. - Where goods and/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. (n)
Sec. 129.
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. (n)
Sec. 130.
Signature and Other Means of Self-Identification. –
130.1. Where a signature is required, the Office shall accept:
(a) A hand-written signature; or
(b) The use of other forms of signature, such as a printed or stamped signature, or the use
of a seal, instead of a hand-written signature: Provided, That where a seal is used, it
should be accompanied by an indication in letters of the name of the signatory.
130.2. The Office shall accept communications to it by telecopier, or by electronic means
subject to the conditions or requirements that will be prescribed by the Regulations. When
communications are made by telefacsimile, the reproduction of the signature, or the
reproduction of the seal together with, where required, the indication in letters of the name of
the natural person whose seal is used, appears. The original communications must be received
by the Office within thirty (30) days from date of receipt of the telefacsimile.
130.3. No attestation, notarization, authentication, legalization or other certification of any
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signature or other means of self-identification referred to in the preceding paragraphs, will be
required, except, where the signature concerns the surrender of a registration. (n)
Sec. 131.
Priority Right. –
131.1. An application for registration of a mark filed in the Philippines by a person referred
to in Section 3, and who previously duly filed an application for registration of the same mark in
one of those countries, shall be considered as filed as of the day the application was first filed
in the foreign country.
131.2. No registration of a mark in the Philippines by a person described in this section
shall be granted until such mark has been registered in the country of origin of the applicant.
131.3. Nothing in this section shall entitle the owner of a registration granted under this
section to sue for acts committed prior to the date on which his mark was registered in this
country: Provided, That, notwithstanding the foregoing, the owner of a well-known mark as
defined in Section 123.1(e) of this Act, that is not registered in the Philippines, may, against an
identical or confusingly similar mark, oppose its registration, or petition the cancellation of its
registration or sue for unfair competition, without prejudice to availing himself of other remedies
provided for under the law.
131.4. In like manner and subject to the same conditions and requirements, the right
provided in this section may be based upon a subsequent regularly filed application in the
same foreign country: Provided, That any foreign application filed prior to such subsequent
application has been withdrawn, abandoned, or otherwise disposed of, without having been
laid open to 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. (Sec. 37, R.A. No. 166a)
Sec. 132.
Application Number and Filing Date. –
132.1. The Office shall examine whether the application satisfies the requirements for the
grant of a filing date as provided in Section 127 and Regulations relating thereto. If the
application does not satisfy the filing requirements, the Office shall notify the applicant who
shall within a period fixed by the Regulations complete or correct the application as required,
otherwise, the application shall be considered withdrawn.
132.2 Once an application meets the filing requirements of Section 127, it shall be
numbered in the sequential order, and the applicant shall be informed of the application
number and the filing date of the application will be deemed to have been abandoned. (n)
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Sec. 133.
Examination and Publication. –
133.1. Once the application meets the filing requirements of Section 127, the Office shall
examine whether the application meets the requirements of Section 124 and the mark as
defined in Section 121 is registrable under Section 123.
133.2. Where the Office finds that the conditions referred to in Subsection 133.1 are
fulfilled, it shall, upon payment of the prescribed fee, forthwith cause the application, as filed, to
be published in the prescribed manner.
133.3. 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 of Trademarks from any final action by the
Examiner.
133.4. 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.
133.5. The final decision of refusal of the Director of Trademarks shall be appealable to the
Director General in accordance with the procedure fixed by the Regulations. (Sec. 7, R.A. No.
166a)
Sec. 134.
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 referred to in Subsection 133.2, file with the Office an opposition to the application.
Such opposition shall be in writing and verified by the oppositor or by any person on his behalf
who knows the facts, and shall specify the grounds on which it is based and include a
statement of the facts relied upon. Copies of certificates of registration of marks registered in
other countries or other supporting documents mentioned in the opposition shall be filed
therewith, together with the translation in English, if not in the English language. For good cause
shown and upon payment of the required surcharge, the time for filing an opposition may be
extended by the Director of Legal Affairs, who shall notify the applicant of such extension. The
Regulations shall fix the maximum period of time within which to file the opposition. (Sec. 8,
R.A. No. 165a)
Sec. 135.
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
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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. 9 R.A. No. 165)
Sec. 136.
Issuance and Publication of Certificate. - When the period for filing the
opposition has expired, or when the Director of Legal Affairs shall have denied the opposition,
the Office upon payment of the required fee, shall issue the certificate of registration. Upon
issuance of a certificate of registration, notice thereof making reference to the publication of the
application shall be published in the IPO Gazette. (Sec. 10, R.A. No. 165)
Sec. 137.
Assignee. -
Registration of Mark and Issuance of a Certificate to the Owner or his
137.1. 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.
137.2. 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.
137.3. 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 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.
137.4. The Office shall record any change of address, or address for service, which shall be
notified to it by the registered owner.
137.5. 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. 19, R.A. No. 166a)
Sec. 138.
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,
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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. 20, R.A. No. 165)
Sec. 139.
Publication of Registered Marks; Inspection of Register. –
139.1. 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
Subsection 137.2.
139.2. Marks registered at the Office may be inspected free of charge and any person may
obtain copies thereof at his own expense. This provision shall also be applicable to
transactions recorded in respect of any registered mark. (n)
Sec. 140.
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:
Provided, That the amendment or disclaimer does not alter materially the character of the mark.
Appropriate entry shall be made in the records of the Office upon the certificate of registration
or, if said certificates is lost or destroyed, upon a certified copy thereof. (Sec. 14, R.A. No. 166)
Sec. 141.
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 Administrative,
Financial and Human Resource Development Service Bureau 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. (n)
Sec. 142.
Correction of Mistakes Made by the Office. - Whenever a material mistake in
a registration incurred through the fault of the Office is clearly disclosed by the records of the
Office, a certificate stating the fact and nature of such mistake shall be issued without charge,
recorded and a printed copy thereof shall be attached to each printed copy of the registration.
Such corrected registration shall thereafter have the same effect as the original certificate; or in
the discretion of the Director of the Administrative, Financial and Human Resource
Development Service Bureau a new certificate of registration may be issued without charge. All
certificates of correction heretofore issued in accordance with the Regulations and the
registration to which they are attached shall have the same force and effect as if such
68
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certificates and their issuance had been authorized by this Act. (n)
Sec. 143.
Correction of Mistakes Made by Applicant. - Whenever a mistake is made in
a registration and such mistake occurred in good faith through the fault of the applicant, the
Office may issue a certificate upon the payment of the prescribed fee: Provided, That the
correction does not involve any change in the registration that requires republication of the
mark. (n)
Sec. 144.
Classification of Goods and Services. –
144.1. 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.
144.2. Goods or services may not be considered as being similar or dissimilar to each other
on the ground that, in any registration or publication by the Office, they appear in different
classes of the Nice Classification. (Sec. 6, R.A. No. 166a)
Sec. 145.
Duration. - A certificate of registration shall remain in force for ten (10) years:
Provided, That the registrant shall file a declaration of actual use and evidence to that effect, or
shall show valid reasons based on the existence of obstacles to such use, as prescribed by the
Regulations, within one (1) year from the fifth anniversary of the date of the registration of the
mark. Otherwise, the mark shall be removed from the Register by the Office. (Sec. 12, R.A. No.
166a)
Sec. 146.
Renewal. -
146.1. 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. The request shall
contain the following indications:
(a) An indication that renewal is sought;
(b) The name and address of the registrant or his successor-in-interest, hereafter referred
to as the "right holder";
(c) The registration number of the registration concerned;
(d) The filing date of the application which resulted in the registration concerned to be
renewed;
(e) Where the right holder has a representative, the name and address of that
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representative;
(f) The names of the recorded goods or services for which the renewal is requested or the
names of the recorded goods or services for which the renewal is not requested,
grouped according to the classes of the Nice Classification to which that group of
goods or services belongs and presented in the order of the classes of the said
Classification; and
(g) A signature by the right holder or his representative.
146.2. Such request shall be in Filipino or English and may be made at any time within six
(6) months before the expiration of the period for which the registration was issued or renewed,
or it may be made within six (6) months after such expiration on payment of the additional fee
herein prescribed.
146.3. If the Office refuses to renew the registration, it shall notify the registrant of his
refusal and the reasons therefor.
146.4. An applicant for renewal not domiciled in the Philippines shall be subject to and
comply with the requirements of this Act. (Sec. 15, R.A. No. 166a)
Sec. 147.
Rights Conferred. –
147.1. Except in cases of importation of drugs and medicines allowed under Section 72.1 of
this Act and of off-patent drugs and medicines, the owner of a registered mark shall have the
exclusive right to prevent all third parties not having the owner’s consent from using in the
course of trade identical or similar signs or containers for goods or services which are identical
or 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 72.1 of this Act, as well as imported or sold
off-patent drugs and medicines; Provided, That said drugs and medicines bear the registered
marks that have not been tampered, unlawfully modified, or infringed upon, under Section 155
of this Code.24
147.2. The exclusive right of the owner of a well-known mark defined in Subsection 123.1(e)
which is registered in the Philippines, shall extend to goods and services which are not similar
to those in respect of which the mark is registered: Provided, That use of that mark in relation
24
As amended by R.A. No. 9502
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to those goods or services would indicate a connection between those goods or services and
the owner of the registered mark: Provided further, That the interests of the owner of the
registered mark are likely to be damaged by such use. (n)
Sec. 148.
Use of Indications by Third Parties for Purposes Other than those for which
the Mark is Used. - Registration of the mark shall not confer on the registered owner the right to
preclude third parties from using bona fide their names, addresses, pseudonyms, a
geographical name, or exact indications concerning the kind, quality, quantity, destination,
value, place of origin, or time of production or of supply, of their goods or services: Provided,
That such use is confined to the purposes of mere identification or information and cannot
mislead the public as to the source of the goods or services. (n)
Sec. 149.
Assignment and Transfer of Application and Registration. –
149.1. 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. (n)
149.2. 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.
149.3. 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.
149.4. 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 recorded, and the mark, when registered, shall be
in the name of the assignee or transferee.
149.5. Assignments and transfers shall have no effect against third parties until they are
recorded at the Office. (Sec. 31, R.A. No. 166a)
Sec. 150.
License Contracts. –
150.1. 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.
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150.2. 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. (n)
Sec. 151.
Cancellation. –
151.1. A petition to cancel a registration of a mark under this Act may be filed with the
Bureau of Legal Affairs by any person who believes that he is or will be damaged by the
registration of a mark under this Act as follows:
(a) Within five (5) years from the date of the registration of the mark under this Act.
(b) At any time, if the registered mark becomes the generic name for the goods or services,
or a portion thereof, for which it is registered, or has been abandoned, or its registration
was obtained fraudulently or contrary to the provisions of this Act, or if the registered
mark is being used by, or with the permission of, the registrant so as to misrepresent
the source of the goods or services on or in connection with which the mark is used. 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. (n)
(c) At any time, if the registered owner of the mark without legitimate reason fails to use the
mark within the Philippines, or to cause it to be used in the Philippines by virtue of a
license during an uninterrupted period of three (3) years or longer.
151.2. 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 same registered mark
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may be decided. (Sec. 17, R.A. No. 166a)
Sec. 152.
Non-use of a Mark When Excused. –
152.1. 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.
152.2. 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.
152.3. 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.
152.4. 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. (n)
Sec. 153.
Requirements of Petition; Notice and Hearing. - Insofar as applicable, the
petition for cancellation shall be in the same form as that provided in Section 134 hereof, and
notice and hearing shall be as provided in Section 135 hereof.
Sec. 154.
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
IPO Gazette. (Sec. 19. R.A. No. 166a)
Sec. 155.
Remedies; Infringement. - Any person who shall, without the consent of the
owner of the registered mark:
155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a
registered mark or the same container or a dominant feature thereof in connection with the
sale, offering for sale, distribution, advertising of any goods or services including other
preparatory steps necessary to carry out the sale of any goods or services on or in connection
with which such use is likely to cause confusion, or to cause mistake, or to deceive; or
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155.2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant
feature thereof and apply such reproduction, counterfeit, copy or colorable imitation to labels,
signs, prints, packages, wrappers, receptacles or advertisements intended to be used in
commerce upon or in connection with the sale, offering for sale, distribution, or advertising of
goods or services on or in connection with which such use is likely to cause confusion, or to
cause mistake, or to deceive, shall be liable in a civil action for infringement by the registrant
for the remedies hereinafter set forth: Provided, That the infringement takes place at the
moment any of the acts stated in Subsection 155.1 or this subsection are committed
regardless of whether there is actual sale of goods or services using the infringing material.
(Sec. 22, R.A. No 166a)
Sec. 156.
Actions, and Damages and Injunction for Infringement. –
156.1. The owner of a registered mark may recover damages from any person who infringes
his rights, and the measure of the damages suffered shall be either the reasonable profit which
the complaining party would have made, had the defendant not infringed his rights, or the profit
which the defendant actually made out of the infringement, or in the event such measure of
damages cannot be readily ascertained with reasonable certainty, then the court may award as
damages a reasonable percentage based upon the amount of gross sales of the defendant or
the value of the services in connection with which the mark or trade name was used in the
infringement of the rights of the complaining party. (Sec. 23, first par., R.A. No. 166a)
156.2. On application of the complainant, the court may impound during the pendency of
the action, sales invoices and other documents evidencing sales. (n)
156.3. In cases where actual intent to mislead the public or to defraud the complainant is
shown, in the discretion of the court, the damages may be doubled. (Sec. 23, first par., R.A.
No. 166)
156.4. The complainant, upon proper showing, may also be granted injunction. (Sec. 23,
second par., R.A. No. 166a)
Sec. 157.
Power of Court to Order Infringing Material Destroyed. –
157.1. In any action arising under this Act, in which a violation of any right of the owner of
the registered mark is established, the court may order that goods found to be infringing be,
without compensation of any sort, disposed of outside the channels of commerce in such a
manner as to avoid any harm caused to the right holder, or destroyed; and all labels, signs,
prints, packages, wrappers, receptacles and advertisements in the possession of the
defendant, bearing the registered mark or trade name or any reproduction, counterfeit, copy or
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colorable imitation thereof, all plates, molds, matrices and other means of making the same,
shall be delivered up and destroyed.
157.2. In regard to counterfeit goods, the simple removal of the trademark affixed shall not
be sufficient other than in exceptional cases which shall be determined by the Regulations, to
permit the release of the goods into the channels of commerce. (Sec. 24, R.A. No. 166a)
Sec. 158.
Damages; Requirement of Notice. - In any suit for infringement, the owner of
the registered mark shall not be entitled to recover profits or damages unless the acts have
been committed with knowledge that such imitation is likely to cause confusion, or to cause
mistake, or to deceive. Such knowledge is presumed if the registrant gives notice that his mark
is registered by displaying with the mark the words "Registered Mark" or the letter R within a
circle or if the defendant had otherwise actual notice of the registration. (Sec. 21, R.A. No. 166a)
Sec. 159.
Limitations to Actions for Infringement.25 - Notwithstanding any other
provision of this Act, the remedies given to the owner of a right infringed under this Act shall be
limited as follows:
159.1. Notwithstanding the provisions of Section 155 hereof, a registered mark shall have
no effect against any person who, in good faith, before the filing date or the priority date, was
using the mark for the purposes of his business or enterprise: Provided, That his right may only
be transferred or assigned together with his enterprise or business or with that part of his
enterprise or business in which the mark is used.
159.2. Where an infringer who is engaged solely in the business of printing the mark or
other infringing materials for others is an innocent infringer, the owner of the right infringed shall
be entitled as against such infringer only to an injunction against future printing.
159.3. Where the infringement complained of is contained in or is part of paid
advertisement in a newspaper, magazine, or other similar periodical or in an electronic
communication, the remedies of the owner of the right infringed as against the publisher or
distributor of such newspaper, magazine, or other similar periodical or electronic
communication shall be limited to an injunction against the presentation of such advertising
matter in future issues of such newspapers, magazines, or other similar periodicals or in future
transmissions of such electronic communications. The limitations of this subparagraph shall
apply only to innocent infringers: Provided, That such injunctive relief 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
25
As amended by R.A. No. 9502
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the dissemination of such infringing matter in any particular issue of such periodical or in an
electronic communication would delay the delivery of such issue or transmission of such
electronic communication is customarily conducted in accordance with the 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
159.4. There shall be no infringement of trademarks or tradenames of imported or sold
drugs and medicines allowed under Section 72.1 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 155 of this Code.
Sec. 160.
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. 21-A, R.A. No. 166a)
Sec. 161.
Authority to Determine Right to Registration. - In any action involving a
registered mark, the court may determine the right to registration, order the cancellation of a
registration, in whole or in part, and otherwise rectify the register with respect to the registration
of any party to the action in the exercise of this. Judgment and orders shall be certified by the
court to the Director, who shall make appropriate entry upon the records of the Bureau, and
shall be controlled thereby. (Sec. 25, R.A. No. 166a)
Sec. 162.
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. 26, R.A. No. 166)
Sec. 163.
Jurisdiction of Court. - All actions under Sections 150, 155, 164, and 166 to
169 shall be brought before the proper courts with appropriate jurisdiction under existing laws.
(Sec. 27, R.A. No. 166)
Sec. 164.
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
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registrations and within one (1) month after the judgment is entered or an appeal is taken, the
clerk of court shall give notice thereof to the Office, and the latter shall endorse the same upon
the filewrapper of the said registration or registrations and incorporate the same as a part of the
contents of said filewrapper. (n)
Sec. 165.
Trade Names or Business Names. -
165.1. 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.
165.2. (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.
165.3. The remedies provided for in Sections 153 to 156 and Sections 166 and 167 shall
apply mutatis mutandis.
165.4. 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 Subsections 149.2 to 149.4
shall apply mutatis mutandis.
Sec. 166.
Goods Bearing Infringing Marks or Trade Names. - No article of imported
merchandise which shall copy or simulate the name of any domestic product, or manufacturer,
or dealer, or which shall copy or simulate a mark registered in accordance with the provisions of
this Act, or shall bear a mark or trade name calculated to induce the public to believe that the
article is manufactured in the Philippines, or that it is manufactured in any foreign country or
locality other than the country or locality where it is in fact manufactured, shall be admitted to
entry at any customhouse of the Philippines. In order to aid the officers of the customs service
in enforcing this prohibition, any person who is entitled to the benefits of this Act, may require
that his name and residence, and the name of the locality in which his goods are manufactured,
a copy of the certificate of registration of his mark or trade name, to be recorded in books which
shall be kept for this purpose in the Bureau of Customs, under such regulations as the Collector
of Customs with the approval of the Secretary of Finance shall prescribe, and may furnish to the
said Bureau facsimiles of his name, the name of the locality in which his goods are
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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. (Sec. 35, R.A. No. 166)
Sec. 167.
Collective Marks. –
167.1. Subject to Subsections 167.2 and 167.3, Sections 122 to 164 and 166 shall apply to
collective marks, except that references therein to "mark" shall be read as "collective mark."
167.2.
(a) An application for registration of a collective mark shall designate the mark as a
collective mark and shall be accompanied by a copy of the agreement, if any, governing
the use of the collective mark.
(b) The registered owner of a collective mark shall notify the Director of any changes made
in respect of the agreement referred to in paragraph (a).
167.3. In addition to the grounds provided in Section 149, the Court shall cancel the
registration of a collective mark if the person requesting the cancellation proves that only the
registered owner uses the mark, or that he uses or permits its use in contravention of the
agreements referred to in Subsection 166.2 or that he uses or permits its use in a manner liable
to deceive trade circles or the public as to the origin or any other common characteristics of
the goods or services concerned.
167.4. The registration of a collective mark, or an application therefor shall not be the
subject of a license contract. (Sec. 40, R.A. No. 166a)
Sec. 168.
Unfair Competition, Rights, Regulation and Remedies. –
168.1. A person who has identified in the mind of the public the goods he manufactures or
deals in, his business or services from those of others, whether or not a registered mark is
employed, has a property right in the goodwill of the said goods, business or services so
identified, which will be protected in the same manner as other property rights.
168.2. Any person who shall employ deception or any other means contrary to good faith
by which he shall pass off the goods manufactured by him or in which he deals, or his
business, or services for those of the one having established such goodwill, or who shall
commit any acts calculated to produce said result, shall be guilty of unfair competition, and
shall be subject to an action therefor.
168.3. In particular, and without in any way limiting the scope of protection against unfair
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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.
168.4. The remedies provided by Sections 156, 157 and 161 shall apply mutatis mutandis.
(Sec. 29, R.A. No. 166a)
Sec. 169.
False Designations of Origin; False Description or Representation. –
169.1. 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,
qualities, or geographic origin of his or her or another person’s goods, services, or
commercial activities, shall be liable to a civil action for damages and injunction
provided in Sections 156 and 157 of this Act by any person who believes that he or she
is or likely to be damaged by such act.
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169.2. 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. (Sec. 30, R.A. No. 166a)
Sec. 170.
Penalties. - Independent of the civil and administrative sanctions imposed by
law, a criminal penalty of imprisonment from two (2) years to five (5) years and a fine ranging
from Fifty thousand pesos (P50,000) to Two hundred thousand pesos (P200,000), shall be
imposed on any person who is found guilty of committing any of the acts mentioned in Section
155, Section 168 and Subsection 169.1. (Arts. 188 and 189, Revised Penal Code)
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PART IV.
THE LAW ON COPYRIGHT
Chapter I.
PRELIMINARY PROVISIONS
Sec. 171.
