WORLD TRADE ORGANIZATION
ORGANISATION MONDIALE DU COMMERCE
ORGANIZACIÓN MUNDIAL DEL COMERCIOIP/N/1/PHL/C/1
IP/N/1/PHL/I/1
14 June 2001
(01-2963)
Council for Trade-Related Aspects of
Intellectual Property RightsOriginal:  English/
anglais/
inglés
MAIN DEDICATED INTELLECTUAL PROPERTY
LAWS AND REGULATIONS NOTIFIED UNDER
ARTICLE 63.2 OF THE AGREEMENT
PHILIPPINES
The present document reproduces the text1 of Republic Act No. 8293 – the Intellectual
Property Code, as notified by the Philippines under Article 63.2 of the Agreement (see documentIP/N/1/PHL/2).
Conseil des aspects des droits de propriété
intellectuelle qui touchent au commerce
PRINCIPALES LOIS ET RÉGLEMENTATIONS CONSACRÉES À LA
PROPRIÉTÉ INTELLECTUELLE NOTIFIÉES AU TITRE
DE L'ARTICLE 63:2 DE L'ACCORD
PHILIPPINES
Le présent document contient le texte1 de la Loi n° 8293 de la République – Code de la
propriété intellectuelle, notifiée par les Philippines au titre de l'article 63:2 de l'Accord (voir ledocument IP/N/1/PHL/2).
Consejo de los Aspectos de los Derechos de Propiedad
Intelectual relacionados con el Comercio
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA
PROPIEDAD INTELECTUAL NOTIFICADOS EN VIRTUD
DEL PÁRRAFO 2 DEL ARTÍCULO 63 DEL ACUERDO
FILIPINAS
En el presente documento se reproduce el texto1 de la Ley de la República Nº 8293 - Código
de Propiedad Intelectual, notificado por Filipinas en virtud del párrafo 2 del artículo 63 del Acuerdo(véase el documento IP/N/1/PHL/2).
                                                     
1 In English only./En anglais seulement./En inglés solamente.IP/N/1/PHL/C/1
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June 6, 1997            January 1, 1998
REPUBLIC ACT NO. 8293
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
SECTION 1. Title. — This Act shall be known as the "Intellectual Property
Code of the Philippines."
SECTION 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 securethe exclusive rights of scientists, inventors, artists and other gifted citizens to their
intellectual property and creations, particularly when beneficial to the people, for such
periods as provided in this Act.
The use of intellectual property bears a social function. To this end, the State
shall promote the diffusion of knowledge and information for the promotion of
national development and progress and the common good.
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)
SECTION 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)IP/N/1/PHL/C/1
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SECTION 4. Definitions . —
4.1. The term "intellectual property rights" consists of:
a) Copyright and Related Rights;
b) Trademarks and Service Marks;
c) Geographic Indications;d) Industrial Designs;
e) Patents;
f) Layout-Designs (Topographies) of Integrated Circuits; and
g) 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 aproduct, 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)
SECTION 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;
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 theIP/N/1/PHL/C/1
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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)
SECTION 6. The Organizational Structure of the IPO . —
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 six (6) Bureaus, each of which shall be
headed by a Director and assisted by an Assistant Director. These Bureaus are:
a) The Bureau of Patents;
b) The Bureau of Trademarks;
c) The Bureau of Legal Affairs;d) The Documentation, Information and Technology  Transfer
Bureau;
e) The Management Information System and EDP Bureau; and
f) The Administrative, Financial and Personnel Services Bureau.
6.3. The Director General, Deputies Director General, Directors and
Assistant Directors shall be appointed by the President, and the other officers andIP/N/1/PHL/C/1
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employees of the Office by the Secretary of Trade and Industry, conformably with and
under the Civil Service Law. (n)
SECTION 7. The Director General and Deputies Director General . —
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 personsrepresenting 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, 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, and the Director of Trademarks shall be appealable
to the Court of Appeals in accordance with the Rules of Court; and thosein respect of the decisions of the Director of Documentation,
Information and Technology Transfer Bureau shall be appealable to the
Secretary of Trade and Industry; and
c) Exercise original jurisdiction to resolve disputes relating to the terms of
a license involving the author's right to public performance or othercommunication of his work. The decisions of the Director General in
these cases shall be appealable to the Secretary of Trade and Industry.
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 BarIP/N/1/PHL/C/1
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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 beeligible 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 tosupport directly the Office of the Director General. (n)
SECTION 8. The Bureau of Patents . — The Bureau of Patents shall have the
following functions:
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)
SECTION 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 thecertificates 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)
SECTION 10. The Bureau of Legal Affairs . — The Bureau of Legal
Affairs shall have the following functions:IP/N/1/PHL/C/1
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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;
 (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 (P200,000): 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:
(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 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 ofthe 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;IP/N/1/PHL/C/1
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(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 (P5,000)
nor more than One hundred fifty thousand pesos(P150,000). In addition, an additional fine of not more
than One thousand pesos (P1,000) 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 reasonablewhich shall not exceed one (1) year;
(vii)  The withholding of any permit, license, authority, or
registration which is being secured by the respondent from
the Office;
(viii)   The assessment of damages;
(ix)     Censure; and
(x) Other analogous penalties or sanctions. (Secs. 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)
SECTION 11. The Documentation, Information and Technology Transfer
Bureau . — The Documentation, Information and Technology Transfer Bureau shall
have the following functions:IP/N/1/PHL/C/1
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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
11.8. Register technology transfer arrangements, and settle disputes involving
technology transfer payments. (n)
SECTION 12. The Management Information Services and EDP Bureau .
