IP LECTURE NOTES participation of private groups, local governments, and community-based

organizations in the generation and utilization of science and technology.

I. Basic Intellectual Property Information

c) Art. XII, Sec 6 vis a vis Sec. 2 of the IP Code
ARTICLE XII
What is IP? (WIPO Definition)
NATIONAL ECONOMY AND PATRIMONY
IP refers to creations of the mind: inventions, literary and artistic works ,
and symbols, names, images and designs used in commerce. Section 6. The use of property bears a social function, and all economic agents shall
contribute to the common good. xxxxx
IP Code
Pertinent Constitutional Provisions
Sec. 2. Declaration of State Policy
a) Article XIV, Sec. 13 The Benefit to the People Proviso
The State recognizes that an effective intellectual and industrial property system
The state shall protect and secure the exclusive right of is vital to the development of domestic and creative activity, facilitates transfer of
scientists, inventors, artists and other gifted citizens to their technology, attracts foreign investments, and ensures market access for our products.
intellectual property and creations, particularly when beneficial It shall protect and secure the exclusive rights of scientists, inventors, artists and
other gifted citizens to their intellectual property and creations, particularly when
to the people for such period as may be provided by law.
beneficial to the people, for such periods as provided in this Act.

b) Art. XIV- Secs 10 and 12 The use of intellectual property bears a social function. To this end, the State shall
ARTICLE XIV promote the diffusion of knowledge and information for the promotion of national
development and progress and the common good.
SCIENCE AND TECHNOLOGY It is also the policy of the State to streamline administrative procedures of registering
Section 10. Science and technology are essential for national development and patents, trademarks and copyright, to liberalize the registration on the transfer of
progress. The State shall give priority to research and development, invention, technology, and to enhance the enforcement of intellectual property rights in the
innovation, and their utilization; and to science and technology education, training, Philippines. (n)
and services. It shall support indigenous, appropriate, and self-reliant scientific and
technological capabilities, and their application to the country's productive systems
and national life. d) Art XII, Secs. 14 and 19
Section 14. The sustained development of a reservoir of national talents consisting of
Filipino scientists, entrepreneurs, professionals, managers, high-level technical
Section 12. The State shall regulate the transfer and promote the adaptation of manpower and skilled workers and craftsmen in all fields shall be promoted by the
technology from all sources for the national benefit. It shall encourage the widest State. The State shall encourage appropriate technology and regulate its transfer for
the national benefit.
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Section 19. The State shall regulate or prohibit monopolies when the public interest period enough to establish a new industry to shield him from
so requires. No combinations in restraint of trade or unfair competition shall be competition during the formative years of new undertaking
allowed. o based on such rationale, ist modern patent law was enacted in the
Civil Law Basis Articles 712; 721;722; 724 Republic of Venice 1474
Art. 721 of the Civil Code o 1628 Statute of Monopolies (England) 14 yrs protection from
By intellectual creations, the following persons acquire ownership grant

(ACPS) : o 1790 - USA

o 1815 - France

a) the AUTHOR , with regard to his literary,dramatic, historical, legal, o 1826 - Spain
philosophical, scientific or other work; o 1864 Italy
b) the COMPOSER, as to his musical composition; o 1885 - Japan
c) the PAINTER, SCULPTOR or other ARTIST, with respect to product of
his art ;
COPYRIGHT (territorial in nature)
d) the SCIENTIST or TECHNOLOGIST or any other person with regard to
his discovery or invention o 1709 Statute of Anne (England) first copyright law in the world
that can be traced to the invention of printing
o 1741 (Denmark) copyright law
Historical Background Mirpuri v. C.A (G.R No. 114508, 19 Nov. 1999 ;
Taada vs. Angara [G.R. No. 118295. May 2, 1997.] EN BANC o 1790 U.S.A (copyright law and patent law)
o 1791 & 1793 (Copyright law in France)
Devt of IP in the world o 1834 Chile
o 1849 Peru
PATENTS o 1869 - Argentina
o precursors of modern patent system began in England in the 12 th o 1871 Mexico
century o 1886 , September BERNE Convention for the protection of
o person who introduced a technology imported abroad was literary and artistic works is the first international agreement for
granted an incentive (LETTERS PATENT) which means an open the protection of the rights of authors held in Berne, Switzerland
letter =gives him monopoly powers or sole right to use it for a due to the need for a uniform system of protection.
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o In view of fundamental changes in the means of creation, use and
dissemination of literary and artistic works the following revisions *** The fate of an application for the registration of a trademark or an
cropped up: invention in a particular country has no influence whatsoever on the fate of an
Berlin -1908 application for registration of the same trademark or invention in another
country.
Rome 1928
Brussels -1948
*** Applications have to be made roughly at the same time in all countries
Stockholm -1967
where he wants protection.
Paris -1971