Definitions. following meaning:
For the purpose of this Act, the following terms have the
171.1. "Author" is the natural person who has created the work;
171.2. A "collective work" is a work which has been created by two (2) or more natural
persons at the initiative and under the direction of another with the understanding that it will be
disclosed by the latter under his own name and that contributing natural persons will not be
identified;
171.3. "Communication to the public" or "communicate to the public" means any
communication to the public, including broadcasting, rebroadcasting, retransmitting by cable,
broadcasting and retransmitting by satellite, and includes the making of a work available to the
public by wire or wireless means in such a way that members of the public may access these
works from a place and time individually chosen by them;26
171.4. A "computer" is an electronic or similar device having information-processing
capabilities, and a "computer program" is a set of instructions expressed in words, codes,
schemes or in any other form, which is capable when incorporated in a medium that the
computer can read, or causing the computer to perform or achieve a particular task or result;
171.5. "Public lending" is the transfer of possession of the original or a copy of a work or
sound recording for a limited period, for non-profit purposes, by an institution the services of
which are available to the public, such as public library or archive;
171.6. "Public performance," in the case of a work other than an audiovisual work, is the
recitation, playing, dancing, acting or otherwise performing the work, either directly or by
means of any device or process; in the case of an audiovisual work, the showing of its images
in sequence and the making of the sounds accompanying it audible; and, in the case of a
sound recording, making the recorded sounds audible at a place or at places where persons
outside the normal circle of a family and that family’s closest social acquaintances are or can
be present, irrespective of whether they are or can be present at the same place and at the
same time, or at different places and/or at different times, and where the performance can be
26
As amended by R.A. No. 10372
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perceived without the need for communication within the meaning of Subsection 171.3;
171.7. "Published works" means works, which, with the consent of the authors, are made
available to the public by wire or wireless means in such a way that members of the public may
access these works from a place and time individually chosen by them: Provided, That
availability of such copies has been such, as to satisfy the reasonable requirements of the
public, having regard to the nature of the work;
171.8. "Rental" is the transfer of the possession of the original or a copy of a work or a
sound recording for a limited period of time, for profit-making purposes;
171.9. "Reproduction" is the making of one (1) or more copies, temporary or permanent, in
whole or in part, of a work or a sound recording in any manner or form without prejudice to the
provisions of Section 185 of this Act (Sec. 41 [E], P.D. No. 49a);27
171.10. A "work of applied art" is an artistic creation with utilitarian functions or
incorporated in a useful article, whether made by hand or produced on an industrial scale;
171.11. A "work of the Government of the Philippines" is a work created by an officer or
employee of the Philippine Government or any of its subdivisions and instrumentalities,
including government-owned or controlled corporations as part of his regularly prescribed
official duties.
171.12. “Technological measure” means any technology, device or component that, in the
normal course of its operation, restricts acts in respect of a work, performance or sound
recording, which are not authorized by the authors, performers or producers of sound
recordings concerned or permitted by law;28
171.13. “Rights management information” means information which identifies the work,
sound recording or performance; the author of the work, producer of the sound recording or
performer of the performance; the owner of any right in the work, sound recording or
performance; or information about the terms and conditions of the use of the work, sound
recording or performance; and any number or code that represent such information, when any
of these items is attached to a copy of the work, sound recording or fixation of performance or
appears in conjunction with the communication to the public of a work, sound recording or
performance.29
27
As amended by R.A. No. 10372
Introduced by R.A. No. 10372
29
Introduced by R.A. No. 10372
28
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Chapter II.
ORIGINAL WORKS
Sec. 172.
Literary and Artistic Works. –
172.1. Literary and artistic works, hereinafter referred to as "works", are original intellectual
creations in the literary and artistic domain protected from the moment of their creation and
shall include in particular:
(a) Books, pamphlets, articles and other writings;
(b) Periodicals and newspapers;
(c) Lectures, sermons, addresses, dissertations prepared for oral delivery, whether or not
reduced in writing or other material form;
(d) Letters;
(e) Dramatic or dramatico-musical compositions; choreographic works or entertainment in
dumb shows;
(f) Musical compositions, with or without words;
(g) Works of drawing, painting, architecture, sculpture, engraving, lithography or other
works of art; models or designs for works of art;
(h) Original ornamental designs or models for articles of manufacture, whether or not
registrable as an industrial design, and other works of applied art;
(i) Illustrations, maps, plans, sketches, charts and three-dimensional works relative to
geography, topography, architecture or science;
(j) Drawings or plastic works of a scientific or technical character;
(k) Photographic works including works produced by a process analogous to photography;
lantern slides;
(l) Audiovisual works and cinematographic works and works produced by a process
analogous to cinematography or any process for making audio-visual recordings;
(m) Pictorial illustrations and advertisements;
(n) Computer programs; and
(o) Other literary, scholarly, scientific and artistic works.
172.2. Works are protected by the sole fact of their creation, irrespective of their mode or
form of expression, as well as of their content, quality and purpose. (Sec. 2, P.D. No. 49a)
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Chapter III.
DERIVATIVE WORKS
Sec. 173.
Derivative Works. –
173.1. The following derivative works shall also be protected by copyright:
(a) Dramatizations, translations, adaptations, abridgments, arrangements, and other
alterations of literary or artistic works; and
(b) Collections of literary, scholarly or artistic works, and compilations of data and other
materials which are original by reason of the selection or coordination or arrangement of
their contents. (Sec. 2, [P] and [Q], P.D. No. 49)
173.2. The works referred to in paragraphs (a) and (b) of Subsection 173.1 shall be
protected as new works: Provided however, That such new work shall not affect the force of
any subsisting copyright upon the original works employed or any part thereof, or be construed
to imply any right to such use of the original works, or to secure or extend copyright in such
original works. (Sec. 8, P.D. 49; Art. 10, TRIPS)
Sec. 174.
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. (n)
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Chapter IV.
WORKS NOT PROTECTED
Sec. 175.
Unprotected Subject Matter. - Notwithstanding the provisions of Section 172
and 173, no protection shall extend, under this law, to any idea, procedure, system, method or
operation, concept, principle, discovery or mere data as such, even if they are expressed,
explained, illustrated or embodied in a work; news of the day and other miscellaneous facts
having the character of mere items of press information; or any official text of a legislative,
administrative or legal nature, as well as any official translation thereof. (n)
Sec. 176.
Works of the Government. -
176.1. No copyright shall subsist in any work of the Government of the Philippines.
However, prior approval of the government agency or office wherein the work is created shall
be necessary for exploitation of such work for profit. Such agency or office may, among other
things, impose as a condition the payment of royalties. No prior approval or conditions shall be
required for the use of any purpose of statutes, rules and regulations, and speeches, lectures,
sermons, addresses, and dissertations, pronounced, read or rendered in courts of justice,
before administrative agencies, in deliberative assemblies and in meetings of public character.
(Sec. 9, first par., P.D. No. 49)
176.2. The author of speeches, lectures, sermons, addresses, and dissertations mentioned
in the preceding paragraphs shall have the exclusive right of making a collection of his works.
(n)
176.3. 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.
(Sec. 9, third par., P.D. No. 49)
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Chapter V.
COPYRIGHT OR ECONOMIC RIGHTS
Sec. 177.
Copyright or Economic Rights. - Subject to the provisions of Chapter VIII,
copyright or economic rights shall consist of the exclusive right to carry out, authorize or
prevent the following acts:
177.1. Reproduction of the work or substantial portion of the work;
177.2. Dramatization, translation, adaptation, abridgment, arrangement or other
transformation of the work;
177.3. The first public distribution of the original and each copy of the work by sale or other
forms of transfer of ownership;
177.4. Rental of the original or a copy of an audiovisual or cinematographic work, a work
embodied in a sound recording, a computer program, a compilation of data and other materials
or a musical work in graphic form, irrespective of the ownership of the original or the copy
which is the subject of the rental; (n)
177.5. Public display of the original or a copy of the work;
177.6. Public performance of the work; and
177.7. Other communication to the public of the work (Sec. 5, P.D. No. 49a)
Chapter VI.
OWNERSHIP OF COPYRIGHT
Sec. 178.
Rules on Copyright Ownership. - Copyright ownership shall be governed by
the following rules:
178.1. 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;
178.2. In the case of works of joint authorship, the co-authors shall be the original owners
of the copyright and in the absence of agreement, their rights shall be governed by the rules on
co-ownership. If, however, a work of joint authorship consists of parts that can be used
separately and the author of each part can be identified, the author of each part shall be the
original owner of the copyright in the part that he has created;
178.3. In the case of work created by an author during and in the course of his
employment, the copyright shall belong to:
(a) The employee, if the creation of the object of copyright is not a part of his regular duties
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even if the employee uses the time, facilities and materials of the employer.
(b) The employer, if the work is the result of the performance of his regularly-assigned
duties, unless there is an agreement, express or implied, to the contrary.
178.4. In the case of a work commissioned by a person other than an employer of the
author and who pays for it and the work is made in pursuance of the commission, the person
who so commissioned the work shall have ownership of the work, but the copyright thereto
shall remain with the creator, unless there is a written stipulation to the contrary;
178.5. In the case of audiovisual work, the copyright shall belong to the producer, the
author of the scenario, the composer of the music, the film director, and the author of the work
so adapted. However, subject to contrary or other stipulations among the creators, the
producer shall exercise the copyright to an extent required for the exhibition of the work in any
manner, except for the right to collect performing license fees for the performance of musical
compositions, with or without words, which are incorporated into the work; and
178.6. In respect of letters, the copyright shall belong to the writer subject to the provisions
of Article 723 of the Civil Code. (Sec. 6, P.D. No. 49a)
Sec. 179.
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. (Sec. 7, P.D. 49)
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Chapter VII.
TRANSFER, ASSIGNMENT AND LICENSING OF COPYRIGHT30
Sec. 180.
Rights of Assignee or Licensee.31 -
180.1. 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.
180.2. The copyright is not deemed assigned or licensed inter vivos, in whole or in part,
unless there is a written indication of such intention.
180.3. 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. (Sec. 15, P.D. No. 49a)
180.4. 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.
180.5. 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. 181.
Copyright and Material Object.32 - 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. 16, P.D. No. 49)
Sec. 182.
Filing of Assignment or License. - An assignment or exclusive license may be
filed in duplicate with the National Library 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 IPO Gazette. (Sec. 19, P.D. No. 49a)
Amended by R.A. No. 10372
Amended by R.A. No. 10372
32
Amended by R.A. No. 10372
30
31
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Sec. 183.
Designation of Society.33 - 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. For the said societies to
enforce the rights of their members, they shall first secure the necessary accreditation from the
Intellectual Property Office. (Sec. 32, P.D. No. 49a)
Chapter VIII.
LIMITATIONS ON COPYRIGHT
Sec. 184.
Limitations on Copyright. -
184.1. Notwithstanding the provisions of Chapter V, the following acts shall not constitute
infringement of copyright:
(a) The recitation or performance of a work, once it has been lawfully made accessible to
the public, if done privately and free of charge or if made strictly for a charitable or
religious institution or society; (Sec. 10(1), P.D. No.49)
(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; (Sec. 11, third par., P.D.
No. 49)
(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; (Sec. 11, P.D. No. 49)
(d) The reproduction and communication to the public of literary, scientific or artistic works
as part of reports of current events by means of photography, cinematography or
broadcasting to the extent necessary for the purpose; (Sec. 12, P.D. No. 49)
(e) The inclusion of a work in a publication, broadcast, or other communication to the
public, sound recording or film, if such inclusion is made by way of illustration for
teaching purposes and is compatible with fair use: Provided, That the source and of the
33
Amended by R.A. No. 10372
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name of the author, if appearing in the work, are mentioned;
(f) 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;
(g) The making of ephemeral recordings by a broadcasting organization by means of its
own facilities and for use in its own broadcast;
(h) The use made of a work by or under the direction or control of the Government, by the
National Library or by educational, scientific or professional institutions where such use
is in the public interest and is compatible with fair use;
(i) The public performance or the communication to the public of a work, in a place where
no admission fee is charged in respect of such public performance or communication,
by a club or institution for charitable or educational purpose only, whose aim is not
profit making, subject to such other limitations as may be provided in the Regulations;
(n)
(j) Public display of the original or a copy of the work not made by means of a film, slide,
television image or otherwise on screen or by means of any other device or process:
Provided, That either the work has been published, or, that 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; and
(k) Any use made of a work for the purpose of any judicial proceedings or for the giving of
professional advice by a legal practitioner.
(l) The reproduction or distribution of published articles or materials in a specialized format
exclusively for the use of the blind, visually- and reading-impaired persons: 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.34
184.2. The provisions of this section shall be interpreted in such a way as to allow the work
to be used in a manner which does not conflict with the normal exploitation of the work and
34
Introduced by R.A. No. 10372
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does not unreasonably prejudice the right holder's legitimate interests.
Sec. 185.
Fair Use of a Copyrighted Work. - 185.1. 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.35 In determining whether
the use made of a work in any particular case is fair use, the factors to be considered shall
include:
(a) The purpose and character of the use, including whether such use is of a commercial
nature or is for non-profit educational purposes;
(b) The nature of the copyrighted work;
(c) The amount and substantiality of the portion used in relation to the copyrighted work as
a whole; and
(d) The effect of the use upon the potential market for or value of the copyrighted work.
185.2. 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. 186.
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. (n)
Sec. 187.
Reproduction of Published Work. -
187.1. Notwithstanding the provision of Section 177, and subject to the provisions of
Subsection 187.2, the private reproduction of a published work in a single copy, where the
reproduction is made by a natural person exclusively for research and private study, shall be
permitted, without the authorization of the owner of copyright in the work.
187.2. The permission granted under Subsection 187.1 shall not extend to the reproduction
35
Amended by R.A. No. 10372
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of:
(a) A work of architecture in the form of building or other construction;
(b) An entire book, or a substantial part thereof, or of a musical work in graphic form by
reprographic means;
(c) A compilation of data and other materials;
(d) A computer program except as provided in Section 189; and
(e) Any work in cases where reproduction would unreasonably conflict with a normal
exploitation of the work or would otherwise unreasonably prejudice the legitimate
interests of the author. (n)
Sec. 188.
Reprographic Reproduction by Libraries -
188.1. Notwithstanding the provisions of Subsection 177.1, any library or archive whose
activities are not for profit may, without the authorization of the author or copyright owner, make
a limited number of copies of the work, as may be necessary for such institutions to fulfill their
mandate, by reprographic reproduction:
(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.36
188.2. 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. (Sec. 13, P.D. 49a)
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Sec. 189.
Reproduction of Computer Program. -
189.1. Notwithstanding the provisions of Section 177, 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.
189.2. 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.
189.3. This provision shall be without prejudice to the application of Section 185 whenever
appropriate. (n)
Sec. 190.
Importation and Exportation of Infringing Materials.37 - Subject to the approval
of the Secretary of Finance, the Commissioner of Customs is hereby empowered to make rules
and regulations for preventing the importation or exportation of infringing articles prohibited
under Part IV of this Act and under relevant treaties and conventions to which the Philippines
may be a party and for seizing and condemning and disposing of the same in case they are
discovered after they have been imported or before they are exported. (Sec. 30, P.D. No. 49)
37
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Chapter IX.
DEPOSIT AND NOTICE
Sec. 191.
Deposit and Notice of Deposit with the National Library and the Supreme
38
Court Library. - At any time during the subsistence of the copyright, the owner of the copyright
or of any exclusive right in the work may, for the purpose of completing the records of the
National Library and the Supreme Court Library, register and deposit with them, by personal
delivery or by registered mail, two (2) complete copies or reproductions of the work in such
form as the Directors of the said libraries may prescribe in accordance with regulations:
Provided, That only works in the field of law shall be deposited with the Supreme Court Library.
Such registration and deposit is not a condition of copyright protection.
Sec. 192.
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. (Sec. 27, P.D. No.
49a)
Chapter X.
MORAL RIGHTS
Sec. 193.
Scope of Moral Rights. - The author of a work shall, independently of the
economic rights in Section 177 or the grant of an assignment or license with respect to such
right, have the right:
193.1. To require that the authorship of the works be attributed to him, in particular, the
right that his name, as far as practicable, be indicated in a prominent way on the copies, and in
connection with the public use of his work;
193.2. To make any alterations of his work prior to, or to withhold it from publication;
193.3. To object to any distortion, mutilation or other modification of, or other derogatory
action in relation to, his work which would be prejudicial to his honor or reputation; and
193.4. To restrain the use of his name with respect to any work not of his own creation or in
a distorted version of his work. (Sec. 34, P.D. No. 49)
Sec. 194.
38
Breach of Contract. - An author cannot be compelled to perform his contract
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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. 35, P.D. No. 49)
Sec. 195.
Waiver of Moral Rights. - An author may waive his rights mentioned in
Section 193 by a written instrument, but no such waiver shall be valid where its effects is to
permit another:
195.1. To use the name of the author, or the title of his work, or otherwise to make use of
his reputation with respect to any version or adaptation of his work which, because of
alterations therein, would substantially tend to injure the literary or artistic reputation of another
author; or
195.2. To use the name of the author with respect to a work he did not create. (Sec. 36, P.D.
No. 49)
Sec. 196.
Contribution to Collective Work. - When an author contributes to a collective
work, his right to have his contribution attributed to him is deemed waived unless he expressly
reserves it. (Sec. 37. P.D. No. 49)
Sec. 197.
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. 38, P.D. No. 49)
Sec. 198.
Term of Moral Rights. -
198.1. The rights of an author under Section 193.1. shall last during the lifetime of the
author and in perpetuity after his death while the rights under Sections 193.2. 193.3. and 193.4.
shall be coterminous with the economic rights, the moral rights shall not be assignable or
subject to license. The person or persons to be charged with the posthumous enforcement of
these rights shall be named in a written instrument which shall be filed with the National Library.
In default of such person or persons, such enforcement shall devolve upon either the author’s
heirs, and in default of the heirs, the Director of the National Library.39
198.2. For purposes of this Section, "Person" shall mean any individual, partnership,
39
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corporation, association, or society. The Director of the National Library may prescribe
reasonable fees to be charged for his services in the application of provisions of this Section.
(Sec. 39, P.D. No. 49)
Sec. 199.
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 Civil
Code may also be recovered. Any damage recovered after the creator's death shall be held in
trust for and remitted to his heirs, and in default of the heirs, shall belong to the government.
(Sec. 40, P.D. No. 49)
Chapter XI.
RIGHTS TO PROCEEDS IN SUBSEQUENT TRANSFERS
Sec. 200.
Sale or Lease of Work. - In every sale or lease of an original work of painting
or sculpture or of the original manuscript of a writer or composer, subsequent to the first
disposition thereof by the author, the author or his heirs shall have an inalienable right to
participate in the gross proceeds of the sale or lease to the extent of five percent (5%). This
right shall exist during the lifetime of the author and for fifty (50) years after his death. (Sec. 31,
P.D. No. 49)
Sec. 201.
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. (Sec. 33, P.D. No. 49)
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Chapter XII.
RIGHTS OF PERFORMERS, PRODUCERS OF SOUND RECORDINGS AND
BROADCASTING ORGANIZATIONS
Sec. 202.
Definitions. - For the purpose of this Act, the following terms shall have the
following meanings:
202.1. "Performers" are actors, singers, musicians, dancers, and other persons who act,
sing, declaim, play in, interpret, or otherwise perform literary and artistic work;
202.2. "Sound recording" means the fixation of the sounds of a performance or of other
sounds, or representation of sound, other than in the form of a fixation incorporated in a
cinematographic or other audiovisual work;
202.3. An "audiovisual work or fixation" is a work that consists of a series of related images
which impart the impression of motion, with or without accompanying sounds, susceptible of
being made visible and, where accompanied by sounds, susceptible of being made audible;
202.4. "Fixation" means the embodiment of sounds, or of the representations thereof, from
which they can be perceived, reproduced or communicated through a device;
202.5. "Producer of a sound recording" means the person, or the legal entity, who or which
takes the initiative and has the responsibility for the first fixation of the sounds of a
performance or other sounds, or the representation of sounds;
202.6. "Publication of a fixed performance or a sound recording" means the offering of
copies of the fixed performance or the sound recording to the public, with the consent of the
right holder: Provided, That copies are offered to the public in reasonable quality;
202.7. "Broadcasting" means the transmission by wireless means for the public reception
of sounds or of images or of representations thereof; such transmission by satellite is also
"broadcasting" where the means for decrypting are provided to the public by the broadcasting
organization or with its consent;
202.8. "Broadcasting organization" shall include a natural person or a juridical entity duly
authorized to engage in broadcasting; and
202.9. "Communication to the public of a performance or a sound recording" means the
transmission to the public, by any medium, otherwise than by broadcasting, of sounds of a
performance or the representations of sounds fixed in a sound recording. For purposes of
Section 209, "communication to the public" includes making the sounds or representations of
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sounds fixed in a sound recording audible to the public.
Sec. 203.
Scope of Performers' Rights.40 - Subject to the provisions of Section 212,
performers shall enjoy the following exclusive rights:
203.1. As regards their performances, the right of authorizing:
(a) The broadcasting and other communication to the public of their performance; and
(b) The fixation of their unfixed performance.