— 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)IP/N/1/PHL/C/1
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SECTION 13. The Administrative, Financial and Human Resource
Development Service Bureau . —
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, officemaintenance, 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 of registrations issued by the office, andthe 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)IP/N/1/PHL/C/1
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SECTION 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 ofthe Secretary of Trade and Industry, certifies that the above-stated fees and charges
the Office shall collect are enough to fund its operations. (n)
SECTION 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 oroperated 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. 3, R.A. No. 165a)
SECTION 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)
SECTION 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)IP/N/1/PHL/C/1
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SECTION 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)
SECTION 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, anypatent 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
SECTION 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
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)
CHAPTER II
PATENTABILITY
SECTION 21. Patentable Inventions . — Any technical solution of a
problem in any field of human activity which is new, involves an inventive step and isIP/N/1/PHL/C/1
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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)
SECTION 22. Non-Patentable Inventions . — The following shall be
excluded from patent protection:
22.1. Discoveries, scientific theories and mathematical methods;
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:
22.5. Aesthetic creations; and22.6. Anything which is contrary to public order or morality. (Sec. 8, R.A.
No. 165a)
SECTION 23. Novelty . — An invention shall not be considered new if it
forms part of a prior art. (Sec. 9, R.A. No. 165a)
SECTION 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 theIP/N/1/PHL/C/1
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applicant or the inventor identified in both applications are not one and the same. (Sec.
9, R.A. No. 165a)
SECTION 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 disclosurewas 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 fromthe 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)
SECTION 26. Inventive Step . — An invention involves an inventive step
if, having regard to prior art, it is not obvious to a person skilled in the art at the time
of the filing date or priority date of the application claiming the invention. (n)
SECTION 27. Industrial Applicability . — An invention that can be
produced and used in any industry shall be industrially applicable. (n)
CHAPTER III
RIGHT TO A PATENT
SECTION 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)
SECTION 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 ormore 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.)IP/N/1/PHL/C/1
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SECTION 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)
SECTION 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) monthsfrom the date of filing in the Philippines. (Sec. 15, R.A. No. 165a)
CHAPTER IV
PATENT APPLICATION
SECTION 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 saidauthority. (Sec. 13, R.A. No. 165a)IP/N/1/PHL/C/1
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SECTION 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)
SECTION 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 agentand the title of the invention. (n)
SECTION 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 andinvolves 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)
SECTION 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)
SECTION 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)
SECTION 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.IP/N/1/PHL/C/1
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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)
SECTION 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)
CHAPTER V
PROCEDURE FOR GRANT OF PATENT
SECTION 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)
SECTION 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 theimplementing 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 areIP/N/1/PHL/C/1
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received. If the deficiencies are not remedied within the prescribed time limit, the
application shall be considered withdrawn. (n)
SECTION 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 theRegulations 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)
SECTION 43. Classification and Search . — An application that has
complied with the formal requirements shall be classified and a search conducted to
determine the prior art. (n)
SECTION 44. Publication of Patent Application . —
44.1. The patent application shall be published in the IPO Gazette together with
a search document established by or on behalf of the Office citing any documents thatreflect 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)
SECTION 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)
SECTION 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 thepublished patent application, as if a patent had been granted for that invention:
Provided , That the said person had:IP/N/1/PHL/C/1
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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)
SECTION 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)
SECTION 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.
48.2. Withdrawal of the request for examination shall be irrevocable and shall
not authorize the refund of any fee. (n)
SECTION 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 asfiled. (n)
SECTION 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)IP/N/1/PHL/C/1
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SECTION 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)
SECTION 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)
SECTION 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)
SECTION 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)
SECTION 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.
5.2. 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)IP/N/1/PHL/C/1
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SECTION 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 infringementshall 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)
SECTION 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)
SECTION 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 patent of a formal and clerical nature, not incurred through
the fault of the Office. (Sec. 26, R.A. No. 165a)
SECTION 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.IP/N/1/PHL/C/1
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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)
SECTION 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)
CHAPTER VI
CANCELLATION OF PATENTS AND SUBSTITUTION OF PATENTEE
SECTION 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)
SECTION 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 translationthereof in English, if not in the English language. (Sec. 30, R.A. No. 165)IP/N/1/PHL/C/1
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SECTION 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)
SECTION 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)
SECTION 65. Cancellation of the Patent . —
65.1. If the Committee finds that a case for cancellation has been proved, it
shall order the patent or any specified claim or claims thereof cancelled.