o Birth of the PARIS CONVENTION for the protection of industrial

TRADEMARKS property in Paris in 1883.
o In ancient cultures, trademarks were used by the makers of bricks, o Revisions
leather goods, books, weapons and other products to indicate
Rome 1886
their origins
o Purpose of trademark is to establish a connection between a Madrid 1890 & 1891
particular craftsman and his work in the mind of the consumer. Brussels 1897 & 1900
o Middle of 19th century, common law in England provided Washington 1911
protection for trademarks The Hague 1925
o 1857 France enacted a law in TM London 1934
o 1870 US, Trademark law was declared unconstitutional . reason : Lisbon - 1958
covers also registration of trademarks used in connection with
goods traded interstate instead of limiting it to intrastate Stockholm - 1967
commerce
o 1905- US New Trademark Law Devt of IP in Southeast Asia
o IP in SE Asia has not kept pace with its economic growth due
*** Due to international trade it became desirable to obtain protection to 2 factors :

for trademarks and inventions in several countries. The only problem is the a) not all SE Asian countries are parties to the Berne
principle of independence of industrial property meaning laws on trademark or Convention (only Malaysia, Phils and Thailand) are
patents differ from one country to another. members; for the Paris Convention (only Malaysia,
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Philippines, Indonesia, Singapore and Vietnam are Emergency Measure Whenever the Prices Thereof Become So Exorbitant as to be
members of the convention Detrimental to the National Interest. September 3, 1973
b) limited use of industrial property in 1993 patent 9. Presidential Decree No. 400, Amending Presidential Decree No. 285. March 1,
applications in ASEAN was less than 5 % of patents in 1974.
Japan and 8 % of that in US; over 4% of that in Western 10. Civil Code (1949), Art. 721-724 of Rep. Act No. 386 (of. Provisions are on
Europe
Intellectual Creations)
o due to AFTA , the development of IP in Southeast Asia is likely 11. Presidential Decree No. 1203, Further Amending Presidential Decree 285, as
to be rapid in the near future Amended by Presidential Decree No. 400. September 27, 1977
12. Republic Act No. 8792, An Act Providing for the Recognition and Use of
Devt of IP in the Philippines Electronic Commercial and, Non-Commercial Transactions, Penalties for Unlawful
Use Thereof, and Other Purpose, popularly known as the E-Commerce Law,
IP system followed those of Spain and US
signed into law on June 14, 2000, Implementing Rules and Regulations of the
Electronic Commerce Act one month after the approval of the law, 13th July 2000.
History of Copyright Laws 13. Republic Act No. 8293, An Act Prescribing the Intellectual Property Code and
1. Law on Intellectual Property on January 10, 1879 published in the Gaceta de Establishing the Intellectual Property Office, passed June 6 1997 and took effect
Madrid on Jan. 12, 1879. January 1, 1998.