203.2. The right of authorizing the direct or indirect reproduction of their performances fixed
in sound recordings or audiovisual works or fixations in any manner or form;
203.3. Subject to the provisions of Section 206, the right of authorizing the first public
distribution of the original and copies of their performance fixed in the sound recordings or
audiovisual works or fixations through sale or rental of other forms of transfer of ownership;
203.4. The right of authorizing the commercial rental to the public of the original and copies
of their performances fixed in sound recordings or audiovisual works or fixations, even after
distribution of them by, or pursuant to the authorization by the performer; and
203.5. The right of authorizing the making available to the public of their performances fixed
in sound recordings or audiovisual works or fixations, by wire or wireless means, in such a way
that members of the public may access them from a place and time individually chosen by
them. (Sec. 42, P.D. No. 49a)
Sec. 204.
Moral Rights of Performers. -
204.1. Independently of a performer's economic rights, the performer, shall, as regards his
live aural performances or performances fixed in sound recordings or in audiovisual works or
fixations, have the right to claim to be identified as the performer of his performances, except
where the omission is dictated by the manner of the use of the performance, and to object to
any distortion, mutilation or other modification of his performances that would be prejudicial to
his reputation.41
204.2. The rights granted to a performer in accordance with Subsection 203.1 shall be
maintained and exercised fifty (50) years after his death, by his heirs, and in default of heirs, the
government, where protection is claimed. (Sec. 43, P.D. no. 49)
40
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Amended by R.A. No. 10372
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Sec. 205.
Limitation on Right. -
205.1. Subject to the provisions of Section 206, once the performer has authorized the
broadcasting or fixation of his performance, the provisions of Sections 203 shall have no further
application.
205.2. The provisions of Section 184 and Section 185 shall apply mutatis mutandis to
performers. (n)
Sec. 206.
Additional Remuneration for Subsequent Communications or Broadcasts. Unless otherwise provided in the contract, in every communication to the public or broadcast of
a performance subsequent to the first communication or broadcast thereof by the broadcasting
organization, the performer shall be entitled to an additional remuneration equivalent to at least
five percent (5%) of the original compensation he or she received for the first communication or
broadcast. (n)
Sec. 207.
Contract Terms. - Nothing in this Chapter shall be construed to deprive
performers of the right to agree by contracts on terms and conditions more favorable for them
in respect of any use of their performance. (n)
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Chapter XIII.
PRODUCERS OF SOUND RECORDINGS
Sec. 208.
Scope of Right. - Subject to the provisions of Section 212, producers of
sound recordings shall enjoy the following exclusive rights:
208.1. The right to authorize the direct or indirect reproduction of their sound recordings, in
any manner or form; the placing of these reproductions in the market and the right of rental or
lending;
208.2. The right to authorize the first public distribution of the original and copies of their
sound recordings through sale or rental or other forms of transferring ownership; and
208.3. The right to authorize the commercial rental to the public of the original and copies
of their sound recordings, even after distribution by them by or pursuant to authorization by the
producer. (Sec. 46, P.D. No. 49a)
208.4. The right to authorize the making available to the public of their sound recordings in
such a way that members of the public may access the sound recording from a place and at a
time individually chosen or selected by them, as well as other transmissions of a sound
recording with like effect.42
Sec. 209.
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.
47, P.D. No. 49a)
Sec. 210.
Limitation of Right. - Sections 184 and 185 shall apply mutatis mutandis to
the producer of sound recordings. (Sec. 48, P.D. No. 49a)
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Chapter XIV.
BROADCASTING ORGANIZATIONS
Sec. 211.
Scope of Right. - Subject to the provisions of Section 212, broadcasting
organizations shall enjoy the exclusive right to carry out, authorize or prevent any of the
following acts:
211.1. The rebroadcasting of their broadcasts;
211.2. The recording in any manner, including the making of films or the use of video tape,
of their broadcasts for the purpose of communication to the public of television broadcasts of
the same; and
211.3. The use of such records for fresh transmissions or for fresh recording. (Sec. 52, P.D.
No. 49)
Chapter XV.
LIMITATIONS ON PROTECTION
Sec. 212.
Limitations on Rights.43 - The provisions of Chapter VIII shall apply mutatis
mutandis to the rights of performers, producers of sound recordings and broadcasting
organizations.
Chapter XVI.
TERM OF PROTECTION
Sec. 213.
Term of Protection. -
213.1. Subject to the provisions of Subsections 213.2 to 213.5, the copyright in works under
Sections 172 and 173 shall be protected during the life of the author and for fifty (50) years after
his death. This rule also applies to posthumous works. (Sec. 21, first sentence, P.D. No. 49a)
213.2. 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. (Sec. 21, second
sentence, P.D. no. 49)
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213.3. 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 Subsections 213.1 and 213.2 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. (Sec. 23, P.D. No. 49)
213.4. In case of works of applied art the protection shall be for a period of twenty-five (25)
years from the date of making. (Sec. 24(B), P.D. No. 49a)
213.5. 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. (Sec. 24(C), P.D.
49a)
213.6. 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. 24(C), P.D.
No. 49a)
Sec. 214.
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. (Sec. 25, P.D. No. 49)
Sec. 215.
Organizations. -
Term
of
Protection
for
Performers,
Producers
and
Broadcasting
215.1. The rights granted to performers and producers of sound recordings under this law
shall expire:
(a) For performances not incorporated in recordings, fifty (50) years from the end of the
year in which the performance took place; and
(b) For sound or image and sound recordings and for performances incorporated therein,
fifty (50) years from the end of the year in which the recording took place.
215.2. 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. (Sec. 55, P.D. No. 49a)
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Chapter XVII.
INFRINGEMENT
Sec. 216.
one:
Infringement.44 – Any person infringes a right protected under this Act when
(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.
216.1. Remedies for Infringement – Any person infringing a right protected under this law
shall be liable:
(a) To an injunction restraining such infringement. The court may also order the defendant
to desist from an infringement, among others, to prevent the entry into the channels of
commerce of imported goods that involve an infringement, immediately after customs
clearance of such goods.
(b) 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:
44
(i)
Circumvents effective technological measures; or
(ii)
Having reasonable grounds to know that it will induce, enable, facilitate or
conceal the infringement, remove or alter any electronic rights management
information from a copy of a work, sound recording, or fixation of a
performance, or distribute, import for distribution, broadcast, or communicate to
the public works or copies of works without authority, knowing that electronic
rights management information has been removed or altered without authority.
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(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.
(d) Deliver under oath for destruction without any compensation all infringing copies or
devices, as well as all plates, molds, or other means for making such infringing copies
as the court may order.
(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 (Php50,000.00). In awarding statutory damages, the court may
consider the following factors:
(1) The nature and purpose of the infringing act;
(2) The flagrancy of the infringement;
(3) Whether the defendant acted in bad faith;
(4) The need for deterrence;
(5) Any loss that the plaintiff has suffered or is likely to suffer by reason of the infringement;
and
(6) Any benefit shown to have accrued to the defendant by reason of the infringement.
In case the infringer was not aware and had no reason to believe that his acts constitute an
infringement of copyright, the court in its discretion may reduce the award of statutory
damages to a sum of not more than Ten thousand pesos (Php10,000.00): Provided, That the
amount of damages to be awarded shall be doubled against any person who:
(i)
(ii)
Circumvents effective technological measures; or
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.
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216.2. In an infringement action, the court shall also have the power to order the seizure and
impounding of any article which may serve as evidence in the court proceedings, in
accordance with the rules on search and seizure involving violations of intellectual property
rights issued by the Supreme Court. (Sec.28, P.D. No. 49a)
The foregoing shall not preclude an independent suit for relief by the injured party by way of
damages, injunction, accounts or otherwise.
Sec. 217.
Criminal Penalties. -
217.1. Any person infringing any right secured by provisions of Part IV of this Act or aiding
or abetting such infringement shall be guilty of a crime punishable by:
(a) Imprisonment of one (1) year to three (3) years plus a fine ranging from Fifty thousand
pesos (P50,000) to One hundred fifty thousand pesos (P150,000) for the first offense.
(b) Imprisonment of three (3) years and one (1) day to six (6) years plus a fine ranging from
One hundred fifty thousand pesos (P150,000) to Five hundred thousand pesos
(P500,000) for the second offense.
(c) Imprisonment of six (6) years and one (1) day to nine (9) years plus a fine ranging from
Five hundred thousand pesos (P500,000) to One million five hundred thousand pesos
(P1,500,000) for the third and subsequent offenses.
(d) In all cases, subsidiary imprisonment in cases of insolvency.
217.2.45 In determining the number of years of imprisonment and the amount of fine, the
court shall consider the value of the infringing materials that the defendant has produced or
manufactured and the damage that the copyright owner has suffered by reason of the
infringement: Provided, That the respective maximum penalty stated in Section 217.1. (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;
(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
(c) 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.
45
Amended by R.A. No. 10372
105
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217.3. Any person who at the time when copyright subsists in a work has in his possession
an article which he knows, or ought to know, to be an infringing copy of the work for the
purpose of:
(a) Selling, letting for hire, or by way of trade offering or exposing for sale, or hire, the
article;
(b) Distributing the article for purpose of trade, or for any other purpose to an extent that
will prejudice the rights of the copyright owner in the work; or
(c) Trade exhibit of the article in public, shall be guilty of an offense and shall be liable on
conviction to imprisonment and fine as above mentioned. (Sec. 29, P.D. No. 49a)
Sec. 218.
Affidavit Evidence. -
218.1. 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.46
218.2. 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
(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
46
Amended by R.A. No. 10372
106
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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.
(n)
Sec. 219.
Presumption of Authorship. -
219.1. 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.
219.2. The person or body corporate whose name appears on an audiovisual work in the
usual manner shall, in the absence of proof to the contrary, be presumed to be the maker of
said work. (n)
Sec. 220.
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:
220.1. Where the statement cannot be valid under this Act or any other law concerning
intellectual property.
220.2. Where the statement is contradicted by another statement recorded in the
international register. (n)
Sec. 220A. Disclosure of Information.47 - 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 XVIII.
SCOPE OF APPLICATION
Sec. 221.
Points of Attachment for Works under Sections 172 and 173. - 221.1. The
protection afforded by this Act to copyrightable works under Sections 172 and 173 shall apply
47
Introduced by R.A. No. 10372
107
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to:
(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.
221.2. 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. (n)
Sec. 222.
Points of Attachment for Performers. - The provisions of this Act on the
protection of performers shall apply to:
222.1. Performers who are nationals of the Philippines;
222.2. Performers who are not nationals of the Philippines but whose performances:
(a) Take place in the Philippines; or
(b) Are incorporated in sound recordings that are protected under this Act; or
(c) Which has not been fixed in sound recording but are carried by broadcast qualifying for
protection under this Act. (n)
Sec. 223.
Points of Attachment for Sound Recordings. - The provisions of this Act on
the protection of sound recordings shall apply to:
223.1. sound recordings the producers of which are nationals of the Philippines; and
223.2. sound recordings that were first published in the Philippines. (n)
Sec. 224.
Points of Attachment for Broadcasts. -
224.1. The provisions of this Act on the protection of broadcasts shall apply to:
(a) Broadcasts of broadcasting organizations the headquarters of which are situated in the
Philippines; and
108
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(b) Broadcasts transmitted from transmitters situated in the Philippines.
224.2. 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. (n)
Chapter XIX.
INSTITUTION OF ACTIONS
Sec. 225.
Jurisdiction. - Without prejudice to the provisions of Subsection 7.1(c),
actions under this Act shall be cognizable by the courts with appropriate jurisdiction under
existing law. (Sec. 57, P.D. No.49a)
Sec. 226.
Damages.48 - No damages may be recovered under this Act after the lapse of
four (4) years from the time the cause of action arose. (Sec. 58, P.D. No. 49)
48
Amended by R.A. No. 10372
109
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Chapter XX.
MISCELLANEOUS PROVISIONS
Sec. 227.
Ownership of Deposit and Instruments. - All copies deposited and
instruments in writing filed with the National Library and the Supreme Court Library in
accordance with the provisions of this Act shall become the property of the Government. (Sec.
60,P.D. No. 49)
Sec. 228.
Public Records. - The section or division of the National Library and the
Supreme Court Library charged with receiving copies and instruments deposited and with
keeping records required under this Act and everything in it shall be opened to public
inspection. The Director of the National Library is empowered to issue such safeguards and
regulations as may be necessary to implement this Section and other provisions of this Act.
(Sec. 61, P.D. No. 49)
Sec. 229.
Copyright Division Fees. - The Copyright Section of the National Library shall
be classified as a Division upon the effectivity of this Act. The National Library shall have the
power to collect, for the discharge of its services under this Act, such fees as may be
promulgated by it from time to time subject to the approval of the Department Head. (Sec. 62,
P.D. 49a)
Sec. 230.
Adoption of Intellectual Property (IP) Policies.49 - Schools and universities
shall adopt intellectual property policies that would govern the use and creation of intellectual
property with the purpose of safeguarding the intellectual creations of the learning institution
and its employees, and adopting locally-established industry practice fair use guidelines. These
policies may be developed in relation to licensing agreements entered into by the learning
institution with a collective licensing organization.
49
Introduced by R.A. No. 10372; the succeeding sections were renumbered accordingly
110
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PART V.
FINAL PROVISIONS
Sec. 231.
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. 9-A, R.A. No. 165)
Sec. 232.
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. (n)
Sec. 233.
Appeals. –
233.1. Appeals from decisions of regular courts shall be governed by the Rules of Court.
Unless restrained by a higher court, the judgment of the trial court shall be executory even
pending appeal under such terms and conditions as the court may prescribe.
233.2. Unless expressly provided in this Act or other statutes, appeals from decisions of
administrative officials shall be provided in the Regulations. (n)
Sec. 234.
Organization of the Office; Exemption from the Salary Standardization Law
and the Attrition Law 234.1. The Office shall be organized within one (1) year after the approval of this Act. It shall
not be subject to the provisions of Republic Act. No. 7430.
234.2. The Office shall institute its own compensation structure: Provided, That the Office
shall make its own system to conform as closely as possible with the principles provided for
under Republic Act No. 6758. (n)
Sec. 235.
Abolition of the Bureau of Patents, Trademarks, and Technology Transfer. –
The Bureau of Patents, Trademarks, and Technology Transfer under the Department of Trade
and Industry is hereby abolished. All unexpended funds and fees, fines, royalties and other
charges collected for the calendar year, properties, equipment and records of the Bureau of
Patents, Trademarks and Technology Transfer, and such personnel as may be necessary are
hereby transferred to the Office. Personnel not absorbed or transferred to the Office shall enjoy
the retirement benefits granted under existing law, otherwise, they shall be paid the equivalent
of one month basic salary for every year of service, or the equivalent nearest fractions thereof
favorable to them on the basis of the highest salary received. (n)
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Sec. 236.
Applications Pending on Effective Date of Act –
236.1. All applications for patents pending in the Bureau of Patents, Trademarks and
Technology Transfer shall be proceeded with and patents thereon granted in accordance with
the Acts under which said applications were filed, and said Acts are hereby continued to be
enforced, to this extent and for this purpose only, notwithstanding the foregoing general repeal
thereof: Provided, That applications for utility models or industrial designs pending at the
effective date of this Act, shall be proceeded with in accordance with the provisions of this Act,
unless the applicants elect to prosecute said applications in accordance with the Acts under
which they were filed.
236.2. All applications for registration of marks or trade names pending in the Bureau of
Patents, Trademarks and Technology Transfer at the effective date of this Act may be amended,
if practicable to bring them under the provisions of this Act. The prosecution of such
applications so amended and the grant of registrations thereon shall be proceeded with in
accordance with the provisions of this Act. If such amendments are not made, the prosecution
of said applications shall be proceeded with and registrations thereon granted in accordance
with the Acts under which said applications were filed, and said Acts hereby continued in force
to this extent for this purpose only, notwithstanding the foregoing general repeal thereof. (n)
Sec. 237.
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. (n)
Sec. 238.
Notification on Berne Appendix. – The Philippines shall by proper compliance
with the requirements set forth under the Appendix of the Berne Convention (Paris Act, 1971)
avail itself of the special provisions regarding developing countries, including provisions for
licenses grantable by competent authority under the Appendix. (n)
Sec. 239.
Appropriations. – The funds needed to carry out the provisions of this Act
shall be charged to the appropriations of the Bureau of Patents, Trademarks, and Technology
Transfer under the current General Appropriations Act and the fees, fines, royalties and other
charges collected by the Bureau for the calendar year pursuant to Sections 14.1 and 234 of this
Act. Thereafter such sums as may be necessary for its continued implementations shall be
included in the annual General Appropriations Act. (n)
Sec. 240.
Repeals. –
240.1. All Acts and parts of Acts inconsistent herewith, more particularly Republic Act No.
165, as amended; Republic Act No. 166, as amended; and Articles 188 and 189 of the Revised
112
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Penal Code; Presidential Decree No. 49, including Presidential Decree No. 285, as amended,
are hereby repealed.50
240.2. Marks registered under Republic Act No. 166 shall remain in force but shall be
deemed to have been granted under this Act and shall be due for renewal within the period
provided for under this Act and, upon renewal, shall be reclassified in accordance with the
International Classification. Trade names and marks registered in the Supplemental Register
under Republic Act No. 166 shall remain in force but shall no longer be subject to renewal.
240.3. The provisions of this Act shall apply to works in which copyright protection
obtained prior to the effectivity of this Act is subsisting: Provided, That the application of this
Act shall not result in the diminution of such protection. (n)
Sec. 241.
Separability. – If any provision of this Act or the application of such provision
to any circumstances is held invalid, the remainder of the Act shall not be affected thereby. (n)
Sec. 242.
Effectivity. – This Act shall take effect on 1 January 1998. (n)
Approved and signed,
JOSE DE VENECIA, JR.
Speaker of the House of Representatives
ERNESTO M. MACEDA
President of the Senate
Signed by PRESIDENT FIDEL V. RAMOS into law on 06 June 1997.
50
See MANOLO P. SAMSON vs. HON. REYNALDO B. DAWAY, et. al, (G.R. Nos. 160054-55. July 21,
2004.) where the Supreme Court held that Republic Act No. 8293 did not expressly repeal Republic Act
No. 166, the Trademark Law that was in force prior to the IP Code, to quote:
“Notably, the xxx clause did not expressly repeal R.A. No. 166 in its entirety, otherwise, it would not have
used the phrases “parts of Acts” and “inconsistent herewith;” and it would have simply stated “Republic
Act No. 165, as amended; Republic Act No. 166, as amended; and Articles 188 and 189 of the Revised
Penal Code; Presidential Decree No. 49, including Presidential Decree No. 285, as amended are hereby
repealed.” It would have removed all doubts that said specific laws had been rendered without force and
effect. The use of the phrases “parts of Acts” and “inconsistent herewith” only means that the repeal
pertains only to provisions which are repugnant or not susceptible of harmonization with R.A. No. 8293.”
113
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PREVIOUS LAW
REPUBLIC ACT NO. 165
(PATENT LAW)51
AN ACT CREATING A PATENT OFFICE, PRESCRIBING ITS POWERS AND DUTIES,
REGULATING THE ISSUANCE OF PATENTS, AND APPROPRIATING FUNDS THEREFOR
Chapter I.
Organization and Operation
Sec. 1.
Patent Office. — There is hereby created a "Patent Office" under the
executive supervision of the Department of Justice, where all records, books, drawings,
specifications, and other papers and things pertaining to patents shall be safely kept and
preserved.
Sec. 2.
Officers and employees of the Patent Office. — The Patent Office shall be
under the direction of a Director who shall have an assistant to be known as Assistant Director.
The Director and Assistant Director shall be appointed by the President with the consent of the
Commission on Appointments of the Congress of the Philippines, and shall hold office during
good behavior. The Director shall receive a salary of seven thousand two hundred pesos a year,
and the Assistant Director a salary of six thousand pesos a year.
51
Enacted into law on 20 June 1947; Repealed impliedly by Sec. 240 of R.A. No. 8293 as amended.
Amended by:
1. Presidential Decree No. 1263 entitled "Amending Portions of Republic Act No. 165 Otherwise
Known as the Patent Law" (issued December 14, 1977)
2. Republic Act No. 864 entitled "An Act to Further Amend Sections Fifty-five, Fifty-seven,
Fifty-eight, Fifty-nine and Sixty Of Republic Act Numbered Six Hundred and Thirty-seven; and to
Amend Sections Twenty-eight, Thirty-three, Sixty-one, Sixty-two, Seventy-four, and Seventy-five
of said Republic Act Numbered One Hundred and Sixty-five" (approved June 16, 1953);
3. Republic Act No. 637 entitled "An Act to Amend Sections Ten, Fifteen, Sixteen, Fifty-five,
Fifty-seven, Fifty-eight, Fifty-nine, Sixty, and Seventy-eight of, and to Add New Sections
Twenty-seven-A, and Forty-one-A to Republic Act Numbered One-Hundred and Sixty-five,
Entitled "An Act Creating a Patent Office, Prescribing its Powers and Duties, Regulating the
Issuance of Patents, and Appropriating Funds Therefor"" (approved June 9, 1951).
Republic Act No. 165 (Patent Law)
114
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To carry into effect the provisions of this Act, there shall also be in said office such other
officers and employees as may be appointed by the Secretary of Justice upon
recommendation of the Director.
The term "Office" used in this Act means the Patent Office.
The term "Director" used in this Act refers to the Director of Patents or the Assistant
Director of Patents when acting as or performing the duties of the Director.
Sec. 3.
Special technical and scientific assistance. — The Director is empowered to
obtain the assistance of technical, scientific or other qualified officers or 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.
Sec. 4.