65.2. If the Committee finds that, taking into consideration the amendment
made by the patentee during the cancellation proceedings, the patent and the inventionto 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)
SECTION 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)IP/N/1/PHL/C/1
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CHAPTER VII
REMEDIES OF A PERSON WITH A RIGHT TO A PATENT
SECTION 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)
SECTION 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 forhis 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)
SECTION 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 orderor decision became final and executory, and shall be recorded in the register of the
Office. (n)
SECTION 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 madein accordance with Sections 44 and 51, respectively. (n)IP/N/1/PHL/C/1
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CHAPTER VIII
RIGHTS OF PATENTEES AND INFRINGEMENT OF PATENTS
SECTION 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 obtaineddirectly 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)
SECTION 72. Limitations of Patent Rights . — The owner of a patent has
no right to prevent third parties from performing, without his authorization, the acts
referred to in Section 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;
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 the purpose of
experiments that relate to the subject matter of the patented invention;
72.4. 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;
72.5. Where the invention is used in any ship, vessel, aircraft, or land vehicle
of any other country entering the territory of the Philippines temporarily orIP/N/1/PHL/C/1
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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)
SECTION 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 hisenterprise 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)
SECTION 74. Use of Invention by Government . —
74.1. A Government agency or third person authorized by the Government may
exploit the 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 theappropriate 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.
74.2. The use by the Government, or third person authorized by the
Government shall be subject, mutatis mutandis , to the conditions set forth in Sections
95 to 97 and 100 to 102. (Sec. 41, R.A. No. 165a)
SECTION 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)IP/N/1/PHL/C/1
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SECTION 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.
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 toreasonable 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.
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 acontributory infringer and shall be jointly and severally liable with the infringer. (Sec.
42, R.A. No. 165a)
SECTION 77. Infringement Action by a Foreign National . — Any
foreign national or juridical entity who meets the requirements of Section 3 and notengaged 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)
SECTION 78. Process Patents ; Burden of Proof . — If the subject matter
of a patent is a process for obtaining a product, any identical product shall bepresumed 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, toIP/N/1/PHL/C/1
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determine the process actually used. In ordering the defendant to prove that the
process to obtain the identical product is different from the patented process, the court
shall adopt measures to protect, as far as practicable, his manufacturing and business
secrets. (n)
SECTION 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)
SECTION 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 thepatent. (Sec. 44, R.A. No. 165a)
SECTION 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)
SECTION 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)
SECTION 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 assessorproposed 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)
SECTION 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 thereforeIP/N/1/PHL/C/1
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and, upon conviction, shall suffer imprisonment for the period of not less than six (6)
months but not more than three (3) years and/or a fine of not less than One hundred
thousand pesos (P100,000) but not more than Three hundred thousand pesos
(P300,000), at the discretion of the court. The criminal action herein provided shall
prescribe in three (3) years from date of the commission of the crime. (Sec. 48, R.A.
No. 165a)
CHAPTER IX
VOLUNTARY LICENSING
SECTION 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)
SECTION 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)
SECTION 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;IP/N/1/PHL/C/1
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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;
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 notimpair 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 licensedtechnology; and
87.15. Other clauses with equivalent effects. (Sec. 33-C (2), RA 165a)SECTION 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;IP/N/1/PHL/C/1
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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
88.4. The Philippine taxes on all payments relating to the technology transfer
arrangement shall be borne by the licensor. (n)
SECTION 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)
SECTION 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)
SECTION 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 thecase 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)
SECTION 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 andTechnology Transfer Bureau under the provisions of Section 91 on exceptional cases.
(n)IP/N/1/PHL/C/1
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CHAPTER X
COMPULSORY LICENSING
SECTION 93. Grounds for Compulsory Licensing . — The Director of
Legal Affairs may grant a license to exploit a patented invention, even without the
agreement of the patent owner, in favor of any person who has shown his capability to
exploit the invention, under any of the following circumstances:
93.1. 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)
SECTION 94. Period for Filing a Petition for a Compulsory License . — 
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, and 93.4 and Section 97 may be applied for at any time
after the grant of the patent. (Sec. 34(1), R.A. No. 165)
SECTION 95. Requirement to Obtain a License on Reasonable
Commercial Terms . —
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.IP/N/1/PHL/C/1
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95.2. The requirement under Subsection 95.1 shall not apply in the following
cases:
(a) Where the petition for compulsory license seeks to remedy a
practice determined after judicial or administrative process to
be anti-competitive;
(b) In situations of national emergency or other circumstances of
extreme urgency;
(c) In cases of public non-commercial use.
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 toknow that a valid patent is or will be used by or for the government, the right holder
shall be informed promptly. (n)
SECTION 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 administrativeprocess to be anti-competitive. (n)
SECTION 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 patentto 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; andIP/N/1/PHL/C/1
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97.4. The terms and conditions of Sections 95, 96 and 98 to 100 of this Act.
(Sec. 34-C, R.A. No. 165a)
SECTION 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 thepatentee, 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)
SECTION 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)
SECTION 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 ofexploiting the patent is determined by judicial or administrative process, to be anti-
competitive.IP/N/1/PHL/C/1
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100.5.The license may be terminated upon proper showing that circumstances
which led to its grant have ceased to exist and are unlikely to recur: Provided , That
adequate protection shall be afforded to the legitimate interest of the licensee; and
100.6.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-competitivepractice may be taken into account in fixing the amount of remuneration. (Sec. 35-B,
R.A. No. 165a)
SECTION 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 therefore;
(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)
SECTION 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)IP/N/1/PHL/C/1
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CHAPTER XI
ASSIGNMENT AND TRANSMISSION OF RIGHTS
SECTION 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 CivilCode.