2. Spanish Copyright Law came to the Phil by way of the Royal Decree of May 5, Incorporated provisions of international agreements wherein the Phil.
1887. is a signatory such as the Berne Convention for the Protection of
Literary and Artistic Works ( August 1, 1951), Exchange of Notes with
3. US Copyright Law under the Treaty of Paris of 10th December 1898. the United States for the protection and enforcement of intellectual
4. Act No. 3134 by the Philippine Legislature on March 6, 1924. 1st intellectual property rights on April 6, 1993, WTO TRIPS Agreement (Agreement
property law patterned after the US Copyright Law. on Trade Related Aspects in Intellectual Property Rights) on Dec. 15,
1994 and the Dec. 1996 World Intellectual Property Organization
5. Republic Act No. 167, An Act to Provide the Transfer of Powers, Duties and
(WIPO) Geneva Protocol which covered the protection of digital
Functions Relating to the Registration and Protection of Copyrights From the
technology.
National Library to the Patent Office. June 20, 1947.
6. Civil Code (1949), Art. 721-724 of Rep. Act No. 386 (of. Provisions are on
Intellectual Creations. Trademarks and Patents
7. Presidential Decree No. 49, Decree on Intellectual Property. passed during Trademark law governed by a Trademark Law promulgated by Queen Ma.
Martial Law on December 15, 1972. Cristina of Spain on 26 Oct. 1888 ( a modified version version of the Spanish TM
law)
8. Presidential Decree No. 285, Authorizing the Compulsory Licensing or Reprinting
of Educational Scientific or Cultural Books and Materials as a Temporary or
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Patents unknown whether Spanish Patent Law was enforced in the Philippines; o 1951 (August 1) Philippines became contracting party to
records show that Spanish authorities referred patent matters to Spain Berne Convention for Protection of Literary and Artistic works
o 1965(Sept. 27) Philippines became contracting paty to Paris
convention for protections of industrial property
o 1980 Philippines became contracting party to
Convention(establishing the WIPO/accorded to GATT)
o 1986- PPO was consolidated with the TTB to become the
TREATY OF PARIS (Dec. 10 1898) BPTTT
Art. 13 of TP provides that copyrights, trademarks and patents tha were granted by o 1994 Phils is included in the signatories to Uruguay Round
the Spanish authorities continue to have legal effect in the Philippines Final Act, the Agreement establishing the WTO.
o Phils ratified the agreement ( SC upheld the constitutionality of senates
AMERICAN REGIME ratification to the agreement)
o January 1, 1998 effectivity of the IP Code
o 1903 (Mar. 6) Act No. 666 Trademarks and Tradename Law of
the Philippine Islands
Intellectual Property and Economics
o 1909 (Mar. 6) Act No 3134 (Copyright law of the Philippine
o Sec. 2 (RA 8293) Declaration of State Policy effective
Islands)
industrial property and IP system is vital to the
o 1913 (Feb. 10) US Patent Laws applicability in the Philippine development of domestic and creative activity. It also :
island a) facilitates transfer of technology
b)attracts foreign investment
Trademark system was under the Bureau of Forestry c) ensures market access for our products
Patent system under the Executive Bureau. IP encourages creativity which promotes economic development
IP confers monopoly rights to authors, merchants and inventors. It
After Philippine Independence essentially protects info which is costly to produce but relatively
inexpensive to transmit or info is difficult to appropriate
o 1947 Philippine Patent Office was established
RA 165 Phil Patent Law
o Copyright ensures the payment of adequate royalties to
RA 166 Trademark Law
authors of literary and artistic works as compensation
o 1972 (Dec. 15) effectivity date of PD 49 on Copyright
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for their efforts so they can devote fully their energies
to the production of such works
II. Classes of Intellectual Property (2 Main Divisions)
o Trademarks promote an open market & ensure free
competition by enabling consumer to make informed
choices between various goods o Copyright and related rights
o Patents secure the result of investment in research and o Industrial property
innovation 1. distinctive signs trademarks, service marks and
Amendments to Republic Act No. 8293 or to the Intellectual Property Code or RA geographic indications
8293 2. IP relating to technological advances patent, industrial
1. Republic Act No. 9168, - June 7, 2002 (Philippine Plant Variety Protection Act designs, lay-out designs, protection of undisclosed
of 2002) information
Section 2. Statement of Policies.
a) The State recognizes that an effective intellectual property system in III. IPR under the IP Code
general and the development of new plant variety in particular is vital in 1. Copyright and related rights
attaining food security for the country. To this end, it shall protect and secure
the exclusive rights of breeders with respect to their new plant variety 2. Trademarks and Service Marks
particularly when beneficial to the people for such periods as provided for in 3. Geographical Indications
this Act.
4. Industrial Designs
b) The use of intellectual property bears a socioeconomic function. To this
5. Patents
end, the State shall promote the diffusion of technology and information for
the promotion of national development and progress for the common good 6. Lay-out Designs (Topographies) of Integrated Circuits (RA
9150)
7. Protection of Undisclosed Information
2. Republic Act No. 9239, Feb. 10, 2004 - Regulating Optical Media, Reorganizing
the VIDEOGRAM REGULATORY BOARD
3. Republic Act No. 9502, June 6, 2008 Cheaper and Quality Medicines Act IV. International Treaties/ Conventions to which the Philippines is a Signatory
4. Republic Act No. 10055, entitled "An Act Providing the Framework and 1) Convention creating the WIPO
Support System for the Ownership, Management, Use, and Commercialization 2) Uruguay Round (creating the WTO)
of Intellectual Property Generated from Research and Development Funded
by Government and for Other Purposes" also known as the "Philippine 3) Paris Convention
Technology Transfer Act of 2009 4) Berne Convention
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5) Budapest Treaty
6) Patent Cooperation Treaty WTO
7) WIPO Copyright Treaty o 1993 Uruguay Round of the multilateral trade negotiations under
8) Madrid Protocol the auspices of GATT was concluded on Dec. 15, 1993