Seal of Office. — The Office shall have a seal with which patents and other
papers issued by it shall be authenticated. The form and design of the seal shall be approved
by the President of the Philippines.
Sec. 5.
Publication of laws and rules. — The Director shall print, or cause to be
printed, and make available for distribution, pamphlet copies of the laws and of the rules and
regulations of the Office, and may print circulars of information relating to matters within the
jurisdiction of the Office.
Sec. 6.
Publication of certain matters in the Official Gazette. — There shall be
published in the Official Gazette a suitable view of the drawing, if there be a drawing, and the
claims of each patent issued; the rules and regulations duly promulgated and the amendments
thereto; an annual index of the names of inventors and patentees and the title of the inventions
covered by the patents issued during each fiscal year; all notices and decisions required under
this Act to be published; and such other information relating to patents and other matters within
the jurisdiction of the Office, as may, in the discretion of the Director, be useful to the public.
Chapter II.
Inventions Patentable
Sec. 7.
Inventions patentable. — Any invention of a new and useful machine,
manufactured product or substance, process, or an improvement of any of the foregoing, shall
be patentable.
Sec. 8.
Inventions not patentable. — An invention shall not be patentable if it is
Republic Act No. 165 (Patent Law)
115
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contrary to public order or morals, or to public health or welfare, or if it constitutes a mere idea,
scientific principle or abstract theorem not embodied in an invention as specified in section
seven hereof, or any process not directed to the making or improving of a commercial product.
Sec. 9.
Invention not considered new or patentable. — An invention shall not be
considered new or capable of being patented if it was known or used by others in the
Philippines before the invention thereof by the inventor named in an application for patent for
the invention; or if it was patented or described in any printed publication in the Philippines or
any foreign country more than one year before the application for a patent therefor; or if it had
been in public use or on sale in the Philippines for more than one year before the application for
a patent therefor; or if it is the subject matter of a validly issued patent in the Philippines granted
on an application filed before the filing of the application for patent therefor.
Republic Act No. 165 (Patent Law)
116
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Chapter III.
Application for Patent
Sec. 10.
Right to patent.52 — The right to the patent belongs to the first true and
actual inventor, his heirs, legal representatives, or assigns. If two or more persons have an
invention jointly, the right to the patent belongs to them jointly. If two or more persons have
made the invention separately and independently of each other, the right to the patent shall
belong to the person who is the first to file an application for such invention, unless it is shown
that the second to file an application was the original and first inventor.
Whenever an application is made for a patent which, in the opinion of the Director, would
interfere with any pending application, or with any unexpired patent, he shall give notice thereof
to the applications, or applicant and patentee, as the case may be, and shall proceed to
determine the question of priority of invention. And upon termination of the interference
proceedings, the Director may issue a patent to the party who is adjudged the prior inventor.
Sec. 11.
Applications by non-residents. — Any person filing an application for patent
who is not a resident of the Philippines must appoint an agent or representative in the
Philippines upon whom notice or process relating to the application for patent may be served.
In the event of death, absence or inability of the agent or representative, a new agent or
representative must be appointed and notice thereof must be held in the Office. Upon failure to
maintain an agent or representative of record in this Office, service on the Director shall be
deemed sufficient.
Sec. 12.
Who may apply for patent. — An application for patent may be filed only by
the inventor, his heirs, legal representatives or assigns.
Sec. 13.
The application. — The application for patent shall be in English or Spanish,
or in the national language with its corresponding English translation, and signed by the
applicant, and shall include a statement giving the name, address, and citizenship or nationality
of the applicant and of the inventor, if the applicant is not the inventor, and:
(a) A specification;
(b) Drawings, where the invention can be shown by drawings;
(c) Power of attorney if the filing is through an attorney;
(d) The assignment or a certified copy of the assignment of the invention for recording,
where the application is filed by one who derives his title from the inventor, or proof of
title if the derivation is not by assignment;
52
Amended by R.A. No. 637.
Republic Act No. 165 (Patent Law)
117
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(e) A sworn statement by the inventor of his inventorship; or such sworn statement may be
made by his heirs or legal representatives in case of death or incapacity of the inventor;
however, such sworn statement will not be required if a certified copy of a previously
filed foreign application containing the same is filed;
(f) The appointment of a resident agent or representative in cases coming under section
eleven hereof; and
(g) The required fee.
Sec. 14.
The specification. — The specification shall include:
(a) The title of the invention;
(b) A brief statement of its nature and purpose;
(c) A brief explanation of the drawings, where there are drawings;
(d) A complete and detailed description of the invention in such full, clear, concise and
exact terms as to enable any person skilled in the art or science to which the invention
relates to make and practice the invention; and
(e) A distinct and explicit claim or claims of the subject matter which the applicant claims
as new and seeks to have patented.
Sec. 15.
Applications previously filed abroad.53 — An application for patent for an
invention filed in this country by any person who has previously regularly filed an application for
a patent for the same invention in a foreign country which, by treaty, convention, or law, affords
similar privileges to citizens of the Philippines, shall have the same force and effect as the same
application would have if filed in this country on the date on which the application for patent for
the same invention was first filed in such foreign country: Provided, That the application in this
country is filed within twelve months from the earliest date on which any such foreign
application was filed, and a certified copy of the foreign application together with a translation
thereof into English, if not in the English language, is filed within six months from the date of
filing in the Philippines, unless the Director for good cause shown shall extend the time for filing
such certified copy: And provided, further, That no patent shall be granted on an application for
patent for an invention which had been patented or described in a printed publication in this or
any foreign country more than one year before the date of the actual filing of the application in
this country, or which had been in public use or sale in this country for more than one year prior
to such filing.
53
Amended by R.A. No. 637.
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Chapter IV.
Issuance of Patent
Sec. 16.
Examination of the application.54 — When an application for patent has been
filed, the Director shall cause to be determined whether it complies with the formal
requirements and with the requirements of Chapter II of this Act. If the application is defective in
any respect, the applicant shall be notified of the specific defects and a time fixed, not less than
four months, within which such defects may be remedied.
Whenever, on examination, any claim for a patent is rejected, the Director shall cause the
applicant to be notified thereof, giving him briefly the reasons for such rejection, together with
such information and references as may be useful in judging of the propriety of renewing his
application or of altering his specification; and if, after receiving such notice, the applicant
persists in his claim for a patent, with or without altering his specifications, the Director shall
order a reexamination of the case.
No amendment for the first time presenting or asserting a claim which is the same as, or for
substantially the same subject matter as, a claim of an issued patent may be made in any
application unless such amendment is filed within one year from the date on which said patent
was granted.
If the applicant fails to request reconsideration of any adverse action or decision of the
Patent Office, or to remedy the defects indicated to him by the Office within the time fixed by
the Director, or within such additional time, not exceeding four months, as may be granted, the
application shall be denied.
Sec. 17.
Multiple inventions in one application. — If several independent inventions
which are not so closely related as to be proper in one application are claimed, the Director may
require the application to be restricted to a single invention in the same manner as notifications
of defects in the application. 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 the later
application is filed within four months after the requirement to divide becomes final, or within
such additional time, not exceeding four months, as may be granted.
Sec. 18.
Issuance of patent. — If the original or corrected application is in order, the
Director shall issue the patent and shall, as soon as practicable, make the publication required
by section six, Chapter I hereof.
54
Amended by R.A. No. 637.
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Sec. 19.
How issued. — 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 specification and drawings, if any, in books and records of the Office to be
kept for the purpose.
Sec. 20.
Content of patent. — The patent shall contain the patent number, the title of
the invention, the name and residence of the inventor and of the patentee if the patentee be
other than the inventor, the date on which the application was filed, the date on which it is
issued, and a grant to the patentee, his heirs or assigns, of the exclusive right to the invention
throughout the Republic of the Philippines for the term thereof. A copy of the specification and
drawings shall be annexed to the patent and be a part thereof.
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Chapter V.
Term of Patent
Sec. 21.
Term of patent. — The term of a patent shall begin on the date when the
patent is issued as shown on the face thereof and shall expire seventeen years thereafter.
However, a patent shall cease to be in force and effect if the patentee fails to pay the prescribed
annual fees within the prescribed times hereinafter provided or if the patent is cancelled in
accordance with the provisions of this Act.
Sec. 22.
Annual fees. — The first annual fee on a patent shall be due and payable on
the expiration of four years from the date of issue. In a similar manner, annual fees on subsisting
patents shall be due and payable on the fifth and each subsequent anniversary of the date of
issue. If any annual fee is not paid within the prescribed time, a notice of the non-payment shall
be published in the Official Gazette and the patentee shall have six months from the date of the
publication to pay the fee together with the surcharge required for the delayed payment. A
notice of the lapsing of a patent for non-payment of any annual fee shall be published in the
Official Gazette.
Sec. 23.
Reinstatement of a lapsed patent. — Within two years from the date on which
the first unpaid annual fee was due, a patent which has lapsed for non-payment of any annual
fee may be reinstated upon payment of all annual fees then due and the surcharge for
reinstatement, and upon proof satisfactory to the Director that such non-payment was due to
fraud, accident, mistake or excusable negligence: Provided, however, That such reinstatement
shall not prejudice the rights acquired by a third person while the patent was not in force.
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Chapter VI.
Surrender, Correction and Amendments of Patent
Sec. 24.
Surrender of patent. — Any patentee, 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 Director for cancellation.
Sec. 25.
Correction of mistakes of 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 by the records thereof, to make the patent conform to the records.
Sec. 26.
Correction of mistake of application. — On payment of the prescribed fee the
Director is authorized to correct any mistake in a patent of a formal or clerical nature, not
incurred through the fault of the Office.
Sec. 27.
Form and publication of amendment. — Amendment or correction of a patent
as provided in sections twenty-five and twenty-six hereof, 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 if the patent has been returned
to the Director. Notice of such amendment or correction shall be published in the Official
Gazette, and copies of the patent furnished by the Office shall include a copy of the certificate
of the amendment or correction.
Sec. 27-A.55
Whenever any patent is wholly or partly, inoperative or invalid, by reason
of a defective or insufficient specification, or by reason of the patentee claiming as his own
invention more than he had a right to claim as new, if the error has arisen by inadvertence,
accident, or mistake, and without any fraudulent or deceptive intention, the Director shall, on
the surrender of such patent and the payment of a filing fee of one hundred pesos, cause a
patent for the same invention, and in accordance with the corrected specification, to be
reissued to the patentee or to his assigns or legal representatives, for the unexpired part of the
term of the original patent. Such surrender shall take effect upon the issue of the reissued
patent, but in so far as the claims of the original and reissued patents are identical, such
surrender shall not affect any action then pending nor abate any cause of action then existing,
and the reissued patent to the extent that its claims are identical with the original patent shall
constitute a continuation thereof and have the effect continuously from the date of the original
patent. The Director may, in his discretion, cause several patents to be issued for distinct and
55
Introduced by R.A. No. 637.
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separate parts of the thing patented, upon demand of the applicant, and upon payment of fifty
pesos for a reissue for each of such reissued letters patent. The specifications and claims in
every such case shall be subject to revision and restriction in the same manner as original
applications are. Every patent so reissued, together with the corrected specifications, shall
have the same effect and operation in law, on the trial of all actions for causes thereafter
arising, as if the same had been originally filed in such corrected form; but no new matter shall
be introduced into the specification, nor in the case of a machine patent shall the model or
drawings be amended, except each by the other; but when there is neither model nor drawing,
amendments may be made upon proof satisfactory to the Director that such new matter or
amendment was a part of the original invention, and was omitted from the specification by
inadvertence, accident, or mistake, as aforesaid.
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Chapter VII.
Cancellation of Patents
Sec. 28.
General grounds for cancellation.56 — Any person may on payment of the
required fee petition the Director within three years from the date of publication of the issue of
the patent in the Official Gazette, to cancel the patent or any claim thereof, on any of the
following grounds:
(a) That the invention is not new or patentable in accordance with sections seven, eight,
and nine, or that the design or utility model is not new or patentable under section
fifty-five hereof;
(b) That the specification in the case of an invention does not comply with the requirement
of section fourteen, Chapter III hereof; or
(c) That the person to whom the patent was issued was not the true and actual inventor,
designer or author of the utility model or did not derive his rights from the true and
actual inventor, designer or author of the utility model.
Sec. 29.
When patent may be cancelled at any time. — A petition to cancel a patent
on any of the grounds specified in the next preceding section may be filed at any time by the
Solicitor General.
Sec. 30.
Requirements of the petition. — The petition for cancellation must be in
writing and verified by the petitioner or by any person on his behalf who knows the facts, and
shall specify the grounds upon which it is based, and include a statement of the facts to be
relied upon. Copies of printed publications or of patents of other countries, or other supporting
documents mentioned in the petition shall be filed therewith, together with the transaction
thereof into English, if not in the English language.
Sec. 31.
Notice and hearing. — Upon the filing of a petition for cancellation, the
Director 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 Official Gazette.
Sec. 32.
Cancellation of the patent. — If the Director finds that a case for cancellation
has been made out he shall order the patent or any specified claim or claims thereof cancelled.
The order shall not become effective until the time for appeal has elapsed or, if appeal is taken,
56
Amended by R.A. No. 864.
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until the judgment on appeal becomes final. When the order or judgment becomes final, any
rights conferred upon the patentee by the patent or any specified claim or claims cancelled
thereby shall terminate. Notice of cancellation shall be published in the Official Gazette.
Sec. 33.
Cancellation for fraud on the inventor, designer or author of the utility model.57
— In the case of the ground specified in paragraph (c), section twenty-eight hereof, if the
petition for cancellation is made by or on behalf of the true and actual inventor, designer or
author of the utility model, from whom the patentee fraudulently derived the invention design or
utility model and is successful on this ground, a patent may be obtained by such person, if he
does not have a patent, notwithstanding any knowledge or use or publication of the patent
cancelled: Provided, That the true and actual inventor, designer or author of the utility model
shall file an application for patent for such invention, design or utility model, within six months
after the order of cancellation has become final. The term of such patent, however, shall expire,
in the case of invention patents, seventeen years from the date of issue of the patent cancelled;
and in the case of design and utility model patents, five years from the date of the issue of the
original or renewal patent cancelled.
57
Amended by R.A. No. 864.
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Chapter VIII.
Licensing58
Article One
Voluntary Licensing
Sec. 33-A. Voluntary license contracts. —
(1) All voluntary license contracts as well as renewals thereof involving payment of royalty
for the use of patents, transfer of technology, or furnishing of services respecting
patents shall, whenever entered into between residents and non-residents, be
submitted to the Technology Resource Center for prior approval and registration.
(2) The royalty to be granted in all license contracts involving manufacturing (including
actual transfer of technology services such as secret formulae, processes, technical
know-how and the like) shall, whenever entered into between an alien licensor and a
Filipino licensee, not exceed five per cent (5%) of the net wholesale price of the articles
manufactured under the royalty agreement and shall be equally distributed to all the
patentees in cases where more than one patent similar to that contemplated in Section
34-C hereof are involved.
(3) The term "net wholesale price" means the gross amount billed for the patented product
subject to royalty less:
(a) Trade, quantity, or cash discounts, and broker's or agent's commission, if any,
allowed or paid;
(b) Credits or allowances, if any, given or made on account of rejection or return of
the patented product previously delivered; and
(c) Any tax, excise or other government charge, included in such amount, on, or
measured by the production, sale, use or delivery of the patented product.
(4) Unless and until approved and registered in accordance with paragraph (1) of this
section, the license contract contemplated therein may not be the subject of an
application file with either the Board of Investment or the Central Bank of the
Philippines. Neither will it have an effect against third persons until such registration.
58
Amended by P.D. No. 1263.
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Section 33-B. Rights of licensor. —
(1) In the absence of any provision to the contrary in the license contract, the grant of a
license shall not prevent the licensor from granting further licenses to third persons nor
from exploiting the invention himself.
(2) Without prejudice to the grant of a compulsory license in accordance with Section 34
hereof, the grant of an exclusive license shall prevent the licensor from granting licenses
to third persons and, unless otherwise expressly provided in the license contract, from
exploiting the invention himself.
Sec. 33-C.Rights of licensee. —
(1) The license shall be entitled to exploit the invention during the whole duration of the
patent in the entire territory of the Philippines through any application of the invention,
and in respect of all acts referred to in Sections 37 and 42.
(2) Clauses of the following tenor contained in license contracts shall be null and void:
(a) Those which impose upon the licensee the obligation to acquire from a specific
source capital goods, intermediate products, raw materials, and other
technologies, or of permanently employing personnel indicated by the licensor;
(b) Those pursuant to which the licensor reserves the right to fix the sale or resale
prices of the products manufactured on the basis of the license;
(c) Those that contain restrictions regarding the volume and structure of production;
(d) Those that prohibit the use of competitive technologies;
(e) Those that establish a full or partial purchase option in favor of the licensor;
(f) Those that obligate the licensee to transfer to the licensor the inventions or
improvements that may be obtained through the use of the licensed technology;
(g) Those that require payment of royalties to the owners of patents for patents
which are not used;
(h) Those that prohibit the licensee to export the licensed product; and
(i) Other clauses with equivalent effects.
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Article Two
Compulsory Licensing
Sec. 34.
Grounds for compulsory licensing. —
(1) Any person may apply to the Director for the grant of a license under a particular patent
at any time after the expiration of two years from the date of the grant of the patent,
under any of the following circumstances:
(a) If the patented invention is not being worked within the Philippines on a
commercial scale, although capable of being so worked, without satisfactory
reason;
(b) If the demand for the patented article in the Philippines is not being met to an
adequate extent and on reasonable terms;
(c) If, by reason of refusal of the patentee to grant a license or licenses on
reasonable terms, or by reason of the conditions attached by the patentee to
licensee or to the purchase, lease or use of the patented article or working of the
patented process or machine for production, the establishment of any new trade
or industry in the Philippines is prevented, or the trade or industry therein is
unduly restrained;
(d) If the working of the invention within the country is being prevented or hindered
by the importation of the patented article; or
(e) If the patented invention or article relates to food or medicine or manufactured
products or substances which can be used as food or medicine, or is necessary
for public health or public safety.
(2) In any of the above cases, a compulsory license shall be granted to the petitioner
provided that he has proved his capability to work the patented product or to make use
of the patented product in the manufacture of a useful product, or to employ the
patented process.
(3) The term "worked" or "working" as used in this section means the manufacture and sale
of the patented article, of the patented machine, or the application of the patented
process for production, in or by means of a definite and substantial establishment or
organization in the Philippines and on a scale which is reasonable and adequate under
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the circumstances. Importation shall not constitute "working".
Sec. 34-A.Products or processes vital to national defense, economy or health. — The
National Economic Development Authority may, by order, provide that for certain patented
products or processes, or for certain categories of such products or processes, which are
declared in such order to be of vital importance to the country's defense or economy or to
public health, compulsory license may be granted under the conditions provided in the next
preceding section even before the expiration of the period mentioned therein.
Sec. 34-B. Product, substances or processes subject of project approved by the Board of
Investments. —
(1) All products or substances and/or processes involved in any industrial project approved
by the Board of Investments under the Investment Incentives Act shall be deemed
products or substances and/or processes vital to the national defense or economy or to
public health. If the proponent of the project is neither a patentee nor a licensee of any
of the products, substances or processes involved therein, a compulsory license may,
upon application by the proponent or endorsement made by the Board of Investments,
be issued in his favor by the Director of Patents without need of complying with the
provisions of Section 34 and 34-A.
(2) In cases falling under the foregoing paragraph, the requirements of Sections 34-D and
34-E shall be complied with, but no hearing shall be necessary except to determine the
identity of the patent owner of the products, substances or processes subject of the
application or endorsement. If two or more patents exist for the same product,
substance or process, the license shall be granted under all subsisting patents involved.
Sec. 34-C. Compulsory license based upon interdependence of patents. — If an invention
protected by a patent within the country cannot be worked without infringing rights derived
from a patent granted on a prior application or benefiting from an earlier priority, a compulsory
license may, upon application and without necessity of complying with the requirements of
Section 34, be granted under the conditions specified in Section 35 to the registered owner of
the latter patent, to the extent necessary for the working of his invention and insofar as such
invention serves industrial purposes different from those of the invention forming the subject of
the earlier patent, or constitutes noteworthy technical progress in relation to it.
Sec. 34-D. Form and contents of petition. — The petition for compulsory licensing must be
in writing and verified by the petitioner and accompanied by the required filing fee. It shall give
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the name and address of the petitioner as well as those of the necessary party or parties
respondent; and shall state 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 ground or grounds upon which compulsory license is sought; the ultimate facts
constituting the petitioner's cause of action; and the relief prayed for.
Sec. 34-E. Notice of hearing. —
(1) Upon filing of a petition under Section 34, a notice shall be given in the same manner
and form as that provided in Section 31, Chapter VII hereof. The resident agent or
representative appointed in accordance with the rules of practice before the Patent
Office in patent cases shall be bound to accept service of notice of the filing of the
petition within the meaning of this section.
(2) In every case, the notice shall be published in a newspaper of general circulation in the
country three times for three consecutive weeks.
Sec. 35.
Grant of license. —
(1) If the Director finds that a case for the grant is a license under Section 34 hereof has
been made out, he shall, within one hundred eighty days from the date the petition was
filed, order the grant of an appropriate license. The order shall state the terms and
conditions of the license which he himself must fix in default of an agreement on the
matter manifested or submitted by the parties during the hearing.