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)
SECTION 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)
SECTION 105. Form of Assignment . — The assignment must be in
writing, acknowledged before a notary public or other officer authorized to administeroath 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)
SECTION 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, andpatents 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, theOffice 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
mortgage 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 thesubsequent purchase or mortgage. (Sec. 53, R.A. No. 165a)IP/N/1/PHL/C/1
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SECTION 107. Rights of Joint Owners . — If two (2) or more persons
jointly own a patent and the invention covered thereby, either by the issuance of the
patent in their joint favor or by reason of the assignment of an undivided share in the
patent and invention or by reason of the succession in title to such share, each of the
joint owners shall be entitled to personally make, use, sell, or import the invention for
his own profit: Provided, however , That neither of the joint owners shall be entitled to
grant licenses or to assign his right, title or interest or part thereof without the consent
of the other owner or owners, or without proportionally dividing the proceeds withsuch other owner or owners. (Sec. 54, R.A. No. 165)
CHAPTER XII
REGISTRATION OF UTILITY MODELS
SECTION 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)
SECTION 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 canceled 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 109.1and Sections 22, 23, 24 and 27;IP/N/1/PHL/C/1
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(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)
SECTION 110. Conversion of Patent Applications or Applications for
Utility Model Registration . —
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)
SECTION 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)
CHAPTER XIII
INDUSTRIAL DESIGN
SECTION 112. Definition of Industrial Design . — 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)
SECTION 113. Substantive Conditions for Protection . —
113.1. Only industrial designs that are new or original shall benefit from
protection under this Act.IP/N/1/PHL/C/1
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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)
SECTION 114. Contents of the Application . —
114.1. Every application for registration of an industrial design shall contain:
(a) A request for registration of the industrial design;
(b) Information identifying the applicant;
(c) An indication of the kind of article of manufacture or handicraft
to which the design shall be applied;
(d) A representation of the article of manufacture or handicraft by
way of drawings, photographs or other adequate graphicrepresentation of the design as applied to the article of
manufacture or handicraft which clearly and fully discloses
those features for which design protection is claimed; and
(e) The name and address of the creator, or where the applicant is
not the creator, a statement indicating the origin of the right to
the industrial design registration.
114.2. The application may be accompanied by a specimen of the article
embodying the industrial design and shall be subject to the payment of the prescribed
fee.(n)
SECTION 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 setor composition of articles. (n)
SECTION 116. Examination . —
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 a
pictorial representation thereof.IP/N/1/PHL/C/1
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116.2. If the application does not meet these requirements the filing date should
be that date when all the elements specified in Section 105 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 Section 114
within the prescribed period, otherwise the application shall be considered withdrawn.
116.4. The Office shall examine whether the industrial design complies with
requirements of Section 112 and Subsections 113.2 and 113.3. (n)
SECTION 117. Registration . —
117.1. Where the Office finds that the conditions referred to in Section 113 are
fulfilled, it shall order that registration be effected in the industrial design register and
cause the issuance of an industrial design certificate of registration; otherwise, it shall
refuse the application.
117.2. The form and contents of an industrial design certificate shall be
established by the Regulations: Provided , That the name and address of the creator
shall be mentioned in every case.
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 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 theproprietor. 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 including the files of cancellation proceedings. (n)
SECTION 118. The Term of Industrial Design Registration . —
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.IP/N/1/PHL/C/1
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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 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.