WIPO and WTO which involved discussions for the first time on the protection of
intellectual property in relation to international trade
o Berne and Paris conventions had separate international secretariats to
o countries cant agree on the most basic issues of the agenda such
administer the 2 conventions. They were later placed under the supervision of
the Swiss Federal government with their headquarters in Berne. as :

o 1893, the two secretariats united and after undergoing several changes 1. coverage of IP
became the United International Bureau for the Protection of Intellectual 2. minimum levels of protection
Property (BIRPI, the acronym for the French version of the name) 3. adoption by member countries of procedures for the
o 1960 BIRPI moved its headquarters to Geneva enforcement of IPR
o 1967 diplomatic conference on IP in Stockholm (creation of WIPO) to o discussions collapsed on 2 occasions but later paved the way for
succeed BIRPI the Agreement on Trade Related Aspects of IPR (TRIPS Agreement )
which took effect on Jan. 1, 1995
o 1974 WIPO became a specialized agency of the UN
o also led to the agreement establishing the WTO, effective Jan. 1,
1995
Relationship between WIPO and WTO
International Treaties Protecting Copyrights
o US believed that issues on IP protection involves trade
1. Berne Convention for protection of literary works, established in Aug. 1,
o GATT (General Agreement on Tariff and Trade) is the main
1951.
multilateral treaty on the elimination of trade barriers.
o US advocated that IP issues be addressed under the auspices
of GATT because it has dispute settlement mechanism Core Principles:
o Developing countries opposed this because of the view that a) national treatment treat foreigners the way you protect nationals
their interests would be better protected within the framework b) principle of automatic protection no need to register copyrights
of WIPO due to their numerical number
c) principle of independence of protection nationals from different states
o Developing countries urged WIPO to draft its own treaty for a should have protection of their own works
dispute resolution mechanism ( said proposals not adopted for
various reasons
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2. TRIPS Agreement Trade Related Aspects of IP Rights, a sub-agreement of the o Jan. 1, 1996 all provisions of TRIPS must be complied by
GATT, developed countries
o Jan. 1, 2000 for developing countries
Core Principles: o Jan. 1, 2006 least developed countries
a) Principle of independence of protection of Intellectual property
b) National treatment of the IP owner ***WTO and IPO has a mutually supportive relationship. WTO has
c) Most favored nation principle treat all signatories similarly, no special a dispute resolution mechanism, while WIPO promotes
treatment should be given to any nation IP in developing countries. The two concluded an agreement
which took effect on Jan. 1, 1996 providing cooperation in areas
such as :
Establishment of minimum standards of protection as to enforcement of IPR
transnationally is likewise embodied in the TRIPS agreement as one of its salient 2. access
features 3. collection
4. translation of national laws and regulation
Notable Features of the TRIPS Agreement
1. incorporates by reference most of the standards of protection of
copyright/related rights under the two conventions
2. explicit recognition of computer software as proper subject of
copyright
3. explicit recognition of micro-organisms and non-biological
processes for the production of plants and animals as patentable
4. includes substantial number of additional obligations on matters
where the Berne and Paris Conventions were silent or inadequate,
eg :
a) adoption by member countries of procedures for
enforcement of IP
b) provides a dispute resolution mechanism for member
countries
TRIPS Compliance commitments