(2) A compulsory license sought under Section 34-B shall be issued within one hundred
twenty days from the filing of the proponent's application or receipt of the Board of
Investment's endorsement.
Sec. 35-A. Rights of compulsory licensee. — The compulsory license shall give the
licensee the rights of patentees referred to in Section 37 and 42 hereof.
Sec. 35-B. Terms and conditions of compulsory license. —
(1) A compulsory license shall be non-exclusive, but this shall be without prejudice to the
licensee's right to oppose an application for a new such license.
(2) The terms and conditions of a compulsory license, fixed in accordance with Section 35,
may contain obligations and restrictions both for the licensee and for the registered
owner of the patent.
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(3) A compulsory license shall only be granted subject to the payment of adequate royalties
commensurate with the extent to which the invention is worked. However, royalty
payments shall not exceed five per cent (5%) of the net wholesale price (as defined in
Section 33-A) of the products manufactured under the license. If the product,
substance, or process subject of the compulsory license is involved in an industrial
project approved by the Board of Investments, the royalty payable to the patentee or
patentees shall not exceed three per cent (3%) of the net wholesale price (as defined in
Section 34-A) of the patented commodity and/or commodity manufactured under the
patented process; the same rate of royalty shall be paid whenever two or more patents
are involved, which royalty shall be distributed to the patentees in rates proportional to
the extent of commercial use by the licensee giving preferential values to the holder of
the oldest subsisting product patent.
Sec. 35-C. Transfer of compulsory license. — A compulsory license can only be transferred
with the undertaking of the licensee or with that portion of his undertaking which uses the
patented invention. Any such transfer shall, on pain of invalidity, require the authorization of the
Director of Patents and its registration in accordance with Section 33-A.
Sec. 35-D. Amendment and Cancellation. —
(1) Upon request of the registered owner of the patent or of the licensee, the terms of the
compulsory license may be amended by the Director of Patents when new facts justify
it, in particular when the registered owner of the patent grants contractual licenses on
terms more favorable to the contractual licensees.
(2) At the request of the registered owner of the patent, the compulsory license may be
cancelled if the licensee does not comply with the prescribed terms of the license.
(3) The provisions of Sections 33-A and 35 shall apply with respect to amendments and
cancellations of compulsory licenses.
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Article Three.
Common Provisions
Sec. 35-E. Licensees exemption from liability. —
(1) Any one who works a patented product, substance and/or process under a license
granted under this Chapter shall be free from any liability for infringement, provided that
in the case of a voluntary licensee 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.
(2) The existence of a conflict between two or more patents shall in no way affect the right
of the licensee under this Chapter to work the invention, and no injunction or other
court process shall be valid and enforced which interferes with this right. Any person
violating this provision shall be punished by a fine not less than Five Thousand Pesos
but not exceeding Thirty Thousand Pesos or by imprisonment of not less than one year
but not exceeding five years.
Sec. 36.
Grant of license. — If the Director finds that a case for the grant of a license
under section thirty-four hereof has been made out, he may order the grant of an appropriate
license and in default of agreement among the parties as to the terms and conditions of the
license he shall fix the terms and conditions of the license in the order.
The order of the Director granting a license under this Chapter, when final, shall operate as
a deed granting a license executed by the patentee and the other parties in interest.
Republic Act No. 165 (Patent Law)
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Chapter IX.
Rights of Patentees and Infringement of Patents
Sec. 37.
Rights of patentees. — A patentee shall have the exclusive right to make, use
and sell the patented machine, article or product, and to use the patented process for the
purpose of industry or commerce, throughout the territory of the Philippines for the term of the
patent; and such making, using, or selling by any person without the authorization of the
patentee constitutes infringement of the patent.
Sec. 38.
Experimental use of invention. — The making or using of a patented invention
when not conducted for profit and solely for the purpose of research or experiment, or for
instruction, shall not constitute infringement.
Sec. 39.
Temporary presence in the country. — No patent shall prevent the use of any
invention in any ship, vessel, aircraft, or land vehicle of any other country entering the territory
of the Philippines temporarily or accidentally, and such use shall not constitute infringement of
the patent, provided such invention is used exclusively for the needs of the ship, vessel, aircraft,
or land vehicle and not used for the manufacture of anything to be sold within or exported from
the Philippines.
Sec. 40.
Rights of third parties prior to application. — Any person who has purchased
or acquired of the inventor, his legal representatives, or assigns, or who, with their knowledge
and consent, constructs any newly invented device or other patentable article, prior to the filing
of the application therefor, shall have the right to use and sell the specific thing purchased,
acquired or made, without liability therefor.
Sec. 41.
Use of invention by the Government. — The Government of the Philippines
may use any patented invention at any time for governmental purposes, and the manufacture or
use of the invention by or for the Government for such purposes shall not constitute
infringement of the patent, but the patentee shall be entitled to receive a reasonable
compensation for the use of the invention.
Sec. 41-A.59 Any foreign corporation or juristic person to which a patent for an invention or
design has been granted or assigned under this Act may bring an action for infringement
hereunder, whether or not it has been duly licensed to do business in the Philippines under the
Corporation Law at the time it brings the complaint: Provided, That the country of which the
59
Introduced by R.A. No. 637.
Republic Act No. 165 (Patent Law)
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said foreign corporation or juristic person is a citizen, or in which it is domiciled, by treaty,
convention, or law, grants a similar privilege to corporate or juristic citizens of the Philippines.
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Chapter X.
Actions and Remedies for Infringement
Sec. 42.
Civil action for infringement. — 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 proper Court of First Instance, to recover from the infringer
damages sustained by reason of the infringement and to secure an injunction for the protection
of his rights.
If the damages are inadequate or cannot be readily ascertained with reasonable certainty,
the court may award as damages a sum amounting to reasonable royalty.
The court may, according to the circumstances of the case, award damages in a sum
above the amount found as actual damages sustained provided the award does not exceed
three times the amount of such actual damages.
Sec. 43.
Limitation of action for damages. — No damages can be recovered for acts
of infringement committed more than four years before the institution of the action for
infringement.
Sec. 44.
Damages not recoverable for want of notice or marking. — Damages cannot
be recovered for acts of infringement committed before the infringer had actual notice of the
patent, unless the patentee or those exploiting the invention on his behalf or under his
authorization have given notice to the public that the machine, device, articles or process is
patented either by placing thereon the words "Philippines Patent" with the number of the
patent, or when from the nature of the article this cannot reasonably be done, by placing such
notice on the package or container in which the device or article is supplied to the public, or is
descriptive or advertising matter used in connection with the patented machine, device, article
or process.
Sec. 45.
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 twenty-eight, Chapter VII hereof.
Sec. 46.
Patent found invalid to be cancelled. — If the court shall find the patent or
any claim thereof invalid, the Director shall, on certification of the final judgment to the Office,
issue an order cancelling the patent or the claims found invalid, and shall publish a notice
thereof in the Official Gazette.
Republic Act No. 165 (Patent Law)
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Sec. 47.
Assessors in infringement action. — Two or more assessors may be
appointed by the court. The assessors shall be so qualified by the necessary scientific and
technical knowledge required by the subject matter in suit. Either party may, as a preliminary
question, challenge the fitness of any assessor to sit in an action.
Each assessor shall receive a compensation in an amount to be fixed by the court and
advanced by the complaining party, and thereafter to be taxed as costs in favor of the
prevailing party.
Sec. 48.
Criminal action for repetition of infringement. — If infringement is repeated by
the infringer or by anyone in connivance with him after final judgment of the court against the
infringer, the parties liable shall, without prejudice to further civil action, be punished by a fine
not exceeding ten thousand pesos and imprisonment not exceeding five years, or both such
fine and imprisonment in the discretion of the court, in a criminal action instituted for the
purpose. The criminal action herein provided shall be prescribed in two years.
Sec. 49.
Appeal. — Appeal may be taken from the judgment of the court in the civil
and criminal actions herein provided in the same manner as in other actions.
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Chapter XI.
Assignment and Transmission of Rights
Sec. 50.
Transmission of rights. — Patents and the inventions covered thereby shall be
protected as and have the applicable rights of other property. Inventions and any right, title or
interest in and to patents and inventions covered thereby may be assigned, or transmitted by
inheritance or bequest.
Sec. 51.
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. 52.
Form of assignment. — The assignment must be in writing, acknowledged
before a notary public or other officer authorized to administer oaths or perform notarial acts
and certified under the hand and official seal of the notary or other officer.
Sec. 53.
Recording. — The Director shall record assignments, licenses and other
instruments relating to any right, title or interest in and to inventions, and patents or inventions
covered thereby, which are presented in due form to the Office for registration, in books and
records kept for the purpose. The original document together with a signed duplicate thereof
shall be filed, but if the original is not available, an authenticated copy thereof in duplicate may
be filed. Upon recording, the Director shall retain the duplicate, and return the original or the
authenticated copy to the party filing with a notation of the fact of record. Notice of the
recording shall be published in the Official Gazette.
Such instruments shall be void as against any subsequent purchaser or mortgagee for a
valuable consideration and without notice unless it is recorded in the Office within three months
from the date thereof, or prior to the subsequent purchase or mortgage.
Sec. 54.
Rights of joint owners. — If two or more persons jointly own a patent and the
invention covered thereby either by the issuing of the patent to them jointly 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, or sell the
invention for his own profit, subject to any contract or agreement, but neither of the 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 proportionately dividing the proceeds with
the other owner or owners.
Republic Act No. 165 (Patent Law)
137
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Chapter XII.
Designs and Utility Models
Sec. 55.
Design patents and patents for utility models.60 — (a) Any new, original, and
ornamental design for an article of manufacture and (b) any new model of implements or tools
or of any industrial product, or of part of the same, which does not possess the quality of
invention, but which is of practical utility by reason of its form, configuration, construction or
composition, may be protected by the author thereof, the former by a patent for a design and
the latter by a patent for a utility model, in the same manner and subject to the same provisions
and requirements as relate to patents for inventions in so far as they are applicable, except as
otherwise herein provided.
The standard of novelty established by section nine hereof for inventions shall apply to
ornamental designs.
A utility model shall not be considered 'new' if, before the application for a patent, it has
been publicly known or publicly used in this country, or has been described in a printed
publication or publications circulated within the country, or if it is substantially similar to any
other utility model so known, used or described within the country.
Applications for design patents and patents for utility models shall be subject to
interference proceedings as authorized in section ten of this Act, as amended by section one of
Republic Act Numbered Six hundred and thirty-seven.
Patents for designs and for utility models shall be subject to compulsory license as
authorized in section thirty-four of this Act. They shall not be subject to the payment of annual
fees provided for invention patents in Chapter V hereof.
Sec. 56.
Six months publication. — The period of one year specified in section nine,
Chapter II, and section fifteen, Chapter III, hereof, for inventions shall be six months in the case
of designs.
Sec. 57.
Notice of grant of patent shall be published.61 — Notice of the grant of a
design patent or of a patent for a utility model shall be published in the Official Gazette.
Sec. 58.
Term and extension thereof.62 — The term of the design patent and of the
60
Amended by R.A. No. 637, and further amended by R.A. No. 864.
Amended by R.A. No. 637, and further amended by R.A. No. 864.
62
Amended by R.A. No. 637, and further amended by R.A. No. 864.
61
Republic Act No. 165 (Patent Law)
138
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patent for a utility model shall be five years from the date of the grant thereof.
Before the expiration of the five-year term, upon payment of the required fee, or within a
further time thereafter not to exceed six months upon payment of the surcharge, the owner of
the design patent or of a patent for a utility model may apply for an extension for an additional
five years. The application for extension must be accompanied by an affidavit showing that the
design or the model is in commercial or industrial use in the Philippines or satisfactorily
explaining non-use. In a similar manner an extension for a third five-year period may be
obtained.
Sec. 59.
Marking.63 — The marking required by section forty-four, Chapter X, hereof,
shall be "Philippine Design Patent", and "Philippine Utility Model Patent" or appropriate
abbreviations, and the number of the patent.
Sec. 60.
Infringement.64 — Infringement of a design patent or of a patent for utility
model shall consist in unauthorized copying of the patented design or utility model for the
purpose of trade or industry in the article or product and in the making, using or selling of the
article or product copying the patented design or utility model. Identity or substantial identity
with the patented design or utility model shall constitute evidence of copying.
63
64
Amended by R.A. No. 637, and further amended by R.A. No. 864.
Amended by R.A. No. 637, and further amended by R.A. No. 864.
Republic Act No. 165 (Patent Law)
139
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Chapter XIII.
Review of Orders or Decisions of Director
Sec. 61.
Appeal from action of Director.65 — The application for a patent for an
invention, for a design, or for a utility model, any party to a proceeding in interference, or to
cancel a patent or to obtain a compulsory license, and any party to any other proceeding in the
Office may appeal to the Supreme Court from any final order or decision of the Director.
Sec. 62.
Stay.66 — A petition for review of any order or decision of the Director
rejecting in whole or in part an application for a patent shall not stay any order or decision of the
Director in respect of any other applications then pending for a patent; but the Director shall
proceed to act on such other applications without regard to such petition unless the Supreme
Court shall otherwise direct.
Sec. 63.
How appeal is perfected. — An appeal from an order or decision of the
Director shall be perfected by filing with the Director a notice of appeal and the payment of the
required appeal fee and filing with the Supreme Court a petition for review, within thirty days
from notice of the order or decision appealed from.
Sec. 64.
Contents and notice of petition. — The petition shall contain a summary
statement of the issues involved and the reasons relied upon for allowance of a review. Copies
of the petition shall be served upon the Director and all other parties in interest.
Sec. 65.
Docketing fee and deposits for costs. — Upon filing the petition for review,
the petitioner shall pay to the clerk of the Supreme Court the docketing fee and shall deposit
the sum of one hundred pesos for costs.
Sec. 66.
Elevation of copy of record. — Upon the filing of the petition, notice thereof
shall be served by the clerk of the Supreme Court upon the Director, who, within thirty days
thereafter, shall certify and forward to the Supreme Court a copy of the record as the same
appears in his Office.
Sec. 67.
Answer of respondent. — Upon receipt of the record, the clerk of the
Supreme Court shall serve notice upon the Director and all other parties in interest, requiring
them to answer within ten days from service. Copies of such answer shall be served upon the
petitioner.
65
66
Amended by R.A. No. 864.
Amended by R.A. No. 864.
Republic Act No. 165 (Patent Law)
140
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Sec. 68.
Power of court. — The Supreme Court may, on petition filed within five days
after the filing of the answer, allow the parties to adduce additional evidence material to the
matter at issue, which shall constitute a supplementary record to be considered in connection
with the record on appeal.
Sec. 69.
Representation by Solicitor General. — In all appeals from an order or
decision of the Director the Solicitor General shall appear on behalf of the Director.
Sec. 70.
Briefs on appeal. — Upon receipt of the answer to the petition or upon
conclusion of the presentation of additional evidence, the clerk of the Supreme Court shall
notify the parties, and the petitioner, within thirty days from such notice, shall file twenty copies
of his brief upon the adverse parties and, within thirty days from such service, the adverse
parties shall file twenty copies of their brief together with proof of service of five copies thereof
upon the petitioner.
Sec. 71.
Inclusion in calendar. — Upon the filing of the respondent's brief, or after the
expiration of the time for its filing, the case shall be included in the regular calendar, unless the
court advances the hearing for special cause shown.
Sec. 72.
Oral argument, its duration. — Each party is entitled to one hour for oral
argument, extendible in the discretion of the court.
Sec. 73.
Rules of Court applicable. — In all other matters not herein provided, the
applicable provisions of the Rules of Court shall govern.
Republic Act No. 165 (Patent Law)
141
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Chapter XIV.
Penalty for False Marking
Sec. 74.
Penalty for false marking.67 — Any person who falsely represents or indicates
that any device, article or product made or sold by him is patented as an invention design, or
utility model by making or having on the device, article or product, or on their containers or
packages, or using in advertising or displays used in connection with them, or with any
process, words expressing or implying that the device, article, product or process is patented
shall be subject to a fine of not less than one hundred pesos nor more than one thousand
pesos, or imprisonment for not less than one month nor more than one year, or both, in the
discretion of the court. Actions hereunder shall prescribe in two years.
Sec. 75.
Fees.68 — The following fees shall be paid for filing an application for patent
which shall include the cost of publication in the Official Gazette, Four Hundred Pesos, if it is an
invention patent and Two Hundred pesos, if it is a utility model or a design patent, upon filing
each application and, if it is on invention patent, Twenty-Five Pesos for each claim in excess of
five claims presented on filing or at any other time.
For issuing each original invention patent, One Hundred Pesos.
For annual fees due at the beginning of the fifth and each succeeding year, Two Hundred
Pesos each; for surcharge for delayed payment of annual fee, Fifty Pesos; for reinstating a
lapse patent, Two Hundred Pesos; for filing a petition for cancellation, except when filed by the
Solicitor General, One Hundred Pesos; for filing a petition for compulsory license, Two Hundred
Pesos; for copies of records of the Office, Two Pesos per photostat or xerox copy sheet and
Two Pesos per hundred words of typewritten copy;
For each certification of copy of any record, Twenty Pesos;
For recording assignment, and other documents relating to title and license, Twenty Pesos;
For notice of appeal to the Court of Appeals from the order or decision of the Director, or
for Notice of Appeal to the Director from an order or decision of the Chief Patent Examiner, Fifty
Pesos;
For renewing a design or utility model patent, One Hundred Fifty Pesos;
67
68
Amended by R.A. No. 864.
Amended by R.A. No. 864, further amended by P.D. No. 1263.
Republic Act No. 165 (Patent Law)
142
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For surcharge of delayed renewal of a design or utility model patent, Forty Pesos; and
For services not otherwise specified, the Director shall provide, by regulation, the fees
therefor.
The Director may by rule fix higher fees for nationals from the developed countries.
The Philippine Inventors Commission shall be exempt from paying the above fees but only
with respect to application filed by it in behalf of indigent inventors.
Republic Act No. 165 (Patent Law)
143
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Chapter XVI.
Miscellaneous
Sec. 76.
Certain priority rights for filing application extended. — The rights of priority
provided by section nine, Chapter II; section fifteen, Chapter III; and section fifty-six, Chapter XII
hereof for the filing of applications for patent for inventions and designs, which rights had not
expired on the eighth day of December, nineteen hundred and forty-one, or which rights have
arisen since the eighth day of December, nineteen hundred and forty-one, are extended until
the first day of July, nineteen hundred and forty-eight, in favor of the citizens of the Philippines
or citizens or subjects of countries which have extended, or which now extend, or which within
said period ending the first day of July, nineteen hundred and forty-eight, shall extend
substantially reciprocal privileges to citizens of the Philippines.
Sec. 77.
Disqualification of officers and employees from acquiring patents and design
registrations. — All officers and employees of the Office shall not, during their employment or
for one year thereafter, apply for a grant of patent or for the registration of a design, or acquire,
directly or indirectly, except by hereditary succession, any patent of invention or design
registration, or any right, title or interest therein.
Sec. 78.
Rules and regulations.69 — The Director, subject to the approval of the
Department Head, shall promulgate the necessary rules and regulations, not inconsistent with
law, for the conduct of all business in the Patent Office.
The Director may prescribe rules and regulations governing the recognition of attorneys,
agents, or other persons representing applicants or other parties before his office in patent and
trademark cases, and may require such persons, attorneys or agents, before being recognized
as representatives of applicants or other persons, that they shall show that they are of good
moral character and in good repute, are possessed of the necessary qualifications to enable
them to render to applicants or other persons valuable service, and are likewise competent to
advise and assist applicants or other persons in the presentation or prosecution of their
applications or other business before the Office. And the Director of Patents may, after notice
and opportunity for a hearing, suspend or exclude, either generally or in any particular case,
from further practice before his office any person, attorney, or agent shown to be incompetent
or disreputable, or guilty of gross misconduct, or gross discourtesy or disrespect towards any
Patent Office official or examiner while the latter is in the discharge of his official duty, or who
refuses to comply with the rules and regulations of the Patent Office, or who shall, with intent to
defraud in any manner, deceive, mislead, or threaten any applicant or prospective applicant or
69
Amended by R.A. No. 637.
Republic Act No. 165 (Patent Law)
144
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other person having immediate or prospective business before the office, by word, circular,
letter, or by advertising. The reasons for any such suspension or exclusion shall be duly
recorded. And the action of the director may be reviewed upon the petition of the person so
refused recognition or so suspended or excluded by the Supreme Court under such conditions
and upon such proceedings as the said Court may by its rules determine.
It shall be unlawful for any person who has not been duly recognized to practice before the
Patent Office in accordance with the provisions of this section and the rules of practice before
the Patent Office to hold himself out or knowingly permit himself to be held out as a patent or
trademark solicitor, patent or trademark agent, or patent or trademark attorney, or otherwise in
any manner hold himself out, either directly or indirectly, as authorized to represent applicants
for patent or trademark in their business before the patent office, and it shall be unlawful for
any person who has, under the authority of this section, been disbarred or excluded from
practice before the Patent Office, and has not been reinstated, to hold himself out in any
manner whatever as entitled to represent or assist persons in the transaction of business
before the Patent Office; and any offense against the foregoing provision shall be a
misdemeanor and be punished by a fine of not less than one hundred pesos and not exceeding
one thousand pesos.
Sec. 79.
Records to be public. — The records of the Office shall be open to public
inspection, and any person may obtain an authenticated copy thereof on payment of the
prescribed fees.
Sec. 80.