SECTION 119. Application of Other Sections and Chapters . —
119.1. The following provisions relating to patents shall apply mutatis
mutandis  to an industrial design registration:
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 27 — Inventions Created Pursuant to a
Commission;
Section 28 — Right to a Patent;
Section 29 — First to File Rule;Section 31 — Right of Priority: Provided , That the
application for industrial design shall be filed
within six (6) months from the
earliest filing date of the corresponding
foreign application;
Section 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 hisconsent, protection under this Chapter cannot be invoked against the injured party.(n)IP/N/1/PHL/C/1
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SECTION 120. Cancellation of Design Registration . —
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 beeffected in the form of an alteration of the effected features of the design. (n)
PART III
THE LAW ON TRADEMARKS, SERVICE MARKS AND TRADE NAMES
SECTION 121. Definitions . — As used in Part III, the following terms
have the following meanings:
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; andIP/N/1/PHL/C/1
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121.7. "Examiner" means the trademark examiner. (Sec. 38, R.A. No. 166a)
SECTION 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)
SECTION 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;
(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 forregistration, 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
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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 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 becomedistinctive 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 exclusiveIP/N/1/PHL/C/1
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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)
SECTION 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 commercialestablishment, 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;
(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;IP/N/1/PHL/C/1
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(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 servicesbelongs; 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 berefused 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)
SECTION 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 proceedingsaffecting 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)
SECTION 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)IP/N/1/PHL/C/1
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SECTION 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)
SECTION 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)
SECTION 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)
SECTION 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-writtensignature: Provided , That where a seal is used, it should be
accompanied by an indication in letters of the name of the
signatory.IP/N/1/PHL/C/1
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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 signature or other means of self-identification referred to in the
preceding paragraphs, will be required, except, where the signature concerns the
surrender of a registration. (n)
SECTION 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 ofthe 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 itsregistration, 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)IP/N/1/PHL/C/1
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SECTION 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)
SECTION 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 theapplication, 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 therefore. 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 aswell 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 andthe 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)
SECTION 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 andIP/N/1/PHL/C/1
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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 whichto file the opposition. (Sec. 8, R.A. No. 165a)
SECTION 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 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)
SECTION 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)
SECTION 137. Registration of Mark and Issuance of a Certificate to the
Owner or his Assignee . —
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 indicationof 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 newIP/N/1/PHL/C/1
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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 sentto him at his last recorded address and, at the same, at his last recorded address for
service. (Sec. 19, R.A. No. 166a)
SECTION 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, and of the registrant's exclusive right to use the
same in connection with the goods or services and those that are related theretospecified in the certificate. (Sec. 20, R.A. No. 165)
SECTION 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 marks 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)
SECTION 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 certificate is lost or destroyed, upon a certified copy thereof
(Sec. 14, R.A. No. 166)
SECTION 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 bythe Director of the Administrative, Financial and Human Resource Development
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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)
SECTION 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 shallthereafter 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 certificates
and their issuance had been authorized by this Act. (n)
SECTION 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)
SECTION 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)
SECTION 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)IP/N/1/PHL/C/1
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SECTION 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 representative;
(f) The names of the recorded goods or services for which the
renewal is requested or the names of the recorded goods orservices 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 therefore.
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)
SECTION 147. Rights Conferred . —
147.1. 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 wouldIP/N/1/PHL/C/1
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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.
147.2. The exclusive right of the owner of a well-known mark defined in
Subsection 123.1(e) which is registered in the Philippines, shall extend to goods and
services which are not similar to those in respect of which the mark is registered:
Provided , That use of that mark in relation to those goods or services would indicate a
connection between those goods or services and the owner of the registered mark:Provided further , That the interests of the owner of the registered mark are likely to be
damaged by such use. (n)
SECTION 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 concerningthe 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)
SECTION 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)IP/N/1/PHL/C/1
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SECTION 150. License Contracts . —
150.1. Any license contract concerning the registration of a mark, or an
application therefore, 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.
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)
SECTION 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 isregistered, 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, apetition 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 tothe 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 licenseduring an uninterrupted period of three (3) years or longer.IP/N/1/PHL/C/1
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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 shallexclude any other court or agency from assuming jurisdiction over a subsequently
filed petition to cancel the same mark. On the other hand, the earlier filing of petition
to cancel the mark with the Bureau of Legal Affairs shall not constitute a prejudicial
question that must be resolved before an action to enforce the rights to same registered
mark may be decided. (Sec. 17, R.A. No. 166a)
SECTION 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 forcancellation 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 shallinure to the benefit of the registrant or applicant. (n)
SECTION 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.
SECTION 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
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shall terminate. Notice of cancellation shall be published in the IPO Gazette. (Sec. 19,
R.A. No. 166a)
SECTION 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 inconnection 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
155.2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a
dominant feature thereof and apply such reproduction, counterfeit, copy or colorableimitation 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 isactual sale of goods or services using the infringing material. (Sec. 22, R.A. No 166a)
SECTION 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 defendantnot 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 theinfringement 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)IP/N/1/PHL/C/1
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SECTION 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 rightholder, or destroyed; and all labels, signs, prints, packages, wrappers, receptacles and
advertisements in the possession of the defendant, bearing the registered mark or trade
name or any reproduction, counterfeit, copy or colorable imitation thereof, all plates,
molds, matrices and other means of making the same, shall be delivered up and
destroyed.
157.2. In regard to counterfeit goods, the simple removal of the trademark
affixed shall not be sufficient other than in exceptional cases which shall be
determined by the Regulations, to permit the release of the goods into the channels of
commerce. (Sec. 24, R.A. No. 166a)
SECTION 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 islikely 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)
SECTION 159. Limitations to Actions for Infringement . —
Notwithstanding any other provision of this Act, the remedies given to the owner of aright 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 againstfuture printing.IP/N/1/PHL/C/1
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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 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 sectionor to prevent or delay the issuance of an injunction or restraining order with respect to
such infringing matter. (n)
SECTION 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)
SECTION 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 theregister 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)
SECTION 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)
SECTION 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)IP/N/1/PHL/C/1
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SECTION 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 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 thecontents of said filewrapper. (n)
SECTION 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 thenature 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 .
SECTION 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 inenforcing 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, toIP/N/1/PHL/C/1
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be recorded in books which shall be kept for this purpose in the Bureau of Customs,
under such regulations as the Collector of Customs with the approval of the Secretary
of Finance shall prescribe, and may furnish to the said Bureau facsimiles of his name,
the name of the locality in which his goods are manufactured, or his registered mark
or trade name, and thereupon the Collector of Customs shall cause one (1) or more
copies of the same to be transmitted to each collector or to other proper officer of the
Bureau of Customs. (Sec. 35, R.A. No. 166)
SECTION 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 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 therefore shall
not be the subject of a license contract. (Sec. 40, R.A. No. 166a)
SECTION 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 hedeals, 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 therefore.IP/N/1/PHL/C/1
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168.3. In particular, and without in any way limiting the scope of protection
against unfair competition, the following shall be deemed guilty of unfair competition:
(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, whichwould 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 orservices of another.
168.4. The remedies provided by Sections 156, 157 and 161 shall apply mutatis
mutandis . (Sec. 29, R.A. No. 166a)
SECTION 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 orIP/N/1/PHL/C/1
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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 is likely to be damaged
by such act.
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 anycustomhouse 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)
SECTION 170. Penalties . — Independent of the civil and administrative
sanctions imposed by law, a criminal penalty of imprisonment from two (2) years tofive (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)
PART IV
THE LAW ON COPYRIGHT
CHAPTER I
PRELIMINARY PROVISIONS
SECTION 171. Definitions . — For the purpose of this Act, the following
terms have the following meaning:
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 thatcontributing natural persons will not be identified;
171.3. "Communication to the public" or "communicate to the public" means
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;IP/N/1/PHL/C/1
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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, of 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 aninstitution 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 soundsaccompanying it audible; and, in the case of a sound recording, making the recorded
sounds audible at a place or at places where persons outside the normal circle of a
family and that family's closest social acquaintances are or can be present, irrespective
of whether they are or can be present at the same place and at the same time, or at
different places and/or at different times, and where the performance can be perceived
without the need for communication within the meaning of Subsection 171.3;
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 of a work or a
sound recording in any manner or form (Sec. 41 [E], P.D. No. 49 a);
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 a part ofhis regularly prescribed official duties.IP/N/1/PHL/C/1
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CHAPTER II
ORIGINAL WORKS
SECTION 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 themoment 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;IP/N/1/PHL/C/1
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(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)
CHAPTER III
DERIVATIVE WORKS
SECTION 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)
SECTION 174. Published Edition of Work . — In addition to the right to
publish granted by the author, his heirs, or assigns, the publisher shall have acopyright consisting merely of the right of reproduction of the typographical
arrangement of the published edition of the work. (n)
CHAPTER IV
WORKS NOT PROTECTED
SECTION 175. Unprotected Subject Matter . — Notwithstanding the
provisions of Sections 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 ofIP/N/1/PHL/C/1
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press information; or any official text of a legislative, administrative or legal nature, as
well as any official translation thereof. (n)
SECTION 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. Suchagency 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 apublic document of any work in which copy right 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 owners. (Sec. 9, third par., P.D. No.
49)
CHAPTER V
COPYRIGHT OR ECONOMIC RIGHTS
SECTION 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;IP/N/1/PHL/C/1
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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; and177.7. Other communication to the public of the work. (Sec. 5, P. D. No. 49a)
CHAPTER VI
OWNERSHIP OF COPYRIGHT
SECTION 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
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 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 writtenstipulation to the contrary;IP/N/1/PHL/C/1
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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 producers 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)
SECTION 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 doubt as to theauthor's identity, or if the author of the anonymous works discloses his identity. (Sec.
7, P.D. 49)
CHAPTER VII
TRANSFER OR ASSIGNMENT OF COPYRIGHT
SECTION 180. Rights of Assignee . —
180.1. The copyright may be assigned in whole or in part. Within the scope of
the assignment, the assignee is entitled to all the rights and remedies which the
assignor had with respect to the copyright.
180.2. The copyright is not deemed assigned 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 shallbe entitled to grant licenses without the prior written consent of the other owner or
owners. (Sec. 15, P.D. No. 49a)
SECTION 181. Copyright and Material Object . — 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 severalcopies of the work imply transfer or assignment of the copyright. (Sec. 16, P.D. No.
49)IP/N/1/PHL/C/1
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SECTION 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)
SECTION 183. Designation of Society . — The copyright owners or their
heirs may designate a society of artists, writers or composers to enforce their
economic rights and moral rights on their behalf. (Sec. 32, P.D. No. 49a)
CHAPTER VIII
LIMITATIONS ON COPYRIGHT
SECTION 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 religiousinstitution 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)IP/N/1/PHL/C/1
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(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 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 suchschools, 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 screenor 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.IP/N/1/PHL/C/1
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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 does not unreasonably prejudice the right holder's
legitimate interest.
SECTION 185. Fair Use of a Copyrighted Work . —
185.1. The fair use of a copyrighted work for criticism, comment, news
reporting, teaching including multiple 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 the
computer program to achieve the inter-operability of an independently created
computer program with other programs may also constitute fair use. 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.
SECTION 186. Work of Architecture . — Copyright in a work of
architecture shall include the right to control the erection of any building whichreproduces 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)
SECTION 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.IP/N/1/PHL/C/1
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187.2. The permission granted under Subsection 187.1 shall not extend to the
reproduction 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 graphics 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)
SECTION 188. Reprographic Reproduction by Libraries . —
188.1. Notwithstanding the provisions of Subsection 177.6, any library or
archive whose activities are not for profit may, without the authorization of the author
of copyright owner, make a single copy of the work 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 a copy is in order to preserve and, if
necessary in the event that it is lost, destroyed or renderedunusable, 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.