Repealing clause. — Acts Numbered Twenty-two hundred and thirty-five,
Twenty-seven hundred and ninety-three, as amended, and all other acts, or parts of acts,
inconsistent herewith, are hereby repealed.
Sec. 81.
Reservation of prior rights. — Any rights acquired under laws existing prior to
the taking effect of this Act are hereby respected and preserved.
Sec. 82.
Appropriation. — The sum of seventy-five thousand pesos, or so much
thereof as may be necessary, is hereby appropriated out of any funds in the National Treasury
not otherwise appropriated, for the initial expenses of the Office, including organization
expenses, salaries, supplies, equipment, and other sundry expenses until June thirtieth,
nineteen hundred and forty-eight.
Sec. 82-A.70
The Director shall be authorized to use and spend a portion not to exceed
fifty per cent of the Office's total income for the improvement of facilities and services as well
70
Amended by P.D. No. 1263.
Republic Act No. 165 (Patent Law)
145
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as for equipment outlay, for implementation of this Act including expenses for participation in
the World Intellectual Property Organization and similar organizations concerned with
international cooperation in the expeditious processing of patent applications.
Sec. 83.
Effective date. — This Act shall take effect on its approval.
Approved: June 20, 1947
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PREVIOUS LAW
REPUBLIC ACT NO. 166
(TRADEMARK LAW)71
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
Chapter I.
Powers, Duties and Functions of Patent Office
Sec. 1.
Transfer of Powers from Bureau of Commerce to Patent Office. — The
powers, duties and functions vested in, or performed and exercised by, the Bureau of
Commerce in connection with the registration of trade-marks, trade-names and other marks are
hereby transferred to the Patent Office. The administration of this Act shall devolve upon the
Patent Office.
All books, records, documents and files of the Bureau of Commerce relating to
trade-marks, trade-names and other marks, and such personnel of the said Bureau as is now
discharging the functions or performing the duties of the Bureau of Commerce in connection
with the registration of trade-marks, trade-names and other marks together with the
71
Enacted into law on 20 June 1947; Repealed impliedly by Sec. 240 of R.A. No. 8293 as amended.
Amended by:
1. Republic Act (R.A.) No. 865 entitled "An Act to Amend Sections Two, Thirty-three and Thirty-nine
of Republic Act Numbered One Hundred and Sixty-six" (approved June 16, 1953);
2. R.A. No. 681 entitled "An Act to Amend Section Thirty-nine of Republic Act Numbered One
Hundred and Sixty-six" (approved May 9, 1952);
3. R.A. No. 638 entitled "An Act to Amend Sections Four and Thirty-seven of, and to Add New
Sections Two-A, Nine-A, Ten-A, Nineteen-A, and Twenty-One-A, and New Chapters II-A-The
Principal Register, and IV-A-The Supplemental Register to Republic Act Numbered One Hundred
and Sixty-six, 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"" (approved June 11, 1951)
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corresponding appropriation, are transferred to the Patent Office, and the Budget
Commissioner shall make immediate provision for such transfer.
Chapter II.
Registration of Marks and Trade-Names
Sec. 2.
What are registrable.72 — Trade-marks, trade names, and service marks
owned by persons, corporations, partnerships or associations domiciled in the Philippines and
by persons, corporations, partnerships or associations domiciled in any foreign country may be
registered in accordance with the provisions of this Act: Provided, That said trade-marks, trade
names, or service marks are actually in use in commerce and services not less than two months
in the Philippines before the time the applications for registration are filed: And provided,
further, That the country of which the applicant for registration is a citizen grants by law
substantially similar privileges to citizens of the Philippines, and such fact is officially certified,
with a certified true copy of the foreign law translated into the English language, by the
government of the foreign country to the Government of the Republic of the Philippines.
Sec. 2-A. Ownership of trade-marks, trade-names and service-marks; how acquired.73 —
Anyone who lawfully produces or deals in merchandise of any kind or who engages in any
lawful business, or who renders any lawful service in commerce, by actual use thereof in
manufacture or trade, in business, and in the service rendered, may appropriate to his exclusive
use a trade-mark, a trade-name, or a service-mark not so appropriated by another, to
distinguish his merchandise, business or service from the merchandise, business or services of
others. The ownership or possession of a trade-mark, trade-name, service-mark, heretofore or
hereafter appropriated, as in this section provided, shall be recognized and protected in the
same manner and to the same extent as are other property rights known to the law.
Sec. 3.
Application by non-residents. — Any person filing an application for the
registration of a mark or trade-name, who is not a resident of the Philippines, must appoint an
agent or representative in the Philippines upon whom notice or process relating to the
application or registration of the mark or trade-name may be served. In the event of death,
absence or inability of the agent or representative, a new agent or representative must be
appointed, and notice thereof must be filed in the Patent Office. Upon failure to maintain an
agent or representative of record in the Patent Office, service on the Director shall be deemed
72
73
Amended by R.A. No. 865.
Introduced by R.A. No. 638.
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sufficient.
Chapter II-A.
The Principal Register74
Sec. 4.
Registration of trade-marks, trade-names and service-marks on the principal
75
register. — There is hereby established a register of trade-mark, trade-names and
service-marks which shall be known as the principal register. The owner of a trade-mark, a
trade-name or service-mark used to distinguish his goods, business or services from the
goods, business or services of others shall have the right to register the same on the principal
register, unless it:
(a) Consists of or comprises immoral, deceptive or scandalous matter; or matter which
may disparage or falsely suggest a connection with persons, living or dead, institutions,
beliefs, or national symbols, or bring them into contempt or disrepute;
(b) Consists of or comprises the flag or coat of arms or other insignia of the Philippines or
any of its political subdivisions, or of any foreign nation, or any simulation thereof;
(c) Consists of or comprises a name, portrait, or signature identifying a particular living
individual except by his written consent, or the name, signature, or portrait of a
deceased President of the Philippines, during the life of his widow, if any, except by the
written consent of the widow;
(d) Consists of or comprises a mark or trade-name which so resembles a mark or
trade-name registered in the Philippines or a mark or trade-name previously used in the
Philippines by another and not abandoned, as to be likely, when applied to or used in
connection with the goods, business or services of the applicant, to cause confusion or
mistake or to deceive purchasers; or
(e) Consists of a mark or trade-name which, when applied to or used in connection with
the goods, business or services of the applicant is merely descriptive or deceptively
misdescriptive of them, or when applied to or used in connection with the goods,
business or services of the applicant is primarily geographically descriptive or
deceptively misdescriptive of them, or is primarily merely a surname;
(f) Except as expressly excluded in paragraphs (a), (b), (c) and (d) of this section, nothing
herein shall prevent the registration of a mark or trade-name used by the applicant
74
75
Chapter introduced by R.A. No. 638.
Amended by R.A. No. 638.
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which has become distinctive of the applicant's goods, business or services. The
Director may accept as prima facie evidence that the mark or trade-name has become
distinctive, as applied to or used in connection with the applicant's goods, business or
services, proof of substantially exclusive and continuous use thereof as a mark or
trade-name by the applicant in connection with the sale of goods, business or services
for the five years next preceding the date of the filing of the application for its
registration.
Sec. 5.
Requirements of the application. — The application for the registration of a
mark or trade-name shall be in English or Spanish, or in the national language, with its
corresponding English translation, and signed by the applicant, and shall include:
(a) Sworn statement of the applicant's domicile and citizenship, the date of the applicant's
first use of the mark or trade-name, the date of the applicant's first use of the mark or
trade-name in commerce or business, the goods, business or services in connection
with which the mark or trade-name is used and the mode or manner in which the mark
is used in connection with such goods, business or services, and that the person
making the application believes himself, or the firm, corporation or association on
whose behalf he makes the verification, to be the owner of the mark or trade-name
sought to be registered, that the mark or trade-name is in use in commerce or business,
and that to the best of his knowledge no person, firm, corporation or association has
the right to use such mark or trade-name in commerce or business either in the
identical form thereof or in such near resemblance thereto as might be calculated to
deceive;
(b) Such number of specimens or facsimiles of the mark or trade-name as actually used as
may be required by the Director;
(c) Power of attorney, if the filing is through attorney;
(d) The appointment of an agent or representative, if the applicant is not domiciled in the
Philippines; and
(e) The required fee.
Sec. 6.
Classification of goods and services. — The Director shall establish a
classification of goods and services, for the convenience of the Patent Office administration,
but not to limit or extent the applicant's rights. The applicant may register his mark or
trade-name in one application for any of all the goods or services included in one class, upon or
in connection with which he is actually using the mark or trade-name. The Director may issue a
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single certificate for one mark or trade-name registered in a plurality of classes upon payment
of a fee equaling the sum of the fees for each registration in each class.
Sec. 7.
Examination and publication. — Upon the filing of an application for
registration and the payment of the required fee, the Director shall cause an examination of the
application to be made, and, if on such examination it shall appear that the applicant is entitled
to registration, the Director, upon payment of the required fee, shall cause the mark or
trade-name to be published in the Official Gazette.
If the applicant is found not entitled to registration, the Director shall advise the applicant
thereof and of the reasons therefor. The applicant shall have a period of three months in which
to reply or amend his application, which shall then be re-examined. This procedure may be
repeated until the Director finally refuses registration or the applicant fails within the required
period to reply or amend or appeal, whereupon the application shall be deemed to have been
abandoned, unless it can be shown to the satisfaction of the Director that the delay in
responding was unavoidable, in which event such time may be extended in the discretion of
the Director. An abandoned application may be revived as a pending application within three
months from the date of abandonment, upon good cause shown and the payment of the
required fee.
Sec. 8.
Opposition. — Any person who believes that he would be damaged by the
registration of a mark or trade-name may, upon payment of the required fee and within thirty
days after the publication under the first paragraph of section seven hereof, file with the Director
an opposition to the application. Such opposition shall be in writing and verified by the
oppositor, or by any person on his behalf who knows the facts, and shall specify the grounds
on which it is based and include a statement of the facts relied upon. Copies of certificates of
registration of marks or trade-names registered in other countries or other supporting
documents mentioned in the opposition shall be filed therewith, together with the translation
thereof into English, if not in the English language. For good cause shown and upon payment of
the required surcharge, the time for filing an opposition may be extended for an additional thirty
days by the Director, who shall notify the applicant of such extension.
Sec. 9.
Notice and hearing. — Upon the filing of an opposition, the Director shall
forthwith 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 or trade-name covered by the application, as appear of record in the Patent Office.
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Sec 9-A. Equitable principles to govern proceedings.76 — In opposition proceedings and in
all other inter partes proceedings in the patent office under this act, equitable principles of
laches, estoppel, and acquiescence, where applicable, may be considered and applied.
Sec. 10.
Issuance and publication of certificates. — When the period for filing the
opposition has expired, or when the Director shall have denied the opposition, the Director,
upon payment of the required fee, shall issue the certificate of registration. Upon issuance of a
certificate of registration, notice thereof making reference to the publication of the application
shall be published in the Official Gazette.
Sec. 10-A. Interference.77 — An interference is a proceeding instituted for the purpose of
determining the question of priority of adoption and use of a trade-mark, trade-name, or
service-mark between two or more parties claiming ownership of the same or substantially
similar trade-mark, trade-name, or service-mark.
Whenever application is made for the registration of a trade-mark, trade-name, or
service-mark which so resembles a mark or trade-name previously registered by another, or for
the registration of which another had previously made application, as to be likely when applied
to the goods or when used in connection with the business or services of the applicant to
cause confusion or mistake or to deceive purchasers, the director may declare that an
interference exists.
Upon the declaration of interference the director shall give notice to all parties and shall set
the case for hearing to determine and decide the respective rights of registration.
In an interference proceeding the director may refuse to register any or all of several
interfering marks or trade-names, or may register the mark or marks or trade-name or
trade-names for the person or persons entitled thereto, as the rights of the parties may be
established in the proceedings.
Sec. 11.
Issuance and contents of the certificate. — Certificates of registration shall be
issued in the name of the Republic of the Philippines under the seal of the Patent Office, and
shall be signed by the Director, and a record thereof together with a copy of the specimen or
facsimile and the statement of the applicant, shall be kept in books for that purpose. The
certificate shall reproduce the specimen or facsimile of the mark or trade-name, contain the
statement of the applicant and state that the mark or trade-name is registered under this Act,
the date of the first use, the date of the first use in commerce or business, the particular goods
76
77
Introduced by R.A. No. 638.
Introduced by R.A. No. 638.
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or services for which it is registered, the number and date of the registration, the term thereof,
the date on which the application for registration was received in the Patent Office, a statement
of the requirement that in order to maintain the registration, periodical affidavits of use within
the specified times hereinafter in section twelve provided, shall be filed, and such other data as
the rules and regulations may from time to time prescribe.
Sec. 12.
Duration. — Each certificate of registration shall remain in force for twenty
years: Provided, That registrations under the provisions of this Act shall be cancelled by the
Director, unless within one year following the fifth, tenth and fifteenth anniversaries of the date
of issue of the certificate of registration, the registrant shall file in the Patent Office an affidavit
showing that the mark or trade-name is still in use or showing that its non-use is due to special
circumstances which excuse such non-use and is not due to any intention to abandon the
same, and pay the required fee.
The Director shall notify the registrant who files the above-prescribed affidavits of his
acceptance or refusal thereof and, if a refusal, the reasons therefor.
Sec. 13.
Disclaimers before issue. — The Director shall require unregistrable matter to
be disclaimed, 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 shall such disclaimer prejudice or
affect the applicant's or owner's rights of registration on another application of later date if the
disclaimed matter has become distinctive of the applicant's or owner's goods, business or
services.
Sec. 14.
Voluntary surrender, cancellation, amendment and disclaimer after
registration. — At any time, upon application of the registrant and payment of the required fee,
the Director may permit any registration to be surrendered, cancelled, or for good cause shown
to be amended, he may permit any registered mark or trade-name to be disclaimed in whole or
in part: Provided, That the registration when so amended shall still contain registrable matter
and the mark or trade-name as amended shall still be registrable as a whole, and that such
amendment or disclaimer does not involve such changes in the registration as to alter materially
the character of the mark or trade-name. The Director shall make appropriate entry upon the
records of the Patent Office and upon the certificate of registration or, if said certificate is lost or
destroyed, upon a certified copy thereof. The Director in his discretion and upon payment of the
required fee, may issue a substitute certificate limited to the term of the original certificate and
incorporating such amendment or correction.
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Chapter III.
Renewals of Certificate of Registration
Sec. 15.
Renewal. — Each certificate of registration may be renewed for periods of
twenty years from the end of the expiring period upon the filing of an application therefor and
the payment of the required fee. Such application for renewal shall include a sworn statement of
the applicant's domicile and citizenship, the specific goods, business or services in connection
with which the mark or trade-name is still in use, the period of any nonuse in reference to the
specific goods, business or services covered by original or renewed certificates of registration
and any rights granted third parties for the use of the mark or trade-name, any additional
goods, business or services to which the mark or trade-name has been extended during the
period of the original or renewed certificates of registration, and any material variation in the
manner of display of the mark or trade-name from that shown in the original or renewed
certificate of registration. The applicant shall file the application within six months before the
expiration of the period for which the certificate of registration was issued or renewed, or it may
be made within three months after such expiration for good cause shown and upon payment of
the required surcharge.
In the event the applicant for renewal be not domiciled in the Philippines, he shall be
subject to and comply with the provisions of paragraph (d), section five, Chapter II hereof.
Sec. 16.
Effect of failure to renew registration. — Mere failure to renew any registration
shall not affect the right of the registrant to apply for and obtain a new registration under the
provisions of this Act, nor shall such failure entitle any other person to register a mark or
trade-name unless he is entitled thereto in accordance with the provisions of this Act.
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Chapter IV.
Cancellation of Registration
Sec. 17.
Grounds for cancellation. — Any person, who believes that he is or will be
damaged by the registration of a mark or trade-name, may, upon the payment of the prescribed
fee, apply to cancel said registration upon any of the following grounds:
(a) That the registered mark or trade-name becomes the common descriptive name of an
article or substance on which the patent has expired;
(b) That it has been abandoned;
(c) That the registration was obtained fraudulently or contrary to the provisions of section
four, Chapter II hereof;
(d) That the registered mark or trade-name has been assigned, and is being used by, or
with the permission of, the assignee so as to misrepresent the source of the goods,
business or services in connection with which the mark or trade-name is used; or
(e) That cancellation is authorized by other provisions of this Act.
Sec. 18.
Requirements of petition; notice and hearing. — Insofar as applicable, the
petition herein shall be in the same form as that provided in section eight, Chapter II hereof, and
notice and hearing shall be as provided in section nine, Chapter II hereof.
Sec. 19.
Cancellation of registration. — If the Director finds that a case for cancellation
has been made out he shall order the cancellation of the registration. The order shall not
become effective until the period for appeal has elapsed, or if appeal is taken, until the
judgment on appeal becomes final. 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 Official Gazette.
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Chapter IV-A.78
The Supplemental Register
Sec. 19-A.79 In addition to the principal register, the director shall keep another register to
be called the supplemental register. All marks and trade-names capable of distinguishing
applicant's goods or services and not registrable on the principal register herein provided,
except those declared to be unregistrable under paragraphs (a), (b), (c), and (d) of section four
of this Act, which have been in lawful use in commerce by the proprietor thereof, upon or in
connection with any goods, business or services for the year preceding the filing of the
application, may be registered on the supplemental register upon payment of a filing fee of
eighty pesos for each application for one class, plus twenty pesos for each additional class,
and compliance with the provisions of section five of this Act so far as they are applicable.
Upon the filing of an application for registration on the supplemental register and payment
of the fee herein provided the director shall cause an examination of the application to be made
and, if on such examination it shall appear that the applicant is entitled to registration, the
registration shall be granted. If the applicant is found not entitled to registration the provisions
of the last paragraph of section seven of this act shall apply.
For the purposes of registration on the supplemental register, a mark or trade-name may
consist of any trade-mark, symbol, label, package, configuration of goods, name, word, slogan,
phrase, surname, geographical name, numeral, or device or any combination of any of the
foregoing, but such mark or trade-name must be capable of distinguishing the applicant's
goods, business or services.
Upon a proper showing by the applicant that he has begun the lawful use of his mark or
trade-name in foreign commerce and that he requires domestic registration as a basis for
foreign protection of his mark or trade-name, the director may waive the requirement of a full
year's use and may grant registration forthwith.
Marks and trade-names for the supplemental register shall not be published for or be
subject to opposition, but shall be published on registration in the Official Gazette. Whenever
any person believes that he is or will be damaged by the registration of a mark or trade-name
on this register, he may at any time apply to the director to cancel such registration. Upon
receiving the application, the director shall give notice thereof to the registrant. If it is found
after a hearing that the registrant was not entitled to register the mark at the time of his
78
79
Chapter introduced by R.A. No. 638.
Introduced by R.A. No. 638.
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application for registration thereof, or that the mark was not used by the registrant or has been
abandoned, the registration shall be cancelled by the director.
The certificates or registration for marks and trade-names registered on the supplemental
register shall be conspicuously different from certificates issued for marks and trade-names
registered on the principal register.
Except as hereinabove provided, and except sections ten-A, seventeen, eighteen, nineteen,
twenty and thirty-five, the provisions of this act shall govern, so far as applicable, applications
for registration and registrations on the supplemental register.
Chapter V.
Rights and Remedies
Sec. 20.
Certificate of registration prima facie evidence of validity. — A certificate of
registration of a mark or trade-name shall be prima facie evidence of the validity of the
registration, the registrant's ownership of the mark or trade-name, and of the registrant's
exclusive right to use the same in connection with the goods, business or services specified in
the certificate, subject to any conditions and limitations stated therein.
Sec. 21.
Requirements of notice of registration of trade-mark. — The registrant of a
trade-mark, heretofore registered or registered under the provisions of this Act, shall give notice
that his mark is registered by displaying with the same as used the words "Registered in the
Philippines Patent Office" or "Reg. Phil. Pat. Off."; and in any suit for infringement under this Act
by a registrant failing so to mark the goods bearing the registered trade-mark, no damages shall
be recovered under the provisions of this Act unless the defendant has actual notice of the
registration.
Sec. 21-A.80 Any foreign corporation or juristic person to which a mark or trade-name has
been registered or assigned under this act may bring an action hereinunder for infringement, for
unfair competition, or false designation of origin and false description, whether or not it has
been licensed to do business in the Philippines under Act Numbered Fourteen hundred and
fifty-nine, as amended, otherwise known as the Corporation Law, at the time it brings
complaint: Provided, That the country of which the said foreign corporation or juristic person is
a citizen, or in which it is domiciled, by treaty, convention or law, grants a similar privilege to
corporate or juristic persons of the Philippines.
80
Introduced by R.A. No. 638.
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Sec. 22.
Infringement, what constitutes. — Any person who shall use, without the
consent of the registrant, any reproduction, counterfeit, copy or colorable imitation of any
registered mark or trade-name in connection with the sale, offering for sale, or advertising of
any goods, business or services on or in connection with which such use is likely to cause
confusion or mistake or to deceive purchasers or others as to the source or origin of such
goods or services, or identity of such business; or reproduce, counterfeit, copy or colorably
imitate any such mark or trade-name and apply such reproduction, counterfeit, copy, or
colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements
intended to be used upon or in connection with such goods, business or services, shall be
liable to a civil action by the registrant for any or all of the remedies herein provided.
Sec. 23.
Actions, and damages and injunction for infringement. — Any person entitled
to the exclusive use of a registered mark or trade-name may recover damages in a civil action
from any person who infringes his rights, and the measure of the damages suffered shall be
either the reasonable profit which the complaining party would have made, had the defendant
not infringed his said 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, then the court may award as damages a reasonable percentage based
upon the amount of gross sales of the defendant of 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. In cases where actual intent to mislead the public or to defraud the complaining party
shall be shown, in the discretion of the court, the damages may be doubled.
The complaining party, upon proper showing, may also be granted injunction.
Sec. 24.
Power of court to order infringing material destroyed. — In any action arising
under this Act, in which a violation of any right of the registrant shall have been established, the
court may order that all labels, sign, 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, and all plates, molds,
matrices and other means of making the same, shall be delivered up and destroyed.
Sec. 25.
Authority to determine right to registration. — In any action involving a
registered mark or trade-name the court may determine the right to registration, order the
cancellation of registrations, in whole or in part, restore cancelled registration, and otherwise
rectify the register with respect to the registration of any party to the action. Judgments and
orders shall be certified by the court to the Director, who shall make appropriate entry upon the
records of the Patent Office, and shall be controlled thereby.
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Sec. 26.
Action for false or fraudulent declaration. — Any person who shall procure
registration in the Patent Office of a mark or trade-name by a false or fraudulent declaration or
representation, 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. 27.
Jurisdiction of Court of First Instance. — All actions under this Chapter and
Chapters VI and VII hereof shall be brought before the proper Court of First Instance.
Sec. 28.
Appeal. — Appeal may be taken from any judgment or final order of the
Court of First Instance in the same manner as in other actions.
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Chapter VI.
Unfair Competition
Sec. 29.
Unfair competition, rights and remedies. — 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 mark or trade-name 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. Such a person shall have the remedies provided in section
twenty-three, Chapter V hereof.
Any person who shall employ deception or any other means contrary to good faith by
which he shall pass off the goods manufactured by him or in which he deals, or his business,
or services for those of the one having established such goodwill, or who shall commit any acts
calculated to produce said result, shall be guilty of unfair competition, and shall be subject to
an action therefor.
In particular, and without in any way limiting the scope of unfair competition, the following
shall be deemed guilty of unfair competition:
(a) Any person, who in selling his goods shall give 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;
(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.
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Chapter VII.
False Designation of Origin and False Description
Sec. 30.
False designation of origin and false description forbidden. — Any person
who shall affix, apply, annex or use in connection with any goods or services, or any container
or containers for goods, a false designation of origin, or any false description or representation,
including words or other symbols tending falsely to describe or represent the same, and shall
cause such goods or services to enter into commerce, and any person who shall with
knowledge of the falsity of such designation of origin or description or representation cause or
procure the same to enter into commerce, shall be liable to a civil action for damages and
injunction provided in section twenty-three, Chapter V hereof, by any person doing business in
the locality falsely indicated as that of origin or in the region in which said locality is situated, or
by any person who believes that he is or is likely to be damaged by the use of any such false
description or representation.
Chapter VIII.
Assignment and Transmission of Rights
Sec. 31.
Rights assignable and form of assignment. — A registered mark or
trade-name, or one for which application to register has been filed shall be assignable with the
goodwill of the business in which the mark or trade-name is used, or with that part of the
goodwill of the business connected with the use of and symbolized by the mark or trade-name,
and in any such assignment it shall not be necessary to include the goodwill of the business
connected with the use of and symbolized by any other mark or trade-name used in the
business or by the name or style under which the business is conducted. Upon payment of the
required fee, the Director shall record assignments in due form in books kept for that purpose.
The assignment must be in writing, acknowledged before a notary public or other officer
authorized to administer oaths or perform other notarial acts and certified under the hand and
official seal of the notary or other officer.
An assignment shall be void as against any subsequent purchaser for a valuable
consideration without notice, unless it is recorded in the Patent Office within three months after
the date thereof or prior to such subsequent purchase.
Sec. 32.
Issuance of certificate of registration to assignee. — A certificate of
registration of a mark or trade-name may be issued to the assignee of the applicant, but the
assignment must first be recorded in the Patent Office. In case of change of ownership the
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Director shall, at the request of the owner and upon proper showing and payment of the
required fee, issue to such assignee a new certificate of registration of the said mark or
trade-name in the name of such assignee, and for the unexpired part of the original period.
Chapter IX.
Review of Orders or Decisions of Director
Sec. 33.
Appeal from action of Director.81 — Any party who has been denied
registration of a mark or trade name or to the renewal of the registration, or to any interference,
opposition or cancellation proceeding in the Patent Office, may appeal to the Supreme Court
from the final order or decision of the Director.
Sec. 34.
Procedure on appeal. — Sections sixty-three to seventy-three, inclusive,
Chapter VIII, of 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," shall
be applicable to the appeals herein provided.
Chapter X.
Importations Prohibited
Sec. 35.
Goods bearing infringing marks or trade-names. — No article of imported
merchandise which shall copy or simulate the name of any domestic product, or manufacturer,
or dealer, or of any manufacturer or dealer located in any foreign country which, by treaty,
convention or law affords similar privileges to citizens of the Philippines, or which shall copy or
simulate a mark or trade-name registered in accordance with the provisions of this Act, or shall
bear a mark or trade-name calculated to induce the public to believe that the article is
manufactured in the Philippines, or that it is manufactured in any foreign country or locality
other than the country or locality where it is in fact manufactured, shall be admitted to entry at
any customhouse of the Philippines. In order to aid the officers of the customs service in
enforcing this prohibition, any person who is entitled to the benefits of this Act, may require his
name and residence, and the name of the locality in which his goods are manufactured, a copy
of the certificate of registration of his mark or trade-name to be recorded in books which shall
be kept for this purpose in the Bureau of Customs, under such regulations as the Collector of
Customs with the approval of the Secretary of Finance shall prescribe, and may furnish to the
said Bureau facsimiles of his name, the name of the locality in which his goods are
81
Amended by R.A. No. 865.
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manufactured, or of his registered mark or trade-name, and thereupon the Collector of Customs
shall cause one or more copies of the same to be transmitted to each collector or other proper
officer of the Bureau of Customs.
Sec. 36.
Goods with false designation of origin and false description. — Any goods
marked or labeled in contravention of the provisions of section thirty, Chapter VII hereof, shall
not be imported into the Philippines or admitted to entry at any customhouse in the Philippines.
Chapter XI.
Provisions in Reference to Foreign Industrial Property
Sec. 37.
Rights of foreign registrants.82 — Persons who are nationals of, domiciled in,
or have a bona fide or effective business or commercial establishment in any foreign country,
which is a party to any international convention or treaty relating to marks or trade-names, or
the repression of unfair competition to which the Philippines may be a party, shall be entitled to
the benefits and subject to the provisions of this Act to the extent and under the conditions
essential to give effect to any such convention and treaties so long as the Philippines shall
continue to be a party thereto, except as provided in the following paragraphs of this section.
No registration of a mark or trade-name in the Philippines by a person described in the
preceding paragraph of this section shall be granted until such mark or trade-name has been
registered in the country of origin of the applicant, unless the applicant alleges use in
commerce.
For the purposes of this section, the country of origin of the applicant is the country in
which he has bona fide and effective industrial or commercial establishment, or if he has not
such an establishment in the country in which he is domiciled, or if he has not a domicile in any
of the countries described in the first paragraph of this section, the country of which he is a
national.
An application for registration of a mark or trade-name under the provisions of this Act filed
by a person described in the first paragraph of this section who has previously duly filed an
application for registration of the same mark or trade-name in one of the countries described in
said paragraph shall be accorded the same force and effect as would be accorded to the same
application if filed in the Philippines on the same date on which the application was first filed in
such foreign country: Provided, That —
82
Amended by R.A. No. 638.
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(a) The application in the Philippines is filed within six months from the date on which the
application was first filed in the foreign country; and within three months from the date
of filing or within such time as the Director shall in his discretion grant, the applicant
shall furnish a certified copy of the application for or registration in the country of origin
of the applicant, together with a translation thereof into English, if not in the English
language;
(b) The application conforms as nearly as practicable to the requirements of this Act, but
use in commerce need not be alleged;
(c) The rights acquired by third parties before the date of the filing of the first application in
the foreign country shall in no way be affected by a registration obtained on an
application filed under this paragraph; and
(d) Nothing in this paragraph shall entitle the owner of a registration granted under this
section to sue for acts committed prior to the date on which his mark or trade-name
was registered in this country unless the registration is based on use in commerce.
(e) A mark duly registered in the country of origin of the foreign applicant may be registered
on the principal register if eligible, otherwise on the supplemental register herein
provided. The application thereof shall be accompanied by a certified copy of the
application for or registration in the country of origin of the applicant.
The registration of a mark under the provisions of this section shall be independent of the
registration in the country of origin and the duration, validity or transfer in the Philippines of
such registration shall be governed by the provisions of this Act.
Trade-names of persons described in the first paragraph of this section shall be protected
without the obligation of filing or registration whether or not they form parts of marks.
Any person designated in the first paragraph of this section as entitled to the benefits and
subject to the provisions of this Act shall be entitled to effective protection against unfair
competition, and the remedies provided herein for infringement of marks and trade-names shall
be available so far as they may be appropriate in repressing acts of unfair competition.
Citizens or residents of the Philippines shall have the same benefits as are granted by this
section to persons described in the first paragraph hereof.
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Chapter XII.
Construction and Definitions
Sec. 38.
Words and terms defined and construed. — In the construction of this Act,
unless the contrary is plainly apparent from the context —
The term "trade-name" includes individual names and surnames, firm names, trade-names,
devices or words used by manufacturers, industrialists, merchants, agriculturists, and others to
identify their business, vocations or occupations; the names or titles lawfully adopted and used
by natural or juridical persons, unions, and any manufacturing, industrial, commercial,
agricultural or other organizations engaged in trade or commerce.
The term "trade-mark" includes any word, name, symbol, emblem, sign or device or any
combination thereof adopted and used by a manufacturer or merchant to identify his goods
and distinguish them from those manufactured, sold or dealt in by others.
The term "service-mark" means a mark used in the sale or advertising of services to identify
the services of one person and distinguish them from the services of others and includes
without limitation the marks, names, symbols, titles, designations, slogans, character names,
and distinctive features of radio or other advertising.
The word "business" includes vocations or occupations.
The term "mark" includes any trade-mark or service-mark entitled to registration under this
Act whether registered or not.
The word "registrant" includes the owner of a registered mark or trade-name.
Chapter XIII.
Fees
Sec. 39.
Fees.83 — The following fees shall be paid:
For filing application for registration covering not more than one class of goods, one
hundred and fifty pesos: Provided, That, if more than one class of goods is included in a single
application, a charge of fifty pesos shall be collected for each additional class in excess of one:
83
Amended by R.A. No. 681; further amended by R.A. No. 865.
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And provided, further, That all necessary expenses for publication, if any, may be charged to
this fee;
For filing application for revival of abandoned application for registration, twenty-five pesos;
For filing each opposition, fifty pesos;
For filing each affidavit required by section twelve, Chapter II hereof, twenty-five pesos;
For filing disclaimer, amendment, surrender or cancellation after registration, twenty pesos;
For issuance of a substitute certificate of registration following correction of a registrant's
mistake, twenty-five pesos;
For issuance of a new certificate of registration following change or ownership of a mark,
twenty-five pesos;
For filing petition for renewal of certificate of registration for each class, seventy-five pesos;
For filing petition for cancellation, fifty pesos;
For surcharge for any delayed payment of any delayed action of an applicant or registrant,
twenty-five pesos;
For notice of appeal from orders or decisions of Director, twenty-five pesos;
For recording assignments for each mark or trade-name, ten pesos;
For notice of appeal to the Supreme Court from orders or decisions of the Director or for
notice of appeal to the Director from orders or decisions of the principal examiner, twenty five
pesos.
For issuance of an affirmative or negative certificate regarding the registration of any
document in connection with a mark or trade-name, ten pesos;
For filing any other documents in connection with marks or trade-names not required by
law to be filed, ten pesos;
For certifying a copy to be true and exact copy, one peso;
For copies of records, two pesos per photostat sheet; one peso per one hundred words of
typewritten copy; and
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For services not otherwise specified, the Director shall, by regulation, provide the fees
therefor.
Sec. 40.
Collective marks and collective trade-names. — Collective marks and
collective trade-names belonging to cooperatives, associations or other collective groups or
organization may also be registered under the provisions of this Act, even though the said
collectivities may not possess an industrial, commercial or agricultural establishment. Foreign
collectivities may not, however, procure such registration if the existence of such collectivities is
contrary to the laws of the country of origin.
Such collective marks and collective trade-names, when registered, shall be entitled to the
protection provided herein in the case of marks and trade-names, except when used so as to
represent falsely that the owner or a user makes or sells the goods on which the mark or
trade-name is used, or so as to represent falsely the origin of the goods or services.
The other provisions of this Act relating to marks and trade-names shall apply to collective
marks and collective trade-names, except that the part of paragraph (e), section four, Chapter II
hereof, relating to geographically descriptive marks or trade-names shall not be applicable in
appropriate cases.
A "collective mark" or collective trade-name" is a mark or trade-name used by the
members of a cooperative, an association or other collective group or organization.
Chapter XIV.
Miscellaneous Provisions
Sec. 41.
Reservation in favor of prior registration. — Owners of marks or trade-names
registered under the provisions of the laws in force prior hereto, the registrations of which are
still subsisting under the said laws are hereby granted the right:
(a) Within one year after the taking effect of this Act to surrender their certificates of
registration and procure the issuance of new certificates, in which event they shall be
entitled to the benefits and subject to the provisions of this Act; or
(b) Within one year before the expiration of the period for which the certificates of
registration was issued or renewed, the registrant may renew the registration upon filing
an application therefor, as provided in section fifteen, Chapter III hereof. If said
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application is granted a renewal certificate shall be issued by the Director in accordance
with the provisions of this Act.
Sec. 42.
Renewal of registrations which expired during the war. — The provisions of
this Act to the contrary notwithstanding, registrations under prior laws which expired after the
eighth day of December, nineteen hundred forty-one, and which the owners were not able to
renew for causes arising out of the war, may be renewed within one year after this Act takes
effect, and non-use of the mark or trade-name may be shown to be due to special
circumstances. If the application for renewal is granted, a renewal certificate to commence from
the date of the expiration of the prior registration shall be issued by the Director in accordance
with the provisions of this Act.
Sec. 43.
Pending applications. — All applications for registration pending on the
effective date of this Act may be amended, if practicable, to bring them under the provisions of
this Act, without the payment of any additional fee. The prosecution of such applications
whether amended or not and the grant of registrations thereon shall conform to the provisions
of this Act.
Sec. 44.
Repealing clause. — Act Numbered Six hundred and sixty-six of the
Philippine Commission, approved March six, nineteen hundred and three, and all laws
amendatory thereto; Act Numbered Thirty hundred and seventy of the Philippine Legislature,
approved March sixteen, nineteen hundred and twenty-three; Act Numbered Thirty-two
hundred and two, approved December three, nineteen hundred and twenty-four, and all other
acts, or parts of acts inconsistent herewith, are hereby repealed.
Sec. 45.
Effective date. — This Act shall take effect on its approval.
Approved: June 20, 1947
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PREVIOUS LAW
PRESIDENTIAL DECREE NO. 49
(DECREE ON THE PROTECTION OF INTELLECTUAL PROPERTY)84
WHEREAS, tremendous strides in science and technology have made necessary the
updating of the Copyright Law to give fuller protection to intellectual property and to encourage
arts and letters, as well as stimulate scientific research and invention, at the same time
safeguard the public's right to cultural information;
NOW, THEREFORE, I, FERDINAND E. MARCOS, President of the Philippines, by virtue of
the powers vested in me by the Constitution as Commander-in-Chief of all the Armed Forces of
the Philippines, and pursuant to Proclamation No. 1081, dated September 21, 1972, and
General Order No. 1, dated September 22, 1972, as amended, do hereby decree, order and
make as part of the law of the land the following measure:
Chapter I.
Preliminary Provisions
Sec. 1.
This Decree shall be known as the "Decree on Intellectual Property."
Sec. 2.
The rights granted by this Decree shall, from the moment of creation, subsist
with respect to any of the following classes of works:
(A) Books, including composite and cyclopedic works, manuscripts, directories, and
gazetteers;
(B) Periodicals, including pamphlets and newspapers;
84
Signed on 14 November 1972; Repealed impliedly by Sec. 240.1 of Republic Act No. 8293.
Amended by PD 1988 entitled "Amending Certain Sections Of Presidential Decree No. 49" (issued
October 5, 1985).
Presidential Decree No. 49
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(C) Lectures, sermons, addresses, dissertations prepared for oral delivery;
(D) Letters;
(E) Dramatic or dramatico-musical compositions; choreographic works and entertainments
in dumb shows, the acting form of which is fixed in writing or otherwise;
(F) Musical compositions, with or without words;
(G) Works of drawing, painting, architecture, sculpture, engraving, lithography, and other
works of art; models or designs for works of art;
(H) Reproductions of a work of art;
(I) Original ornamental designs or models for articles of manufacture, whether or not
patentable, and other works of applied art;
(J) Maps, plans, sketches, and charts;
(K) Drawings or plastic works of a scientific or technical character;
(L) Photographic works and works produced by a process analogous to photography;
lantern slides;
(M) Cinematographic works and works produced by a process analogous to
cinematography or any process for making audio-visual recordings;
(N) Computer programs;
(O) Prints, pictorial illustrations, advertising copies, labels, tags, and box wraps;
(P) Dramatizations, translations, adaptations, abridgements, arrangements and other
alterations of literary, musical or artistic works or of works of the Philippine Government
as herein defined, which shall be protected as provided in Section 8 of this Decree;
(Q) Collections of literary, scholarly, or artistic works or of works referred to in Section 9 of
this Decree which by reason of the selection and arrangement of their contents
constitute intellectual creations, the same to be protected as such in accordance with
Section 8 of this Decree;
(R) Other literary, scholarly, scientific and artistic works.
Sec. 3.
The rights granted by this Decree shall not be lost except in the manner
specifically provided herein. Neither shall they be subject to levy and attachment while in the
possession of the creator or his heirs.
Sec. 4.
Nothing in this Decree shall be deemed to alter or in any manner impair any
other right or remedy of the persons protected by its provisions.
Chapter II.
Copyright
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Article I
Scope and beneficiaries of copyright
Sec. 5.
Copyright shall consist in the exclusive right;
(A) To print, reprint, publish, copy, distribute, multiply, sell, and make photographs,
photo-engravings, and pictorial illustrations of the works;
(B) To make any translation or other version or extracts or arrangements or adaptations
thereof; to dramatize it if it be a non-dramatic work; to convert it into a non-dramatic
work if it be a drama; to complete or execute it if it be a model or design;
(C) To exhibit, perform, represent, produce, or reproduce the work in any manner or by any
method whatever for profit or otherwise; if not reproduced in copies for sale, to sell any
manuscripts or any records whatsoever thereof;
(D) To make any other use or disposition of the work consistent with the laws of the land.
Sec. 6.
The creator or his heirs or assigns shall own the copyright in any of the works
mentioned in Section 2 of this Decree. If the works is produced by two or more persons, the
copyright shall belong to them jointly and their respective rights thereto shall be governed by
the Rules of the Civil Code on co-ownership.
If the work in which copyright subsists was made during and in the course of the
employment of the creator, the copyright shall belong to:
(A) The employee, if the creation of the object of copyright 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 work is the result of the performance of his regularly assigned
duties, unless there is an agreement, express or implied to the contrary.
Where the work is commissioned by a person who is not the employer of the creator and
who pays or agrees to pay for it and the work is made in pursuance of the commission, the
person who so commissioned the work shall have ownership of it but the copyright thereto
shall belong in joint ownership to him and the creator, unless there is a stipulation to the
contrary.
The creators of a cinematographic or analogous work are the producer, the author of the
scenario, the composer of the music, the film director, the photographic director, and the
author of the work adapted. However, subject to contrary or other stipulation among the
Presidential Decree No. 49
171
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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 fees for the musical
compositions, with or without words, which may be incorporated into the work.
The copyright in letters shall belong to the writer, subject to the provisions of Article 723 of
the Civil Code.
Sec. 7.
For purposes of this Decree, articles and other writings published without the
names of the authors or under pseudonyms are considered as the property of the publishers,
unless the contrary appears.
Sec. 8.
The works referred to in subsections (P) and (Q) of Section 2 of this Decree
shall, when produced with the consent of the creator or proprietor of the original works on
which they are based, be protected as new works; however, such new works shall not affect
the force of any subsisting copyright upon the original works employed or any part thereof, or
be construed to imply an exclusive right to such use of the original works, or to secure or
extend copyright in such original works.
Sec. 9.
No copy shall subsist in any work of the Government of the Philippines.
However, prior approval of the government agency or office wherein the work is created shall
be necessary for exploitation of such work for profit. Such agency or office may, among other
things, impose as a condition the payment of royalties. No prior approval or condition shall be
required for the use for any purpose of statutes, rules and regulations, and speeches, lecturers,
sermons, addresses, and dissertations pronounced, read or rendered in courts of justice before
administrative agencies, in deliberative assemblies, and in meetings of character.
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 a part of his regularly prescribed official
duties.
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 abridgement or annulment of the copyright or to
authorize any use or appropriation of such work without the consent of the copyright
proprietor.
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Article II.
Limitations on Copyright
Sec. 10.