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 aIP/N/1/PHL/C/1
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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)
SECTION 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 theauthorization 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)
SECTION 190. Importation for Personal Purposes . —
190.1. Notwithstanding the provision of Subsection 177.6, but subject to the
limitation under the Subsection 185.2, the importation of a copy of a work by an
individual for his personal purposes shall be permitted without the authorization of the
author of, or other owner of copyright in, the work under the following circumstances:
(a) When copies of the work are not available in the Philippines
and:
(i) Not more than one (1) copy at one time is imported for
strictly individual use only; or
(ii) The importation is by authority of and for the use of the
Philippine Government; or
(iii) The importation, consisting of not more than three (3)
such copies or likenesses in any one invoice, is not forIP/N/1/PHL/C/1
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sale but for the use only of any religious, charitable, or
educational society or institution duly incorporated or
registered, or is for the encouragement of the fine arts, or
for any state school, college, university, or free public
library in the Philippines.
(b) 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 , That such copies do not
exceed three (3).
190.2. Copies imported as allowed by this Section may not lawfully be used in
any way to violate the rights of owner the copyright or annul or limit the protection
secured by this Act, and such unlawful use shall be deemed an infringement and shall
be punishable as such without prejudice to the proprietor's right of action.
190.3. 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 of articles the importation of which is prohibited under this Section and
under 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. (Sec. 30, P.D. No. 49)
CHAPTER IX
DEPOSIT AND NOTICE
SECTION 191. Registration and Deposit with National Library and the
Supreme Court Library . — After the first public dissemination of performance by
authority of the copyright owner of a work falling under Subsections 172.1, 172.2 and172.3 of this Act, there shall, for the purpose of completing the records of the National
Library and the Supreme Court Library, within three (3) weeks, be registered and
deposited with it, by personal delivery or by registered mail, two, (2) complete copies
or reproductions of the work in such form as the directors of said libraries may
prescribe. A certificate of deposit shall be issued for which the prescribed fee shall becollected and the copyright owner shall be exempt from making additional deposit of
the works with the National Library and the Supreme Court Library under other laws.
If, within three (3) weeks after receipt by the copyright owner of a written demand
from the directors 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
and the Supreme Court Library the amount of the retail price of the best edition of thework. Only the above mentioned classes of work shall be accepted for deposit by the
National Library and the Supreme Court Library. (Sec. 26, P.D. No. 49a)IP/N/1/PHL/C/1
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SECTION 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
SECTION 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 prominentway 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 orreputation; 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)
SECTION 194. Breach of Contract . — An author cannot be compelled to
perform his contract to create a work or for the publication of his work already inexistence. However, he may be held liable for damages for breach of such contract.
(Sec. 35, P.D. No. 49)
SECTION 195. Waiver of Moral Rights . — An author may waive his
rights mentioned in Section 193 by a written instrument, but no such waiver shall bevalid 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)IP/N/1/PHL/C/1
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SECTION 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)
SECTION 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, forpublication, 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)
SECTION 198. Term of Moral Rights . —
198.1. The rights of an author under this chapter shall last during the lifetime of
the author and for fifty (50) years after his death and 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 writing to be filed with the National Library. In default
of such person or persons, such enforcement shall devolve upon either the author'sheirs, and in default of the heirs, the Director of the National Library.
198.2.  For purposes of this Section, "Person" shall mean any individual,
partnership, corporation, association, or society. The Director of the National Library
may prescribe reasonable fees to be charged for his services in the application of
provisions of this Section. (Sec. 39, P.D. No. 49)
SECTION 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
SECTION 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 orcomposer, 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 orIP/N/1/PHL/C/1
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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)
SECTION 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)
CHAPTER XII
RIGHTS OF PERFORMERS, PRODUCERS OF SOUNDS RECORDINGS AND
BROADCASTING ORGANIZATIONS
SECTION 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 fixationincorporated 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 byIP/N/1/PHL/C/1
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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 sounds fixed in a sound recording audible to
the public.
SECTION 203. Scope of Performers' Rights . — Subject to the provisions
of Section 212, performers shall enjoy the following exclusive rights:
203.1. As regards their performances, the right of authorizing:
(a) The broadcasting and other communication to the public of
their performance; and
(b) The fixation of their unfixed performance.
203.2. The right of authorizing the direct or indirect reproduction of their
performances fixed in sound recordings, 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
recording through sale or rental or 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, 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, by wire or wireless means, in such a way thatmembers of the public may access them from a place and time individually chosen by
them. (Sec. 42, P.D. No. 49a)
SECTION 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, havethe 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 toIP/N/1/PHL/C/1
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any distortion, mutilation or other modification of his performances that would be
prejudicial to his reputation.