When a work has been lawfully made accessible to the public, the author
shall not be entitled to prohibit;
1. Its recitation or performance (A) if done privately and free of charge; or (B) if made for
strictly charitable or religious institution or society;
2. Reproductions, translations and adaptations thereof destined exclusively for personal
and private use;
Sec. 11.
To an extent compatible with fair practice and justified by the scientific,
critical, informatory or educational purpose, it shall be permissible to make quotations or
excerpts from a work already lawfully made accessible to the public. Such quotations may be
utilized in their original form or translation.
News items, editorials, and articles on current political, social, economic, scientific or
religious topic may be reproduced by the press or broadcast, unless they contain or are
accompanied by a notice that their reproduction or publication is reserved. In case of musical
works, parts of little extent may also be reproduced.
Quotations and excerpts as well as reproductions shall always be accompanied by an
acknowledgment of the source and name of the author, if his name appears thereon.
Sec. 12.
In reports of a current event by means of photography, cinematography or
broadcasting, literary, scientific or artistic works which can be seen or heard in the course of
said event may be reproduced and communicated to the public to the extent necessary for the
purpose.
Sec. 13.
Libraries, public archives and museums have the right, subject to the
conditions specified in the succeeding paragraphs, to produce for purposes of their activities,
by photographic means, and without the consent of the creator or proprietor, copies of a literary
or artistic work.
Material forming part of the collections mentioned in the preceding paragraph which, by
reason of their fragile character or rarity, cannot be lent to users in its original form, may be
reproduced by photography for the purpose of loans. Nevertheless, except in cases where
special reasons justify it, not more than two copies may be made.
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It is equally permissible to make, by means of photography, reproductions of isolated
articles contained in composite works, as well as brief portions of other published works, in
order 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.
Each person seeking loan may only receive one copy of each article or each portion of a work.
When a copy of a work is found to be incomplete, the missing portions may be reproduced
by means of photography, provided they only constitute a minor portion of the total work.
Nevertheless, it shall not be permitted to produce a volume of a work published in several
volumes or to produce missing tomes or parts of magazines or similar works, unless the
volume, tome or part is out of stock with booksellers, the printing house and the publisher.
Every library which, by law, is entitled to receive one or two copies of a printed work shall
be entitled, when special reasons so require, to reproduce, by means of photography or
process analogous to photography, a copy of a published work, the acquisition of which is
considered necessary for the collections of the library, but which is out of stock with
booksellers, the printing house and the publisher.
A work belonging to the collections mentioned in the first paragraph of this section which
has not been disseminated may not be reproduced or published without the consent of the
creator or proprietor. However, such work may be reproduced for purposes of preservation.
Sec. 14.
If, after the expiration of five years from the date of the first publication of a
writing, a translation of such writing has not been published in the national or other local
language, as the case may be, by the owner of the right of translation or with his authorization,
any citizen may obtain a non-exclusive license from the Director of the National Library, to
translate the work and publish the work so translated in the national or other local language in
which it has not been published; Provided, That such citizen establishes either that he has
requested, and been denied, authorization by the proprietor of the right to make and publish the
translation, or that, after due diligence on his part, he was unable to find the owner of the right.
A license may also be granted on the same conditions if all previous editions of a translation in
such language are out of print. In both cases the terms and conditions of the license, including
the royalties of the author or proprietor of the original work, shall be stated therein.
If the owner of the right of translation cannot be found, then the applicant for a license shall
send copies of his application to the publisher whose name appears on the work and, if the
nationality of the owner of the right of translation is known, to the diplomatic or consular
representative of the state of which such owner is a national, or to the organization which may
have been designated by the government of that state. The license shall not be granted before
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the expiration of two months from the date of the dispatch of the copies of the application.
Neither shall it be granted when the author has withdrawn from circulation all copies of the
work.
The original title and the name of the author of the work shall be printed on all copies of the
published translation.
Article III.
Transfer of Work and Copyright
Sec. 15.
The copyright may, by gift, inheritance or otherwise, be transferred or
assigned in whole or in part. Such transfer or assignment shall entitle the transferee or assignee
to all the rights and remedies which the transferer or assignor had with respect to the copyright.
The copyright is not deemed transferred or assigned inter vivos in whole or in part, unless
there is a written indication that such is the intention.
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.
Sec. 16.
The copyright is distinct from the property in the material object subject to it.
Consequently, the transfer or assignment 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 or assignment of the copyright.
Sec. 17.
An assignment or transfer inter vivos, or a license, must be in writing,
acknowledged before a notary public or other officer authorized to administer oaths or perform
notarial acts and certified under the hand and seal of the notary or other officer.
This section and Section 19 shall not apply to cases covered by the last paragraph of
Section 15 of this Decree.
Sec. 18.
If two or more persons jointly own a copyright or any part thereof, neither of
the owners shall be entitled to grant licenses without the consent of the other owner or owners.
Sec. 19.
Every assignment, license or other instrument relating to any right, title or
interest in a copyright and to the work subject to it shall be filed in duplicate with the National
Library upon payment of the prescribed fee for registration in books and records kept for the
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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 Official Gazette.
Such instruments shall be void as against any subsequent purchaser or mortgagee for a
valuable consideration and without notice unless it is recorded in the library prior to the
subsequent purchase or mortgage.
Sec. 20.
When the creator of a work in which copyright is subsisting dies, it shall be
the duty of his heirs or assigns to file with the National Library for registration a written notice
under oath of the date of the creator's death. Until this is complied with, the limitation of
remedies established in Section 26 of this Decree shall be enforced.
Article IV.
Duration of Copyright
Sec. 21.
The copyright conferred by this Decree shall endure the lifetime of the creator
and for fifty years after his death. In case of works of joint creation, the period of fifty years shall
be counted from the death of the last surviving co-creator.
Sec. 22.
In case of anonymous and pseudonymous works, the copyright shall last
until the end of fifty years following the date of their first publication. However, when the
pseudonym adopted by the author leaves no doubt as to his identity, or if the author of an
anonymous or pseudonymous work discloses his identity during the period mentioned in this
section, the term of the protection shall be that fixed in the next preceding section.
Sec. 23.
In the case of posthumous works which do not fall within the categories of
the works referred to in the next two preceding sections, the term of protection afforded to the
heirs or assignees of the creator shall end at the expiration of fifty years after his death.
Sec. 24.
Irrespective of the provisions of the foregoing sections of this article, the term
shall be thirty years in the case of: (A) periodicals and newspapers, provided that material
contained therein in which an independent copyright may be deemed to subsist shall be
accorded the length of protection appropriate to it; (B) works of applied art; (C) cinematographic
or photographic works as well as those produced by a process analogous to cinematography
or photography or any process for making audio-visual recordings.
Sec. 25.
The term of protection subsequent to the death of the creator provided in
Sections 21 and 23 and the terms provided in Sections 22 and 24 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
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January of the year following the event which gives rise to them.
Article V.
Deposit and Notice
Sec. 26.
After the first public dissemination or performance by authority of the
copyright owner of a work falling under subsections (A), (B), (C) and (D) of Section 2 of this
Decree, there shall, within three weeks, be registered and deposited with the National Library,
by personal delivery or by registered mail, two complete copies or reproductions of the work in
such form as the Director of said library may prescribe. A certificate of registration and deposit
for which the prescribed fee shall be collected. If, within three weeks after receipt by the
copyright owner of a written demand from the director for such deposit, the required copies or
reproductions are not delivered and the fee is not paid, the copyright owner shall be liable to
pay a fine equivalent to the required fee per month of delay and to pay to the National Library
the amount of the retail price of the best edition of the work.
With or without a demand from the Director, a copyright owner who has not made such
deposit shall not be entitled to recover damages in an infringement suit and shall be limited to
the other remedies specified in Section 23 of this Decree.
Sec. 27.
Each copy of a work published or offered for sale shall contain a notice
bearing the name of the copyright owner, the year of its first publication, and in copies
produced after the creator's death, the year of such death.
Failure to comply with the requirements of this section shall result in the limitation of
remedies established in the next preceding section.
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Article VI.
Infringement
Sec. 28.
Any person infringing a copyright shall be liable:
(A) To an injunction restraining such infringement;
(B) To pay to the copyright proprietor or his assigns or heirs such actual damages as he
may have due to the infringement as well as the profits the infringor 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 damage which to the court shall
appear to be just and which shall not be less than the sum of One Thousand Pesos, and
shall not be regarded as penalty;
(C) To deliver under oath, for impounding during the pendency of the action, upon such
terms and conditions as the court may prescribe, all articles alleged to infringe a
copyright;
(D) To deliver under oath for destruction 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) To such other terms and conditions, including the payment of moral and exemplary
damages, which the court may deem proper, wise and equitable.
Sec. 29.
Any person infringing any copyright secured by this Decree or aiding or
abetting such infringement shall be deemed guilty of a crime punishable by imprisonment not
exceeding one year or by fine not less than Two Hundred Pesos nor more than Two Thousand
Pesos or both, in the discretion of the court.
Sec. 30.
Unless authorized by the copyright proprietor concerned, importation into the
Philippines of any piratical copies or likeness of any work in which Philippine copyright subsists
is prohibited, except when imported under the following circumstances;
First. When copies of the work are not available in the Philippines and —
(A) Not more than one copy at one time is imported for strictly individual use only, or
(B) The importation is by authority of and for the use of the Philippine Government; or
(C) The importation, consisting of not more than three such copies or likenesses in any one
invoice, is not for sale but for the use only of any religious, charitable, or educational
society or institution duly incorporated or registered, or is for the encouragement of the
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fine arts, or for any state school, college, university, or free public library in the
Philippines.
Second. When such copies form parts of libraries and personal baggage belonging to
persons or families arriving from foreign countries and are not intended for sale provided such
copies do not exceed three copies imported as allowed by this section may not lawfully be
used in any way to violate the rights of the proprietor of Philippine copyright or annul or limit
the protection secured by this Decree, and such unlawful use shall be deemed an infringement
and shall be punishable as such without prejudice to the proprietor's right of action.
The Commissioner of Customs, subject to the approval of the Secretary of Finance, is
hereby empowered to make rules and regulations for preventing the importation of articles the
importation of which is prohibited under this section and for seizing and condemning and
disposing of the same in case they are discovered after they have been imported.
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Chapter III.
Right to Proceeds in Subsequent Transfers
Sec. 31.
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 disposal thereof by the
creator, the creator or his heirs shall have an inalienable right to participate in the gross
proceeds of the sale or lease to the extent of five per centum (5%).
This right shall exist during the lifetime of the creator and for fifty years after his death.
Sec. 32.
As a condition precedent to making a claim to the right established in the
preceding section for any work mentioned therein, the work must be registered in the National
Library where a separate register shall be kept for this purpose.
The creator or his heirs may designate a society of artists, writers or composers as agency
to claim the right in his or their behalf. In such case, the society shall forward the proceeds to
the creator or his heirs upon their demand or at the end of every quarter of each calendar year.
Sec. 33.
The provisions of this Chapter shall not apply to prints, etchings, engravings,
works of applied art, or works of similar kind wherein the creator primarily derives gain from the
proceeds of reproductions.
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Chapter IV.
Moral Rights
Sec. 34.
Independently of the rights conferred by Chapters II and III of this Decree or
the grant of an assignment or license with respect to any of such rights, a creator shall have the
right:
(A) To make alterations of his work prior to, or to withhold it from, publication;
(B) To require that the authorship of the works be attributed to him;
(C) To object to any alteration of his work which is prejudicial to his reputation;
(D) To restrain the use of his name with respect to any work not of his own creation or in a
distorted version of his work.
Sec. 35.
A creator 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. 36.
A creator may assign or waive his rights mentioned in Section 34 of this
Decree by a written instrument expressly so stating, but no such assignment shall be valid
where its effect is to permit another:
(A) To use the name of the creator, or the title of his work, or otherwise to make use of his
reputation with respect to any version or adaptation of his work which, because of
alterations therein, would substantially tend to injure the literary or artistic reputation of
the author; or
(B) To use the name of the creator with respect to a work he did not create.
Sec. 37.
When a creator contributes to a collective work, like a newspaper or an
encyclopedia, his right to have his contribution attributed to him is deemed waived unless he
expressly reserves it.
Sec. 38.
In the absence of a special contract at the time a creator 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 creator's
rights secured by this chapter. Nor shall complete destruction of a work unconditionally
transferred by the creator be deemed to violate such rights.
Sec. 39.
The rights of a creator under this chapter shall be perpetual and
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imprescriptible. The person or persons to be charged with the posthumous enforcement of
these rights shall be named in a writing to be filed with the National Library. In default of such
person or persons, such enforcement shall devolve upon either the creator's heirs or the
Director of the National Library acting in behalf of the heirs.
The persons named by the creator in accordance with the foregoing paragraph or, in their
absence, the creator's heirs shall have the power to make any assignment or license of the
rights provided in this chapter which would be within the power of the creator had he lived. If
there are no heirs, the Director of the National Library shall exercise this power.
For purposes of this Section, "Person" shall mean any individual, partnership, corporation,
association, or society. The Director of the National Library may prescribe reasonable fees to
be charged for his services in the application of provisions of this Section.
Sec. 40.
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 Civil Code may also be recovered. Any
damage recovered after the creator's death shall be held in trust for and remitted to the heirs.
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Chapter V.
Rights of Performers, Producers of Sounds, Recordings and
Broadcasting Organizations
Article I.
Definition of Terms
Sec. 41.
As used in this chapter:
(A) "Performers" mean actors, singers, musicians, dancers, and other persons who act,
sing, deliver, declaim, play in, or otherwise perform literary or artistic work.
(B) "Sound Recording" means any exclusively aural fixation of sounds of a performance or
of other sound.
(C) “Producer of sound records" means the person who, or the legal entity which, first fixes
a performance or other sounds.
(D) "Publication" means the issue or offering to the public of copies of a sound recording in
reasonable quantity.
(E) "Reproduction" means the making of a copy or copies of a recording.
(F) "Broadcasting" means the transmission by wireless means for public reception of
sounds or of images and sound.
(G) "Broadcasting organization" shall include a sole proprietorship duly authorized to
engage in broadcasting.
Article II.
Performers
Sec. 42.
Performers shall have the exclusive right:
(A) To record or authorize the recording of their performance on any recording apparatus
for image and/or sound.
(B) To authorize the broadcasting and the communication to the public of their
performance.
(C) To prohibit the reproduction of a recording of their performance:
(i)
If the original recording itself was made without their consent;
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(ii)
If the reproduction is made for purposes different from those for which the
performers gave their consent; or
(iii)
If the original recording was made for any of the purposes mentioned in Section
44 and the reproduction is made for a different purpose.
Sec. 43.
Performers shall have the right to decide whether their names will be
mentioned when their performance is recorded or broadcast. The provisions of Chapter IV shall
apply to them.
Sec. 44.
Notwithstanding the provisions of Section 43 of his Decree, performers may
not object to the recording: (A) of parts of their performance to be used in connection with the
reporting of current events, or (B) of the entirety thereof which shall be used solely for the
purpose of teaching or scientific research. The provisions of Section 12 of this Decree shall also
apply to performances. However, the provisions of this section shall be without prejudice to
those of the next preceding section.
Sec. 45.
For infringement of any of their rights, performers shall be entitled to:
(A) An injunction restraining such infringement;
(B) To recover such damages as may be recoverable under the Civil Code or, in lieu thereof,
such damages which to the court shall appear just and which shall not be less than
Three Hundred Pesos;
(C) To the remedies provided in subsections (C) and (D) of Section 28 of this Decree but
with respect only to recordings of their performances and devices for making such
recordings.
Article III.
Producers of Sound Recordings
Sec. 46.
Producers of sound recordings shall have the exclusive right to authorize or
prohibit the direct or indirect reproduction of their recordings and the placing of these
reproductions in the market.
Sec. 47.
When a sound recording is used with the intention of making or enhancing
profit, the producer of the recording has the right to a fair remuneration from the user.
Sec. 48.
The producer of a sound recording may also forbid any use of this recording
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which would cause serious and unwarranted damage to his industrial interests.
Sec. 49.
There shall be indicated in each copy of a sound recording the title of the
work recorded, the name of the author and, subject to Section 43 of this Decree of the principal
performers and the date of manufacture.
Sec. 50.
Within six (6) months after its manufacture, two copies of a sound recording
shall be deposited, by personal delivery or by mail, with the National Library. Upon such
deposit, the Director shall issue to the producer a certificate under the seal of the library
indicating the fact and date of such deposit. This certificate shall constitute a prima facie
evidence of the facts stated therein.
85
Sec. 51.
No suit for violation of the rights of the producer of a sound recording may
be instituted until he has complied with the requirements of the next two preceding sections.
Article IV.
Broadcasting Organizations
Sec. 52.
Broadcasting organizations shall enjoy the exclusive right:
(A) To relay by wire or rebroadcast their broadcasts;
(B) To record in any manner, including the making of cinematographic films or the use of
video tape, their broadcasts for the purpose of making profit;
(C) To use such records for fresh transmissions or for fresh recording.
Sec. 53.
The provisions of immediately preceding section shall not include the right to
prohibit recording of broadcasts for strictly private use or solely for the purpose of teaching or
scientific research.
Sec. 54.
A broadcasting organization, when any of its rights secure herein is infringed,
shall be entitled:
(A) To have such infringement enjoined;
(B) To recover such damages as may be awarded under the Civil Code;
85
Amended by P.D. No. 1988.
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(C) The remedies provided in subsections (C) and (D) of Section 28 of this Decree but with
respect only to unauthorized recordings of its broadcasts and devices for making such
recordings.
Article V.
Term of Protection
Sec. 55.
The rights granted under this Chapter shall expire after twenty years from the
end of the year in which:
(A) The performance took place — for performances not incorporated in recordings;
(B) The recording was made — for sound or image and sound recordings and for
performances incorporated therein;
(C) The broadcast took place — in the case of broadcasts.
Article VI.
Penalty
Sec. 56.
The prohibition and penalties provided in Section 29 shall apply to
infringement of any of the rights granted in this Chapter; Provided, however, That the mandatory
penalty of imprisonment of not less than three (3) months and one (1) day to not more than one
(1) year, plus a fine of not less than Fifty Thousand Pesos but not more than One Hundred
Thousand Pesos, shall be imposed upon any person who shall:
(1) Transfer or cause to be transferred, directly or indirectly, any sound recording or motion
picture, or other audio-visual work that has been recorded on a phonograph record,
disc, wire, tape, film or other article on which sounds, motion pictures, or other
audio-visual works are recorded, with intent to sell, lease, publicly exhibit or cause to be
sold, leased or publicly exhibited, or to use or cause to be used for profit, such article on
which sounds, motion pictures, or other audio-visual works are so transferred, without
the written consent of the owner or his assignee; or
(2) Sell, lease, distribute, circulate, publicly exhibit, offer for sale, lease, distribution, or
possess for the purpose of sale, lease, distribution, circulation or public exhibition, any
such article to which sounds, motion pictures or audio-visual recordings thereon have
been so transferred, without the written consent of the owner or his assignee; or
(3) Offer or make available for a fee, rental or any other form of compensation, directly or
indirectly, any equipment, machinery, paraphernalia or any material with the knowledge
that such equipment, machinery, paraphernalia or material will be used by another to
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reproduce, without the consent of the owner, any phonograph record, disc, wire, tape,
film or other article on which sounds, motion pictures, or other audio-visual recordings
may be transferred;
For purposes of this Act, public exhibition shall cover any exhibition wherein fifteen (15) or
more persons are present, for monetary or promotional considerations. Private clubs are
likewise herein included.86
Chapter VII.
Institution of Actions and Proceedings
Sec. 57.
All actions, suits and proceedings shall, regardless of the amount involved,
be originally cognizable by Courts of First Instance.
Sec. 58.
No damages may be recovered under this Decree after four years from the
time the cause of action arose.
Sec. 59.
86
Appeals shall be governed by the Rules of Court.
Amended by P.D. No. 1988.
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Visit us: 28 Upper McKinley Road, McKinley Hill Town Center, Fort Bonifacio, Taguig City 1634
Call us: +632-7238-6300
For more information about intellectual property, our services, and our satellite offices:
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Chapter VIII.
Miscellaneous Provisions
Sec. 60.
All copies deposited and instruments in writing filed with the National Library
in accordance with the provisions of this Decree shall become the property of the Government.
Sec. 61.
The section or division of the National Library charged with receiving copies
and instruments deposited and with keeping records required under this Decree and everything
in it shall be opened to public inspection subject to such safeguards and regulations as may be
prescribed by Director of the Library.
Sec. 62.
The National Library shall collect the following fees:For the issuance of a
certificate of deposit of copies of a work, five pesos;
For each assignment, license, notice or other written instrument filed, ten pesos;
For other services, in such amount as he may fix by regulation: Provided, That single fee
shall exceed ten pesos.
Chapter IX.
Final Provisions
Sec. 63.
The provisions of this Decree shall apply to works in which copyright
protection obtained prior to the effectivity of this Decree is subsisting: Provided, That the
application of this Decree shall not result in the diminution of such protection.
Sec. 64.
Act No. 3134, otherwise known as the "Copyright Law of the Philippine
Islands," and all laws or provisions of law, orders or regulations inconsistent herewith are
hereby repealed.
This Decree shall take effect 15 days after publication in the Official Gazette.
DONE in the City of Manila, this 14th day of November, in the year of Our Lord, Nineteen
Hundred and Seventy-Two.
[end of document]
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