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)
SECTION 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)
SECTION 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)
SECTION 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)
CHAPTER XIII
PRODUCERS OF SOUND RECORDINGS
SECTION 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)IP/N/1/PHL/C/1
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SECTION 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)
SECTION 210. Limitation of Right . — Sections 184 and 185 shall apply
mutatis mutandis  to the producer of sound recordings. (Sec. 48, P.D. No. 49a)
CHAPTER XIV
BROADCASTING ORGANIZATIONS
SECTION 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
SECTION 212. Limitations on Rights . — Sections 203, 208 and 209 shall
not apply where the acts referred to in those Sections are related to:
212.1. The use by a natural person exclusively for his own personal purposes;212.2. Using short excerpts for reporting current events;212.3. Use solely for the purpose of teaching or for scientific research; and212.4. Fair use of the broadcast subject to the conditions under Section 185.
(Sec. 44, P.D. No. 49a)IP/N/1/PHL/C/1
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CHAPTER XVI
TERM OF PROTECTION
SECTION 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 andfor 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)
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)
SECTION 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)
SECTION 215. Term of Protection for Performers, Producers and
Broadcasting Organizations . —IP/N/1/PHL/C/1
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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)
CHAPTER XVII
INFRINGEMENT
SECTION 216. Remedies for Infringement . —
216.1. 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 ofimported goods that involve an infringement, immediately after
customs clearance of such goods.
(b) Pay to the copyright proprietor or his assigns or heirs such
actual damages, including legal costs and other expenses, as he
may have incurred due to the infringement as well as the profits
the infringer may have made due to such infringement, and in
proving profits the plaintiff shall be required to prove sales onlyand 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.
(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.IP/N/1/PHL/C/1
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(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 criminalcase.
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. (Sec. 28, P.D. No. 49a)
SECTION 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. 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 sufferedby reason of the infringement.
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:IP/N/1/PHL/C/1
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(a) Selling, letting for hire, or by way of trade offering or exposing
for sale, or hire, the article;
(b) Distributing the article for purpose of trade, or for any other
purpose to an extent that will prejudice the rights of the
copyright owner in the work; or
(c) Trade exhibit of the article in public, shall be guilty of an
offense and shall be liable on conviction to imprisonment and
fine as above mentioned. (Sec. 29, P.D. No. 49a)
SECTION 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, shall be admitted in evidence in any
proceedings for an offense 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.
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 doesnot 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 defendantdoes 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 ofIP/N/1/PHL/C/1
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copyright in such work or subject matter, thereby occasioning
unnecessary costs or delay in the proceedings, the court may
direct that any costs to the defendant in respect of the action
shall not be allowed by him and that any costs occasioned by
the defendant to other parties shall be paid by him to such other
parties. (n)
SECTION 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 audio-visual
work in the usual manner shall, in the absence of proof to the contrary, be presumed to
be the maker of said work. (n)
SECTION 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)
CHAPTER XVIII
SCOPE OF APPLICATION
SECTION 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 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;IP/N/1/PHL/C/1
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(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)
SECTION 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)
SECTION 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)SECTION 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; andIP/N/1/PHL/C/1
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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
SECTION 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)
SECTION 226. Damages . — No damages may be recovered under this
Act after four (4) years from the time the cause of action arose. (Sec. 58, P.D. No. 49)
CHAPTER XX
MISCELLANEOUS PROVISIONS
SECTION 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)
SECTION 228. Public Records . — The section or division of the National
Library and the Supreme Court Library charged with receiving copies and instrumentsdeposited 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)
SECTION 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)IP/N/1/PHL/C/1
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PART V
FINAL PROVISIONS
SECTION 230. 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)
SECTION 231. 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)
SECTION 232. Appeals . —
232.1. 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.
232.2. Unless expressly provided in this Act or other statutes, appeals from
decisions of administrative officials shall be provided in the Regulations. (n)
SECTION 233. Organization of the Office ; Exemption from the Salary
Standardization Law and the Attrition Law . —
233.1. 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.
233.2. The Office shall institute its own compensation structure: Provided ,
That the Office shall make its own system conform as closely as possible with the
principles provided for under Republic Act No. 6758. (n)
SECTION 234. 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 herebytransferred 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
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nearest fractions thereof favorable to them on the basis of the highest salary
received.(n)
SECTION 235. Applications Pending on Effective Date of Act . —
235.1. 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 saidActs 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.
235.2. All applications for registration of marks or trade names pending in the
Bureau of Patents, Trademarks and Technology Transfer at the effective date o0f 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 saidapplications were filed, and said Acts are hereby continued in force to this extent for
this purpose only, notwithstanding the foregoing general repeal thereof. (n)
SECTION 236. 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)
SECTION 237. 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 competentauthority under the Appendix. (n)
SECTION 238. 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 benecessary for its continued implementations shall be included in the annual General
Appropriations Act. (n)IP/N/1/PHL/C/1
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SECTION 239. Repeals . —
239.1. All Acts and parts of Acts inconsistent herewith, more particularly
Republic Act No. 165, as amended; Republic Act No. 166, as amended; and Articles
188 and 189 of the Revised Penal Code; Presidential Decree No. 49, including
Presidential Decree No. 285, as amended, are hereby repealed.
239.2. 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.
239.3. 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)
SECTION 240. 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)
SECTION 241. Effectivity . — This Act shall take effect on 1 January
1998. (n)
Approved: June 6, 1997
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